# BLENDERS PRIDE TRADEMARK DISPUTE: WHEN A REGISTRY ERROR MEETS OPPOSITION RIGHTS
## Introduction
The case of Jagatjit Industries Limited versus The Intellectual Property Appellate Board decided by the Supreme Court of India on 20th January 2016 touches upon some of the most fundamental questions in trademark law in India. What happens when the Trade Marks Registry issues a registration certificate by mistake, in clear violation of the statutory procedure governing opposition? Can a Registrar exercise suo motu power to correct such an error even when infringement proceedings are pending in a civil court? Does the bar created by Section 125 of the Trade Marks Act, 1999 extend to the Registrar's independent power to maintain the purity of the trademark register? These questions, which have significant practical consequences for trademark proprietors and opponents alike, were squarely addressed by the Supreme Court in this appeal filed by Jagatjit Industries Limited.
## Factual and Procedural Background
The dispute revolves around the trademark "BLENDERS PRIDE," a well-known name in the Indian whisky market. Respondent No. 4, Austin Nichols and Company Incorporated, a corporation registered under the laws of the United States of America and an ultimate subsidiary of Pernod Ricard S.A., claimed to have coined and adopted the trademark BLENDERS PRIDE through its licensee M/s. Seagram Company Limited as far back as 1973. Austin Nichols claimed that on account of extensive sales and marketing worldwide, the trademark had acquired tremendous reputation, and that it had obtained registration in more than 50 countries. In India, it had been selling BLENDERS PRIDE whisky through its licensee Seagram India Private Limited since 1995, and had applied for registration of the trademark under two applications in Class 33, which were pending.
Jagatjit Industries Limited, the appellant, also applied for registration of the identical trademark BLENDERS PRIDE. This application was advertised in the Trademarks Journal Mega-I, which was published on 7th October 2003. Under the Trade Marks Act, 1999, any person wishing to oppose a trademark application must file a notice of opposition within three months from the date of advertisement, with a provision for a further extension of up to one month in aggregate. Austin Nichols, within the statutory three-month period, filed Form TM-44 on 6th January 2004 seeking an extension of one month to file its notice of opposition, citing the need to seek legal advice. On 19th January 2004, Austin Nichols filed its notice of opposition before the Trade Marks Registry, New Delhi, which was duly numbered as DEL-160325.
On 16th February 2004, the Trade Marks Registry issued a notice to Jagatjit Industries Limited under Section 21(2) of the Act, calling upon it to file a counter-statement to the notice of opposition within two months, with a warning that failure to do so would result in the trademark application being deemed abandoned. This letter, as the Court noted, unambiguously reflected that the notice of opposition had been taken on record.
However, despite opposition proceedings being actively pending, Austin Nichols discovered on 20th January 2005 that a trademark registration certificate bearing No. 618414 had already been issued to Jagatjit Industries Limited on 13th January 2004 — that is, before the extended opposition period had even expired and while the opposition proceedings were still very much alive.
Austin Nichols immediately informed the Trade Marks Registry about the pending opposition proceedings. Receiving no response, it filed writ petitions before the Delhi High Court being Writ Petition Nos. 2712 and 2713 of 2005. On 16th February 2005, the Registrar issued a show cause notice to Jagatjit Industries under Section 57(4) of the Trade Marks Act, 1999, stating that the registration certificate had been issued wrongly and proposing to rectify the register by removing the mark. Jagatjit was also directed to return the wrongly issued certificate and not to use it in any proceedings.
Jagatjit challenged this show cause notice by filing Writ Petition Nos. 10080-81 of 2005 and obtained an interim stay. Meanwhile, on 14th January 2005, Jagatjit had already filed a suit for infringement of its trademark in the District Court of Jalandhar against Seagram Distilleries Private Limited, the licensee of Austin Nichols. In the written statement filed in that suit, Seagram took up the plea that Jagatjit's registration was under challenge and hence the suit ought to be stayed.
