S.A. Bobde, J.
1. This petition is preferred by Bakemans Industries Limited challenging the order dated 22nd December, 1999 passed by the Deputy Registrar of Trade Marks holding that he has no jurisdiction to entertain the petitioner's application for rectification in view of the provisions of Section 107 of the Trade and'Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") and that the application would have to be made to the High Court.
2. The petitioner, Bakemans Industries Limited, adopted a trade mark "GLUCOGOLD" sometime in August, 1997. On 4th August, 1997 they applied for its registration in Class-30 which inter alia includes Bread and Biscuits.
3. On 5th December, 1997, the petitioner did two things, viz.:--
(1) They despatched the present application for rectification to the Registrar by Speed Post. In that application the petitioner prayed for rectification of the register to the effect that the respondents' trade mark "GLUCO" be struck off the register.
(2) They filed a suit in the District Court at Patiala under Section 120 of the Act which enables the person who is threatened with an action of infringement of a trade mark to obtain a declaration to the effect that the threats are unjustifiable and inter alia for an injunction against the continuance of a threat in that suit apart from the injunction restraining the respondents from issuing groundless threats, the petitioner also sought a declaration that they have infringed the trade mark GLUCO by using their own trade mark GLUCOGOLD. The petitioner has also prayed for damages.
The petitioner's application for rectification, despatched by Speed Post appears to have reached the Registrar on 12th December, 1997, at least it appears to have been registered on that date.
4. On 28th January, 1999 the respondent filed an interlocutory application before the Registrar alleging that the Registrar had no jurisdiction in view of Section 107 of the Act. Section 107 reads as follows :--
"Section 107. Application for rectification of register to be made to High Court in certain cases. -- (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 and the Plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in Section 46, Sub-section (4) of Section 47 or Section 56, such application shall be made to the High Court and not to the Registrar.
(2) Subject to the provisions of Sub-section (1), where an application for rectification of the register is made to the Registrar under Section 46 or Sub-section (4) of Section 47 or Section 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court."
The Registrar has upheld the respondents' objection finding that his jurisdiction to entertain an application for rectification is barred in view of the above mentioned suit filed by the petitioner against the respondents at Patiala under Section 120 of the Act.
5. The only question before me, therefore, is whether the Registrar has the jurisdiction to entertain petitioner's application for rectification of the register in view of the fact that the petitioner has also filed a suit in the Court at Patiala.
6. The answer to this question must necessarily depend on the construction of the Section 107 of the Act. On a plain reading of the section, it is clear that application for rectification must be made to the High Court and not to the Registrar, in the following circumstances:--
(1) Where there is a suit for infringement of a registered trade mark and in such a suit the validity of the registration of the Plaintiffs trade mark is questioned by the defendant, or
(2) Where in such a suit the defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 of the Act to the effect that the use of a registered trade mark which resembles the plaintiffs trade mark is in exercise of the right to use of the trade mark given by registration under the Act, and
The Plaintiff questions the validity of the registration of the defendant's trade mark.
It must, therefore, be seen whether the suit filed by the petitioner can be said to be a suit which is a suit of the aforesaid description.
7. The cause of action of that suit is that the respondents had issued a notice dated 24th October, 1997 to the petitioner that the petitioner was infringing the respondents trade mark. Considering the said notice to be a groundless threat the petitioners instituted the suit for the reliefs stated above.
8. Mr. Kadam, learned counsel for the petitioner referred to the plaint filed at Patiala where the petitioner has made the following prayers:--
"It, is therefore, respectfully prayed that the suit of the plaintiff may kindly be decreed with costs in favour of the plaintiff and against the defendant for declaration under Section 60 of the Copy Right Act, 1957 and 120 of the Trade and Merchandize Marks Act, 1958 to the effect that there is no infringement of the Trade Mark GLUCO of the defendant by the plaintiff and the plaintiff has not infringed any other legal right of the defendant by using the Trade Mark "GLUCOGOLD" and for permanent injunction restraining the defendant, his servants, employees and agents, etc. from issuing groundless threats to the plaintiff to the effect that the plaintiff is infringing the Trade Mark GLUCO of the defendant by using the Trade Mark "GLUCOGOLD" and also for damages as the plaintiff has suffered a lot in terms of money after issuance of groundless threats by the defendant from time to time."
9. In short the suit is for a declaration that the petitioner has not infringed the respondents trade mark and therefore the respondents must be restrained from issuing groundless threats that the petitioner has done so.
10. Mr. Shah, learned counsel for the respondents submitted that though the suit is not a suit for infringement of petitioner's registered trade mark in which the respondents have questioned the validity of the petitioner's trade mark or a suit in which the validity of the registration of the respondents' trade mark is questioned by the petitioner, as required by Section 107 of the Act; the suit must nonetheless be considered to be a suit of that nature. In support of this submission Mr. Shah referred to certain averments in the plaint to the effect that the defendants cannot claim proprietorship on the trade mark GLUCO and that the word GLUCO is not registerable and no exclusivity can be claimed on it since it is a common word.
