S.V. Sivalinga Nadar And Sons vs Joint Registrar Of Trade Marks And ... on 3 September, 2004

Intellectual Property Appellate Board

Equivalent citations: 2004 (29) PTC 660 IPAB

Bench: S Jagadeesan, R Singh, Vice-Chairman

JUDGMENT

Raghbir Singh, Vice-chairman

1. This appeal was filed as TMA No. 4 of 2001 in the High Court of Judicature at Madras and has been transferred to this Board in terms of Section 100 of the Trade Mark Act, 1999 and has been numbered as TA No. 32/2003.

2. The trade mark bearing registration No. 285501B in class 29 for refined edible oils and with the condition that proprietors shall not claim exclusive right was registered on 22.01.1973. This related to a family concern and the trade mark 'SVS' was being used since 1969. In the meantime there had been certain disputes in the family and some arbitration was done and award of arbitrators dated 09.07.1984 was given effect from 14.07.1984. In terms of the award, the said trade mark was being used by respondents Nos. 2 to 4. The appellant made application Nos. 479368B and 479367B in class 29 for the registration of mark 'S' and 'SVS' respectively and the user in the said marks was claimed from July, 1987. The said marks were advertised before acceptance in trade marks journal No. 1148 dated 01.04.1997. Respondents No. 2 to 4 made a petition to the Registrar against the registration of trade mark Application No. 479367B bearing mark 'SVS' on 12.11.1999.

3. The dispute involved in the present matter is about the registration of the mark No. 479367B in class 29 wherefor the Joint Registrar had put in an advertisement in the trade marks journal in terms of proviso to Sub-section (1) of Section 20 of the Trade and Merchandise Marks Act, 1958. Shri D. Rajkumar authorised agent on behalf of SVS Oil Mills filed a petition dated 12.11.99 under Section 19 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) before the Joint Registrar and the Joint Registrar accordingly gave a notice to the appellant. The appellant filed their reply on 16.01.2000 and the hearing was held on 16.01.2000. The moot question before the learned Joint Registrar to decide was the acceptability of the impugned mark 'SVS'. The learned Joint Registrar has gone into greater details of the facts leading to the split in the family and the consequent arbitration thereto and the finality of the award of arbitration, resulting into decree of the Court in that matter. It is not important for us to go into the greater details since the problem involved in the matter is as to the decision of the Joint Registrar in matter of action taken by him under Section 19 of the Act. The learned Joint Registrar went into greater details of his examination of the mark under Sections 12(1) and 12(3) of the Act and reached the conclusion that the impugned mark does not qualify for registration in terms of those sections. Resultantly, he ordered that in terms of Section 19 of the Act the prior notice issued in terms of proviso to Sub-section (1) of Section 20 be withdrawn.

4. The appellant in his appeal has submitted that the action of the Joint Registrar in withdrawing the acceptance under Section 19 of the Act is illegal and without any jurisdiction. The appellant claims that in case of an application advertised before acceptance as there had not been any acceptance of the application, there is no question of withdrawal of acceptance of the application and hence provisions of Section 19 of the Act are not attracted. The complainants, having failed to file opposition within the prescribed time, have sought to achieve in an indirect manner what they could not do in direct manner. The Joint Registrar ought to have held that once no opposition has been filed the application should proceed for registration. The Joint Registrar failed to appreciate the provisions of Clause 26 of the Arbitration award which gave a right to the use of the mark.

5. The appeal was taken up for hearing by the Board on 4.8.2004 and learned counsel Shri Jyotimani appeared for the appellant and learned counsel S/Shri N.A.K. Sarma and C. Daniel appeared for respondents No. 2 to 4.

