JUDGMENT
A.K. Sikri, J.
1. An interesting question relating to
territorial jurisdiction of this court has been posed
in this case. The petitioner filed the application
under Section 46 and 56 of the Trade and Merchandise
Marks Act(for short ‘Act’) for rectification of the
registered trade mark No. 507445 as of 23th March, 1989
in class 9 of the IV Schedule of the Act. The trade
mark KUNDAN/KUNDAN CAB is the subject matter of the
aforesaid registration which is registered in the name
of the respondent No. 1. It is in respect of electrical
accessories and fittings including electrical switches,
main switches, fuse units, wires and cables and
electrical irons. The petitioner claims that it has
also been using the trade mark KUNDAN/KUNDAN CAB/KUNDAN
CABLES INDIA in respect of these very goods since 1980
and when the petitioner came to know that the
respondent No. 1 was also using the same trade mark, the
petitioner filed suit for permanent injunction in the
court of District Judge, Delhi. In the said suit, the
respondent No. 1 filed counter claims and it was
disclosed that the trade mark KUNDAN/KUNDAN CAB is
registered in favor of the respondent No. 1. It is
because of this reason, the present petition is filed
by the petitioner for rectification and prayer is made
the trade mark No. 507445 in Class 9 of IV Schedule be
cancelled/expunged from the Register of Trade Marks.
2. The question of territorial jurisdiction
arises in the following circumstances:
3. The respondent No. 2 herein, which is a firm,
with its office at Chennai had filed an application for
registration of the aforesaid trade marks. When the
application was still pending, the respondent No. 2
assigned the trade mark KUNDAN in favor of respondent
No. 1. This assignment application was allowed by the
Registrar and accordingly the registration certificate
was issued to the respondent No. 1. Since the
application was filed in the Trade Mark Registry at
Chennai, the objection of the respondents 1 & 2 is that
the application for rectification can be filed in the
court at Chennai only.
4. In support of the aforesaid submissions,
learned counsel for the respondents 1 & 2 submitted
that Section 2(1)(h) of the Act defines High Court to
mean the High Court having jurisdiction under Section
3. Under Section 3(b) of the Act, the High Court
having jurisdiction under this Act shall be the High
Court within the limits of whose appellate jurisdiction
the office of the Trade Mark Registry referred to in
each of the following cases is situated present
purposes Clause (b) is relevant and accordingly the
application for registration of the said trade mark was
made at the Trade Mark Registry at Chennai and it is in
that office where the present trade mark is registered.
Under Rule 4 of the Trade and Merchandise Mark Rules,
1959 (for short ‘Rules’) the appropriate office of the
Trade Mark Registry for the purposes of making the
application for registration or for filing an
application for rectification or for any proceedings
under the Act and Rules for the purposes of the said
trade mark registration and the instant rectification
is the Trade Mark Registry at Chennai. Further, the
jurisdiction of the appropriate office cannot be
altered by change in principal place of business or
address for service under Rule 5. Under Rules 6, the
Registrar of Trade Marks has entered the appropriate
office of the Trade Mark Registry at Chennai as the
appropriate office wherein the said trade mark has been
registered and wherein the said application for
registration was made. The same is also borne out by
the advertisement of the said trade mark in the Trade
Mark Journal No. 1045 at page 990 and a perusal thereof
shows that the principal place of business and the
appropriate office thereof is at Chennai as also for
registration was also made before the Registrar of
Trade Marks at Chennai. Under Section 5 of the Act,
the Government of India has established Trade Mark
Registries in five regions covering the whole of India
having jurisdiction over their notified States and
territories. The five regions having their respective
Trade Mark Registries are at Bombay, Calcutta, Delhi,
Ahmedabad and Chennai. The Registrar of Trade Marks at
Chennai exercises jurisdiction over the States of
Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and the
Union Territories of Pondicherry and Lakshadweep
islands. The appropriate office of the trade mark
registry where the said trade mark was registered and
the said registry is situate is at Chennai and the
appropriate High Court as per Section 3 of the Act is
at Chennai.
5. In support of his submission learned counsel
relied upon the following three judgments as well:
1. Priya Enterprises v. Prestige Housewares (India) Ltd. reported in 1998 PTC(18) 539.
2. Satya Narayan Khub Chand and Ors. v. Rama Chandra Laxmi Narayan .
3. Vikas Manufacturing Company v. Maharaj Manufacturing Company reported in 1981 PTC 87.
6. The submission of the learned counsel for the
petitioner, on that other hand, was that the
application for registration was filed by the
respondent No. 2 with the Chennai office on 23rd March,
1989, it was published in the Journal on 16th December,
1992 and the application for assigning the trade mark
by respondent No. 2 in favor of the respondent No. 1 was
filed on 17th February, 1993 which was allowed on 14th
April, 1993 itself. Thus the respondent No. 1 which is
a party in Delhi, got itself substituted for respondent
No. 2 and pursued with the application. The certificate
of registration was granted on 15th November, 1994 in
favor of the respondent No. 1 which has its office at
Delhi. On the basis of these facts, learned counsel
for the petitioner submitted that provisions of Section
3(a) would get attracted as per which this court has
the territorial jurisdiction to try the instant
petition.