On 14th November 2005, the Registrar recalled the show cause notice, holding that in view of Section 125 of the Act, jurisdiction had shifted to the Intellectual Property Appellate Board since infringement proceedings were pending in a civil court. In an appeal before the Appellate Board, the Board reversed the Registrar's order on 6th October 2006, holding that the registration of the trademark on 13th January 2004 was contrary to Section 23 of the Act and directing the Registrar to proceed with the opposition proceedings.
Jagatjit challenged the Appellate Board's order before the Delhi High Court. The learned Single Judge, by judgment dated 9th May 2008, set aside the Appellate Board's order and upheld the Registrar's earlier decision to recall the show cause notice, holding that Section 125 applied and that the Whirlpool judgment of the Supreme Court supported this view. In appeal, however, the Division Bench reversed the Single Judge's decision, holding that the registration was issued in violation of Section 23(1) of the Act, that Section 125 did not bar the Registrar's suo motu powers under Section 57(4), and that it was the Registrar's duty to maintain the purity of the register. The Division Bench directed a de novo hearing of the case. It was against this Division Bench judgment that Jagatjit filed the present appeal before the Supreme Court.
## The Dispute
The central legal questions before the Supreme Court can be understood in three parts. First, was the extension of time for filing the opposition validly granted by the Registrar, and was the registration certificate issued on 13th January 2004 therefore illegal? Second, was the show cause notice issued from Bombay by the Registrar valid, given that the trademark proceedings had been conducted in Delhi? Third, and most importantly, does Section 125 of the Trade Marks Act, 1999 bar the Registrar from exercising suo motu power under Section 57(4) to rectify the register once an infringement suit is pending in a civil court where the defendant has challenged the validity of the plaintiff's trademark registration?
## Reasoning and Analysis of the Judges
Justice Rohinton Fali Nariman, who authored the judgment, examined these questions with care and clarity, drawing upon the statutory scheme of the Trade Marks Act, 1999 and relevant precedents.
On the question of whether extension of time was validly granted, the Court noted that Respondent No. 4 had filed Form TM-44 seeking extension of one month within the three-month period, and that the notice of opposition filed on 19th January 2004 was within the extended period. Most critically, the Registrar's letter dated 16th February 2004 had expressly taken the notice of opposition on record and called upon Jagatjit to file a counter-statement. The Court held that this letter itself was sufficient evidence that the Registrar had extended the time for filing opposition. A separate written order was not necessary, as the extension of time by the Registrar under the Act is a ministerial act requiring no formal hearing.
The Court referred to Section 131 of the Trade Marks Act, 1999, which empowers the Registrar to extend time if satisfied that there is sufficient cause, and expressly provides that no hearing is required and no appeal lies from such an order. While technically Section 131 would not apply to the time for filing opposition since that is expressly provided in the Act itself, the Court used it as a pointer to show that such extensions need not be accompanied by formal written orders. The Court also relied upon the principle settled in Kailash v. Nanhku (2005) 4 SCC 480, where the Supreme Court had held that procedural provisions must be construed in a manner that advances justice rather than defeats it, and that parties must not be denied the opportunity to participate in the justice dispensation process unless compelled by express and specific statutory language. Since the Registrar had clearly acted upon the application for extension by taking the notice of opposition on record, the registration certificate issued on 13th January 2004 — before the extended opposition period had even lapsed — was held to be in clear violation of Section 23(1)(a) of the Trade Marks Act, 1999, which mandates that registration can only be granted after the statutory period for filing opposition has expired without any opposition being received, or after an opposition has been decided in favour of the applicant.
The Court also rejected the argument that the show cause notice issued from Bombay was without jurisdiction. This argument had been raised by Jagatjit on the ground that the trademark application and all subsequent proceedings had taken place in Delhi, and therefore the Delhi office ought to have issued the show cause notice. The Court answered this by examining Section 3 of the Trade Marks Act, 1999, which provides that the Central Government appoints a person to be the Controller-General of Patents, Designs and Trade Marks, who is the Registrar of Trade Marks for purposes of the Act. Other officers in various parts of the country act under the superintendence and directions of this Registrar, whose office is in Bombay. Since there is only one Registrar under the Act and the suo motu power under Section 57(4) can only be exercised by the Registrar himself, the show cause notice issued from Bombay was perfectly valid.
