The case of Jagatjit Industries Limited v. The Intellectual Property Appellate Board & Ors., decided on January 20, 2016, by the Supreme Court of India, provides significant insights into the powers of the Registrar of Trademarks, particularly in the context of rectifying the trademark register.

The central issue in this case was whether Section 125 of the Trademarks Act, 1999, limits or removes the Registrar's suo motu power to rectify the trademark register, even when a rectification application is pending before the Intellectual Property Appellate Board (IPAB). The Court's ruling reaffirmed the Registrar's authority to maintain the integrity of the trademark register, irrespective of Section 125.

Background: The Dispute Over the "BLENDERS PRIDE" Trademark:
The dispute in this case centered around the trademark "BLENDERS PRIDE," a well-known brand associated with alcoholic beverages. The respondent, a corporation incorporated in the United States and a subsidiary of Pernod Ricard S.A., claimed to have coined and adopted the trademark "BLENDERS PRIDE" in 1973. Since then, the respondent had established its reputation globally, including in India, where it began selling products under this trademark in 1995. The respondent had registered the trademark in over 50 countries, reinforcing its international recognition.

Jagatjit Industries Limited, the appellant in this case, applied for registration of an identical trademark in India. This application was advertised in the Trademarks Journal on October 7, 2003. The respondent filed a notice of opposition within the statutory period and requested an extension of time to file a detailed opposition. Despite the opposition being pending, the appellant was issued a trademark registration certificate on January 13, 2004. The respondent subsequently filed a writ petition before the Delhi High Court, challenging the wrongful issuance of the registration certificate. In response, the Registrar of Trademarks issued a show cause notice to the appellant, proposing to rectify the register.

Legal Issues: The Intersection of Sections 57(4) and 125 of the Trademarks Act:
The appellant contested the show cause notice on several grounds, including the argument that the notice was not maintainable and that the opposition filed by the respondent was beyond the prescribed time limit. The appellant further argued that once the registration certificate was issued, the only way to challenge it was through an application for rectification under Section 125 of the Trademarks Act, 1999, which should be dealt with by the IPAB and not the Registrar.

The respondent, on the other hand, maintained that the Registrar had rightfully extended the time for filing the opposition and that the issuance of the registration certificate to the appellant was therefore invalid. The respondent argued that the Registrar's powers under Section 57(4), which allows for the rectification of the register to correct errors or omissions, were independent of Section 125 and could be exercised suo motu.

Court's Analysis and Ruling:
The Supreme Court's ruling provided clarity on the interplay between Sections 57(4) and 125 of the Trademarks Act, 1999:

Registrar's Suo Motu Powers Under Section 57(4):
The Supreme Court upheld the Delhi High Court's Division Bench decision, which stated that the Registrar's power to rectify the register under Section 57(4) is independent and not curtailed by Section 125. Section 57(4) empowers the Registrar to correct any mistake or omission in the register, whether brought to their attention by an application or noticed by themselves (suo motu). The Court emphasized that this power is crucial for maintaining the accuracy and integrity of the trademark register.

Section 125 and Its Scope:
The appellant had argued that once a trademark is registered, any challenge to its validity must be made through a rectification application under Section 125, to be decided by the IPAB. However, the Court clarified that Section 125 does not limit the Registrar's power under Section 57(4) to rectify the register on their own initiative. Section 125 primarily deals with the procedural aspect of rectification applications and does not override the substantive powers granted to the Registrar under other provisions of the Act.

Validity of the Registration Certificate:
The Supreme Court found that the registration certificate issued to the appellant was in violation of Section 23(1) of the Trademarks Act, 1999, as the respondent's opposition was pending and the time for filing a detailed opposition had been extended by the Registrar. The Court held that the issuance of the registration certificate was a mistake, which the Registrar was within their rights to correct under Section 57(4).

Purity of the Trademark Register:
The Court also emphasized the importance of maintaining the "purity" of the trademark register. The register must accurately reflect the rights of trademark owners, and any wrongful or erroneous entries must be rectified promptly. The Registrar's power to correct such errors, even suo motu, is essential to ensuring that the register remains a reliable and accurate record of trademark rights.

Implications of the Decision:
The Supreme Court's ruling in this case has significant implications for the administration of trademark law in India. It affirms the Registrar's authority to act proactively to rectify the trademark register, ensuring that it remains an accurate and truthful record of trademark ownership. This decision also clarifies that the procedural provisions of Section 125 do not override the substantive powers conferred on the Registrar by other sections of the Trademarks Act, particularly Section 57(4).

For trademark owners, this ruling serves as a reminder that the registration process must be carefully managed, especially when opposition proceedings are pending. The case also underscores the importance of vigilance on the part of the Registrar to prevent erroneous registrations from standing and potentially misleading the public.

Conclusion:
The case of Jagatjit Industries Limited v. The Intellectual Property Appellate Board & Ors. is a landmark decision that clarifies the scope of the Registrar's powers under the Trademarks Act, 1999. The Supreme Court's judgment underscores the importance of maintaining the purity of the trademark register and affirms the Registrar's authority to rectify errors, even on their own initiative. This decision reinforces the integrity of the trademark registration system in India and provides clear guidance on the interplay between different provisions of the Act, particularly Sections 57(4) and 125.

Case Citation: Jagatjit Industries Limited vs The Intellectual Prop Appellate Board: & Ors: AIR 2016 SUPREME COURT 478,

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539