11. Having considered the rival submissions, I am of view that the Registrar has misdirected himself in law in arriving at the finding that "he has no jurisdiction under Section 107 of the Trade and Merchandise Marks Act since in the civil suit the petitioner has pleaded invalidity of the registration of the respondents trade mark." In other words, the Registrar is of opinion that merely because the petitioner has made averments to the effect that the respondents trade mark GLUCO has been wrongly registered, the Registrar has no jurisdiction to entertain an application for rectification. In my view the aforesaid findings of the Registrar is erroneous since the Registrar's jurisdiction to decide an application for rectification is barred only where the pending suit is a suit for infringement; and further in such a suit the defendant has questioned the validity of the registration of the Plaintiff s trade mark. Nor are the averments that the respondents' trade mark is wrongly registered call into question the validity of the respondents' trade mark because he has set up a plea under Section 30(1)(d). It is clear that the suit in the present case is not a suit for infringement filed by the petitioner in which the respondent has questioned the validity of the petitioner's trade mark. The suit is merely a suit in which the petitioner claims that the respondents' threat that it will take action against petitioner for infringing its (respondents') trade mark is groundless.
12. The scope of Section 120 of the Act in which the suit is filed is relevant. Section 120 reads as follows:--
"Section 120. Groundless threats of legal proceedings. -- (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfied the Court that the trade mark is registered and that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of the Sub-section (1) of Section 51, with the diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under Sub-section (1) shall not be instituted in any Court inferior to a District Court."
13. On a plain reading of the section, particularly Sub-section (1), the intention of the Parliament is clear. It is to enable a person to obtain relief against another who is making groundless threats that his trade mark is being infringed. The section itself provides that the Plaintiff will not be entitled to any such relief if the defendant satisfied the Court that his trade mark is registered and that the action he has threatened is to protect infringement of such a trade mark. The suit comes to an end if the defendant proves that his trade mark is registered. The scope of such a suit precludes a Plaintiff from questioning the validity of the registration of the defendants* trade mark. If he wishes to do so, he must resort to proceedings under Chapter VII for Rectification or Correction of the Register. A suit under Section 120 cannot therefore be a suit for infringement in which the defendant can question the validity of the Plaintiffs trade mark, or upon the defendant claiming a right under the Act to use the trade mark, the Plaintiff can question the validity of the registration of the defendant's trade mark.
14. In my view the petitioner's suit is not filed for infringement of the trade mark. Therefore, the respondents cannot question the validity of the petitioner's trade mark. Neither is the suit in question is a suit for infringement in which the respondents has raised a defence under Section 30(1)(d) and the petitioner has questioned the validity of the respondents' trade mark. The legislative intent is clear i.e. that the Registrar would not entertain an application for rectification of the Register where in a pending suit for infringement the defendant has questioned the validity of the registration of the Plaintiffs trade mark or on a defence being set up under Section 30(1)(d) the Plaintiff has questioned the validity of the respondents' trade mark. The petitioner's suit does not fit this description. There is no merit in the submissions made on behalf of the respondents that the suit be taken to be of this description since there are certain averments made by the petitioner that the respondents' trade mark has been wrongly registered. The petitioner may have in his suit made several allegations. For the purpose of determining the scope of the power conferred by Section 107 of the Act and particularly to see the Registrar's jurisdiction to entertain an application for rectification is ousted. It is important to see the intention of the Parliament in ousting the jurisdiction of the Registrar. The obvious intention, in my view, is to prevent the Registrar from entertaining an application for rectification when the issue as to the validity of the registration of the Plaintiff's or defendants' trade mark is pending in civil suit. Having read the plaint, I am of the view that the pending suit in this case is a suit under Section 120 of the Act where the petitioner has primarily sought an injunction restraining the defendants i.e. respondents from issuing groundless threats to the petitioner, based on a declaration that the petitioner has not infringed respondents' trade mark GLUCO by using the trade mark GLUCOGOLD. Having regard to the scope of Section 120 of the Act the question of the validity of the petitioner's or the respondents' trade mark cannot be gone into in the suit.
15. The other grounds given by the Registrar in his order namely that the petitioner has made a false statement in Form TM-26 to the effect "no action concerning the trade mark in question is pending in any Court," is not determinative of the question whether the Registrar has jurisdiction to entertain the application for rectification. Moreover, Mr. Kadam, the learned counsel for the petitioner pointed out that the application for rectification was despatched on the same day on which the suit was filed and it is in those circumstances that the aforesaid statement was made in Form TM-26.
16. In this view of the matter the present petition is allowed in terms of prayer Clause (a), which reads as under :--
"(a) That this Honourable Court may be pleased to call for the records of rectification No. Bom 52079 and quash and set aside the impugned order and decision dated December 22, 1999 of the second respondent and restore the rectification petition filed on behalf of the petitioner."
In the circumstances of the case, however, there shall be no order as to costs.
P. A, to give ordinary copy of this order to the parties concerned.