7. It was his further submission that the
application for rectification has to be decided as a
suit in view of the position laid down in Section 107
of the Act. He also referred to the other provisions
relating to rectification and correction of the
register i.e. Section 56 and Section 108 of the Act.
8. I have given my thoughtful consideration to
the issue involved.
9. Section 3 of the Act deals with the
jurisdictional aspect and stipulates that as to which
High Court shall have the jurisdiction to deal with the
cases under different circumstances. Five different
situations are mentioned in Clause (a) to (e) of
Section 3. We are not concerned with Clause (c) to
(e). Whereas the petitioner is relying upon Clause (a)
of Section 3 the respondents 1 & 2 are taking shelter
under Clause (b). In order to appreciate the rival’s
contention, it would be appropriate to reproduce the
provisions of these two Clauses in the first instance:
3. High Court having jurisdiction:- The
High Court having jurisdiction under this
Act shall be the High Court within the
limits of whose appellant jurisdiction
the office of the Trade Marks Registry
referred to in each of the following
cases is situate, namely:-
(a) in relation to a trade mark on the
Register of Trade Marks at the
commencement of this Act, the office of
the Trade Marks Registry within whose
territorial limits the principal place of
business in India of the proprietor of
the trade mark as entered in the register
at such commencement is situate;
(c) in relation to a trade mark for which
an application for registration of
pending at or is made on or after the
commencement of this Act, the office of
the Trade Marks Registry within whose
territorial limits the principal place of
business in India of the applicant as
disclosed in his application is situate.
10. Clause (a) shall have no application in the
present case simply because it is applicable in those
cases where the trade mark has already been registered
at the time of commencement of the Act and in that case
the office of the trade mark registry within whose
territorial limit the principal place of business in
India of the proprietor of the trade mark as entered in
the register at such commencement is situate. This
provision takes care of all those trade marks which
were already registered at the time when this Act came
into force and does not deal with applications for
registration filed after the commencement of the Act.
In the present case application for registration of
trade mark was filed much after the Act came into
force. The provisions of Clause (b) are clearly
attracted in such case which, inter alia, deals with
those situations also where the application for
registration is made on or after the commencement of
the Act. In that case the office of the Trade Mark
Registry whthin whose territorial limits the principal
place of business in India of the applicant as
disclosed in his application is situate. Here the
application was filed by the respondent No. 2 in the
Trade Mark Registry at Chennai. The principal place of
business as disclosed in his application was Chennai.
Simply because during the pendency of the application,
the assignment was made in favor of the respondent
No. 1 would not alter the position in law. Afterall the
application remained pending with the Trade Mark
Registry at Chennai where it is ultimately registered
and the register containing the registration of the
respondent No. 1’s trade mark is kept at Chennai.
11. Let us now examine the position from another
angle. In those cases where the registration is done
by the Trade Mark Registry of a particular region and
subsequently there is an assignment by the trade mark
owner in favor of another party which is outside the
jurisdiction of that Trade Mark Registry, such
subsequent assignment would not alter or affect the
position in any manner. The appropriate office of the
Trade Mark Registry would continue to remain the same
and this conclusion is inevitable on the combined
reading of Sections 2(1)(h), 3(b), and 5 of the Act as
well as Rules 4, 5 & 6 of the Rules. This is also the
ratio of the three judgments cited by learned counsel
for the respondents 1 and 2. Therefore, emphasis is on
the place where the application is made initially.
After making the application assignment takes place
during the pendency of the application or after the
registration of the trade mark would not make any
difference in law. Thus I find force in the arguments
of learned counsel for the respondents 1 and 2. Under
Section 23(1)(b) of the Act, the trade mark when
registered shall be registered as of the date of making
of the said application and it is that date that shall
be deemed to be the dt of registration. The date on
which the application of registration was made in
March, 23 1989 which is clear from the Trade Mark
Journal. The purpose of confining the trade mark
registration to one jurisdiction/office for the
purposes of its rectification under the provisions of
Sections 2(1)(h), 3, 5 and Rules 4, 5 and 6 is,
inter alia, to facilitate rectification proceedings so
that an aggrieved party does not have to run around to
various courts should the assignment be effected in
various different jurisdiction. Likewise, even the
registered proprietor gets confined to one jurisdiction
wherein the validity/removal of his mark can be
determined. The Legislature has chosen the situs of
the trade mark as the place for conferring territorial
jurisdiction which continuous to be at the trade mark
registry at Chennai. Even in a civil action for
injunction the suit can be filed at a place where the
mark is registered even though the person infringing
the registered mark does not carry out its impugned
activities in that place. (Refer: 1. Amrutanjan Ltd.
v. Ashwin Fine Chemicals and Pharmaceuticals reported
in 1991(2) A.L.R. 384(MAD), 2. K.B. Venkatachala
Mudaliar v. Vanaja Match Works reported in 1990
PTC 259 and 3. Ramu Hosieries rep. by M. Murugeshan v.
Ramu Hosieries, rep. by Pandela Ramu and Anr.
reported in 1999 PTC 183.
12. Consequently this application which is filed
by the petitioner is not maintainable in this court and
ought to have been instituted in the High Court of
Madras at Chennai.
13. The petition is accordingly returned for
presentation before the appropriate court.