The most substantive and legally significant part of the judgment deals with the interpretation of Section 125 of the Trade Marks Act, 1999 and its relationship with Section 57(4). Section 125(1) provides, in essence, that where in a suit for infringement of a registered trademark the defendant pleads that the registration of the plaintiff's trademark is invalid, the issue of validity shall be determined only on an application for rectification of the register, and such application shall be made to the Appellate Board and not to the Registrar, notwithstanding anything contained in Section 47 or Section 57.
Justice Nariman held that Section 125 does not apply to the facts of this case for two independent reasons. The first is factual. Section 125 speaks of proceedings arising in the context of a suit for infringement where the defendant questions the validity of the plaintiff's trademark registration. In the present case, the suit for infringement was filed by Jagatjit in the District Court of Jalandhar against Seagram Distilleries Private Limited. However, Austin Nichols — Respondent No. 4 before the Supreme Court — was not a defendant in that suit. The Court rejected the argument advanced by Jagatjit's counsel, Smt. Prathiba Singh, that since Seagram was merely a licensee of Austin Nichols and the authorized signatory of both companies was the same person, Austin Nichols should be treated as if it were a defendant. The Court found this argument unconvincing because Jagatjit's own plaint in the infringement suit did not even allege that Seagram was the licensee of Austin Nichols. In fact, Jagatjit's plaint stated that the defendant companies had not even applied for registration of the trademark BLENDERS PRIDE in their own names. Austin Nichols not being a defendant in the infringement suit, Section 125(1) could not be invoked.
The second reason is structural and of broader application. Even if Austin Nichols had been a defendant in the infringement suit, the Court held that Section 125(1) does not bar the Registrar's suo motu power under Section 57(4) because Section 125(1) applies only to applications for rectification of the register filed by parties, and not to the Registrar's independent exercise of its statutory duty to maintain the purity of the trademark register.
In reaching this conclusion, Justice Nariman drew upon a comparison with the predecessor legislation, the Trade and Merchandise Marks Act, 1958. Section 107(1) of the 1958 Act used the expression "section 46, section 56 and sub-section (4) of section 47," deliberately specifying only a particular sub-section of Section 47 rather than the whole section. This was because other sub-sections of Section 47 did not concern applications for rectification but explained what defensive trademarks were. In the 1999 Act, the width of the expression "Section 57" in Section 125(1) is restricted by the words "and an application for rectification of the register." Such applications for rectification are referable only to sub-sections (1) and (2) of Section 57, both of which deal with applications by parties. Section 57(4), which deals with the Registrar's suo motu power, does not contemplate any application by any party at all. Therefore, on a literal construction of Section 125(1), Section 57(4) falls outside its reach.
The Court also relied heavily upon the earlier Supreme Court decision in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. (2003) 11 SCC 92, which had firmly established that the Registrar has an independent duty to maintain the purity of the register and that the suo motu power under Section 57(4) serves a public interest function. The Court quoted Hardie's case to the effect that proceedings under Section 56 of the 1958 Act (equivalent to Section 57 of the 1999 Act) are commenced for the purity of the register, which it is in the public interest to maintain. Illustrating the importance of this interpretation, the Court pointed out a practical scenario: if a defendant in an infringement suit raises the plea of invalidity of the plaintiff's trademark registration and then reaches a compromise with the plaintiff and chooses not to file a rectification petition before the Appellate Board, the Registrar's power to clean up the register must remain intact regardless. Accepting the contrary interpretation would leave a wrongly registered trademark permanently on the register simply because private litigation ended without a rectification petition being filed.
