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1998 DIGILAW 520 (KER)

Whirlpool Corporation v. Registrar of Trade Marks

1998-10-26

K.T.THOMAS, S.SAGHIR AHMAD

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JUDGMENT : S.SAGHIR AHMAD, J. 1. WHIRLPOOL, true to their name, have created a WHIRLPOOL of litigation in this country. Based, as they are, in the United States of America, they started the gyrating movement by applying for registration of their Trade Mark “WHIRLPOOL” to the Registrar of the Trade Marks under the Trade Marks Act, 1940, which has since been replaced by the Trade and Merchandise Marks Act, 1958 and which, for the sake of brevity, shall hereinafter be referred to as the “Act”. The Trade Mark was duly registered and a Certificate of Registration was issued on 31st of July, 1957 which was renewed twice, in 1962 for a period of seven years and again for seven years with effect from 22.2.70. Since further renewal was not obtained after 1977, it was removed from the Register but the appellants continued to publicise their Trade Mark “WHIRLPOOL” as also the company name through publications which had wide circulation in this country and thus managed to maintain their reputation among the business circle including prospective customers and buyers. 2. On 6th of August, 1986, Mrs. Sumitra Charat Ram and Mr. N. R. Dongre, as Trustees of Chinar Trust, applied for registration of the Trade Mark “WHIRLPOOL” in Class 7 under Application No. 458134, which has duly advertised by the Registrar in Trade Marks Journal No. 945 on page 845 pursuant to which the appellant filed their Opposition on 6th January, 1989, but their objections were dismissed by the Assistant Registrar by his order dated 12.8.1992. An appeal against this order which was filed in the Delhi High Court on 7.11.1992 has since been admitted on 1.2.1993 and registered as C.M. (Main) No. 414 of 1992. 3. In the meantime, “WHIRLPOOL” was registered as the Trade Mark of the Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was granted to them. A petition for rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 4.8.1993 under Sections 45 and 46 of the Act. It is still pending. 4. A petition for rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 4.8.1993 under Sections 45 and 46 of the Act. It is still pending. 4. Since Chinar Trust had also started using the Trade Mark “WHIRLPOOL” in relation to certain washing-machines, allegedly manufactured by them, the appellant, as owner of the Trade Mark “WHIRLPOOL”, filed a Suit (Suit No. 1705 of 1994) for passing off in the Delhi High Court with an application for temporary injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure for restraining the defendants, namely, Chinar Trust, etc., from using the Trade Mark WHIRLPOOL in relation to their products. A single Judge of the Delhi High Court granted temporary injunction to the appellant on 31.10.1994 which was upheld by the Division Bench on 21.4.1995. Special Leave Petition filed against this order by the Chinar Trust has already been dismissed by this Court on 30.8.1996. 5. On 28.2.1997, the appellant filed an application in Form TM-12 for renewal of the Trade Mark “WHIRLPOOL” in Class 7 and the Registrar, by his order dated 29th July, 1997, allowed the renewal for three successive periods, namely, 22.2.1977, 22.2.1984 and finally 22.2.1991. Thereafter, on 8th August, 1997, appellant made an application under Order 6 Rule 17 C.P.C. for amendment of the plaint in Suit No. 1705 of 1994, referred to above, so as to include the ground of infringement of the Trade Mark also in the suit but the application is still pending in the Delhi High Court which has already granted time twice to the defendants, namely, Chinar Trust, to file a reply. 6. In the meantime, Chinar Trust, through its attorneys, wrote on 10th September, 1997 to the Registrar to take suo motu action under Section 56(4) for cancellation of the Certificate of Renewal granted to the appellant on 29th July, 1997 and the Registrar, acting on that request, issued a notice to the appellant on 26th September, 1997 requiring it to show cause why the Certificate of Registration be not cancelled. Against this notice, the appellant filed a writ petition in the Bombay High Court which was dismissed on 8.12.1997. It is against this judgment that the present appeal has been filed. 7. Mr. Against this notice, the appellant filed a writ petition in the Bombay High Court which was dismissed on 8.12.1997. It is against this judgment that the present appeal has been filed. 7. Mr. Iqbal Chagla, senior counsel appearing for the appellant, has contended that a notice under Section 56(4) can be issued only by the ‘TRIBUNAL’, which has been defined in Section 2(1)(x), which means the Registrar or the High Court before which the `proceeding concerned’ is pending. Mr. Chagla has contended that it is either the Registrar or the High Court, which can issue a notice under Section 56(4), but out of the two, only that authority can issue the notice before which the ‘proceeding concerned’ is pending. It is, further, contended that since a passing-off suit was already pending in the Delhi High Court, where the appellant had also moved an application for amendment of the plaint so as to include the relief of infringement of its Trade Mark notice under Section 56(4) could have been issued only by the Delhi High Court and not by the Registrar. 7. Mr. R. N. Trivedi, ASG appearing for the Registrar, has, on the contrary, contended that the Registrar continued to retain his jurisdiction under Section 56 of the Act, notwithstanding the pendency of the passing off suit filed by the appellant in the High Court as the said suit could not be treated to constitute, in any manner, “proceedings” under the Act. Moreover, the application for amendment, by which the relief relating to infringement of Trade Mark was sought to be added in the plaint was still pending and unless that application was allowed and the additional paragraphs, including the above relief, were added in the plaint, the nature of proceedings would not change and they will continue to be treated as proceedings in a suit and not “proceeding” under the Act. 8. This is also the contention of Mr. Sudhir Chandra, Senior Counsel appearing for the Chinar Trust. He has also contended that the High Court was fully justified in dismissing that petition at the threshold part.