6. The principal question for us to decide in the matter before going into greater details of merits of the impugned mark is that, in a case where an application has been advertised before acceptance under proviso to Sub-section (1) of Section 20, can the Registrar exercise the powers under Section 19 which is meant for withdrawal of acceptance? Proviso to Sub-section (1) of Section 20 is in relation to advertisement of application before its acceptance. It clearly implies in the instant case that the application had not been accepted. Section 19 is unambiguously in relation to withdrawal of acceptance and action which stipulates that withdrawal is to be done only after the application has been accepted. It taken us immediately to provisions of Sub-section (4) of Section 18 wherein it has been provided that after receipt of the application the Registrar has two options before him-either to refuse the application or to accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. Thus, acceptance under Sub-section (4) of Section 18 is further subject to the special provisions to proviso of Sub-section (1) of Section 20 of the Act. In the instant case the action of Joint Registrar in advertising the application before acceptance under the proviso to Sub-section (1) of Section 20 on 1.4.97 clearly implies in itself that there had not been any acceptance of the application. Once that event is over, the Joint Registrar took up the matter for taking a decision under Sub-section (4) of Section 18 on 28.4.2000 and arrived at a conclusion on merits after examination under the relevant provisions of the Act that the mark is not qualified for registration and reached a conclusion and accordingly passed his orders dated 5.2.2001. It is true that the whole proceedings have been conducted under Section 19 of the Act which is in relation to the withdrawal of acceptance where the stage of acceptance is already reached. But from the total narration of the facts of the matter and analysis thereof in the order, it is a matter of record that immediately after the application was received it was ordered for advertisement before acceptance under the relevant provisions of the Act and stage of its acceptability or non-acceptability can only be subsequent thereto. At the best it can be concluded that the Joint Registrar has erroneously exercised jurisdiction under Section 19 of the Act. He should have done the same under Sub-section (4) of Section 18 of the Act for arriving at the same conclusion. It is settled proposition under law that expression of not relevant provisions of the Act in deciding a matter in no way affects the legality of the order or the conclusion so long there is a relevant power available under the Act under which the said order or conclusion can be sustained. In a matter where a notice was issued wrongly by the Deputy Commissioner under a provision of an Act since repealed, it was held by the Supreme Court that the notice should be construed as one issued under the provisions of the re-enacted Act, replacing the earlier Act; mere wrong quoting of a statutory provision did not prejudice the case of the appellant (Teki Venkata Ratnam v. Deputy Commissioner, Endownment, (2001) 3 M.L.J. 196 (SC). It is a rule now firmly established that the intention of the Legislature must be found by reading the statute as a whole. The rule is referred to as an "elementary rule" by Viscount Simonds, AG v. HRH Prince Ernest Augustus, (1957) 1 All ER 49, p.55 (HL). When the question arises as to the meaning of a certain provision in a statute, it is not only legitimate but proper to read that provision in its context. The context here means, the statute as a whole, the previous state of law, other statutes in pari materia, the general scope of the statute and the mischief that it was intended to remedy. The statement of the rule was recently fully adopted by the Supreme Court in Union of India v. Elphinstone Spinning and Weaving Co. Ltd., AIR 2001 SC 724. In the instant case, it is clear that advertisement before acceptance was done under proviso to Sub-section (1) of Section 20 which is relevant for exercising power in the nature of acceptance or refusal of application under Sub-section (4) of Section 18. Thus, there had been a proper exercise of powers under the provisions of the Trade and Merchandise Marks Act, 1958.

7. Now we proceed to the examination of the merits of the findings of the Joint Registrar of Trade Marks in matter of acceptance of the trade mark. He has made examination of the impugned mark under Section 12(1) of the Act. The impugned mark 'Original SVS' under application 479367B dated 05.10.87 is deceptively similar to the mark of the respondent 'SVS' over a triangle. Of course, under that registration there is no exclusive right for the use of the letters 'SVS'. But while comparing the impugned mark, the mark has to be taken as a whole which includes the letters 'SVS' also. The word 'Original' further adds to the confusion and deception that as if this is a product which is associated with the products of the respondents. Since the mark relate to the same products, so on the second count ,of Section 12(1) also the mark fails in its scrutiny.

8. Accordingly we dismiss the appeal without any order relating to costs.