The Court then turned to the Whirlpool Corporation v. Registrar of Trade Marks (1998) 8 SCC 1 judgment, which had been strongly relied upon by Jagatjit's counsel. The Court carefully distinguished that case on its facts. In Whirlpool, the rectification notice had been issued suo motu by the Registrar at the request of one of the parties to a suit for passing off — and critically, the court noted that an amendment application to add the relief of infringement had already been filed and was pending, so the suit was effectively on the verge of becoming an infringement suit within the meaning of Section 107(1) of the 1958 Act. The Court observed that no argument had been made in Whirlpool about the independence of Section 57(4) from Section 107(1), and the decision had turned entirely on the peculiar facts of that case. Further, in Whirlpool, one of the parties to the suit had applied for rectification, which distinguished it from the present case where Austin Nichols was not a party to the infringement suit. For these reasons, the Whirlpool judgment was held to have no application to the facts before the Court.
## Final Decision of the Court
The Supreme Court dismissed the appeal filed by Jagatjit Industries Limited and upheld the Division Bench judgment of the Delhi High Court. The Court affirmed that the registration certificate bearing No. 618414 issued to Jagatjit on 13th January 2004 was issued in violation of Section 23(1)(a) of the Trade Marks Act, 1999, as it was granted while the opposition period had not yet expired. The Court confirmed that Section 125(1) of the Trade Marks Act, 1999 did not apply to the facts of the case because Austin Nichols was not a defendant in the infringement suit filed by Jagatjit. The Court further confirmed that even if Section 125(1) had otherwise been applicable, the suo motu power of the Registrar under Section 57(4) would not have been affected, as Section 125(1) operates only upon applications for rectification filed by parties and not upon the Registrar's independent statutory duty to maintain the register. No costs were awarded.
## Point of Law Settled
The Supreme Court settled that the Registrar of Trade Marks can validly grant an extension of time for filing a notice of opposition without passing a separate written order, and that such extension can be inferred from the Registrar's conduct in taking the opposition on record. Any registration certificate issued before the expiry of the extended opposition period is invalid and in contravention of Section 23(1)(a) of the Trade Marks Act, 1999. Equally significantly, the Court settled that Section 125(1) of the Trade Marks Act, 1999, which bars proceedings before the Registrar and requires rectification applications to be made to the Appellate Board in the context of an infringement suit where the defendant challenges the validity of a trademark, applies only to applications for rectification filed by parties under Section 57(1) and (2). It does not bar or restrict the independent suo motu power of the Registrar under Section 57(4) to correct errors in the register and maintain its purity, irrespective of pending infringement proceedings in a civil court.
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**Case Details**
Title: Jagatjit Industries Limited Vs. The Intellectual Property Appellate Board and Ors.
Date of Order: 20th January 2016
Case Number: Civil Appeal No. 430 of 2016 (Arising out of S.L.P. (Civil) No. 14444 of 2009)
Neutral Citation: MANU/SC/0056/2016
Name of Court: Supreme Court of India
Hon'ble Judges: Justice Kurian Joseph and Justice Rohinton Fali Nariman
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*Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.*
*Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi*
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**Headnote**
The Supreme Court of India held that a trademark registration certificate issued by the Trade Marks Registry during a pending opposition period, in violation of Section 23(1)(a) of the Trade Marks Act, 1999, is invalid and liable to be removed from the register. The Registrar's acceptance of a notice of opposition and issuance of a notice calling for a counter-statement constitutes sufficient evidence of implied extension of time under Section 21(1), and no separate written order granting such extension is required. Further, the Court clarified that the bar under Section 125(1) of the Trade Marks Act, 1999 — which requires rectification applications to be made to the Appellate Board rather than the Registrar in cases where an infringement suit is pending and the defendant challenges the validity of the plaintiff's trademark — operates only upon applications for rectification filed by parties under Section 57(1) and (2), and does not curtail or extinguish the Registrar's independent suo motu power under Section 57(4) to correct errors and maintain the purity of the trademark register. The Whirlpool judgment distinguished on facts. Appeal dismissed.
