Jagatjit Industries Limited v. The Intellectual Property Appellate Board & Ors.
Background
The appellant obtained registration of the trademark "BLENDERS PRIDE" in January 2004, but a US-based company (through its Indian licensee, Seagram) claimed it had already been using and had applied to register the identical mark, and had a pending opposition to the appellant's application that the Registrar seemingly overlooked when granting registration early. After the Registrar himself later tried to recall the registration under Section 57(4) of the Trade Marks Act, a tangle of proceedings followed between the Registrar, the Appellate Board, a single judge and a Division Bench of the Delhi High Court over who had the power to examine this dispute, given that a separate trademark infringement suit was also pending in Jalandhar.
Decision Breakdown
The core legal question was whether Section 125 of the Trade Marks Act, which generally channels rectification disputes into the Appellate Board once a trademark's validity is raised as a defence in an infringement suit, barred the Registrar from using his own suo motu correction power under Section 57(4). The Supreme Court held that Section 125 did not apply here because the party raising the invalidity defence (Seagram) was not the same entity as the trademark's actual rival claimant, and that the Registrar's duty to maintain the purity of the trademark register under Section 57(4) is independent of a party's right to seek rectification under Section 125. Agreeing with the Delhi High Court's Division Bench, the Court found the appellant's registration had indeed been granted in violation of the mandatory three-month opposition period under Section 23(1) of the Act. It dismissed the appeal, upholding the direction for the Registrar/Appellate Board process to proceed afresh, with no costs.
Lesson Learnt
A trademark registration granted before the statutory opposition period has properly run its course can be challenged and corrected even outside of a separate infringement lawsuit: the trademark Registrar's power to fix his own register's errors is not automatically switched off just because related litigation is pending elsewhere.