Dr. Raghbir Singh, Vice-chairman:
1. This is an appeal filed by the appellants/opponents against the review decision dated 31st December, 2002 of Assistant Registrar of Trade Marks, Chennai under section 97(c) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in the matter of review of his earlier decision dated 9th November, 2001 dismissing the opposition No. MAS 3070 filed by the opponents to the respondents/applicants application for registration No. 474027 dated 22.6.1987 claiming use of the mark `BB BABA's SULTAN' since July, 1984. The Assistant Registrar by his order dated 9th November, 2001 allowed the impugned application to proceed for registration subject to an amendment of goods to read as 'Hosiery and readymade garments for sale in the States of Maharashtra and Tamil Nadu'. The grounds for review taken by Respondents/applicants were as follows:-
(i) That the Registrar has overlooked section 33 of the Act, whereas the petitioners are the prior users and proprietors of mark `BABA' on which opponents had filed opposition.
(ii) That the Registrar has already overruled the opponents' objection raised under section 12(1) of the Act and, therefore, the Tribunal should not have restricted the registration of the impugned trade mark to a limited area.
2. The learned Assistant Registrar, after hearing the applicants and the opponents in the original application, by his order dated 31st December, 2002, allowed the review application and ordered that the condition 'Hosiery and readymade garments for sale in the States of Maharashtra and Tamil Nadu' as imposed in the impugned order dated 9th November, 2001 is withdrawn and modified the operative portion of the above order to read as under:-
'It is hereby further ordered that Opposition No. MAS-3070 is dismissed and application No. 474027 in class 25 which was advertised before acceptance is accepted and allowed to proceed to registration.'3. The appellants/opponents had filed an appeal under section 109(2) of the Act in the Hon'ble High Court of Madras on 8th April, 2003 against the above review decision of the Assistant Registrar dated 31st December, 2002 which has been transferred to the Intellectual Property Appellate Board (IPAB). The appeal was heard by the Board on 31st December, 2003. At the hearing, Shri Rajnikanth Madhavan, Advocate appeared for the appellants and Shri A.A. Mohan, Advocate appeared for the respondents.
4. The learned counsel for the appellants Shri Rajnikanth Madhavan submitted that the learned Assistant Registrar of Trade Marks has erred in allowing registration of the mark under section 12(3) read with section 33 of the Act withdrawing the limitation to the areas. The burden of his contention is that the power to be exercised under section 97(c) by the Assistant Registrar has to be in the nature of power conferred in Order 47 Rule 1 of the Civil Procedure Code which is not to be exercised in substitution of the power of appeal.
5. The learned counsel for respondents/applicants Shri A.A. Mohan argued that the scope of power under section 33 of the Act is restrictive in the sense that while allowing registration, the Registrar has no discretion to impose any conditions for such registration as he can do while allowing registration under section 12(3) of the Act. Since the Assistant Registrar while allowing registration under section 33 of the Act vide his order dated 9th November, 2001 had imposed certain conditions which were beyond the scope of his power under section 33 of the Act, he has rightly entertained the review petition of the respondents and modified his earlier order by his order dated 31st December, 2002. The learned counsel made reference to two decisions of the Hon'ble High Court of Bombay in Indo-Pharma Pharmaceutical Works Private Limited v. The Pharmaceutical Company of India, 1977 Bombay Law Reporter 73 and Atul Kumar Manilal Shah v. Nasik Hing Supplying Co. & Anr., 2002 (25) PTC 385 (Bom). The issue in those cases related to the discretionary power contained in section 33 and section 12(3) of the Act. The court has held, in both the cases, that in exercise of power under section 33 of the Act, the Registrar has no discretionary power of imposing conditions, whereas under section 12(3) of the Act he can grant registration by imposing certain conditions.
6. In the present case, the appellants/opponents have primarily challenged the power to review exercised by the Assistant Registrar and has submitted that the scope of power to be exercised under Order 47 Rule 1 of the Code of Civil Procedure is restrictive and it is not to be exercised in substitution of power of appeal which is available under the Act. They have referred to certain judgments of Supreme Court, Patna High Court and High Court of Delhi to argue that the scope of power under Order 47 Rule 1 of the Code of Civil Procedure is restrictive in character. In the instant case Assistant Registrar after due deliberation in the matter based upon the evidences filed in the opposition had reached the conclusion and had accordingly passed his orders dated 9th November, 2001. The restrictive nature of the power to review is well settled in law. Provisions relating to power of review under Order 47 Rule 1 of Code of Civil Procedure constitute an exception to the general rule to the effect that once a judgment is signed and pronounced, it cannot afterwards be altered. The power to review is exercisable only where the circumstances are strictly covered by the statutory exceptions contemplated under Order 47 Rule 1 of CPC. The Court of review has only a limited jurisdiction circumscribed by the definitive limits fixed by the language used in Order 47 Rule 1 of CPC. It may allow a review on specified grounds, namely:-
(i) discovery of new and important matter or evidence;
(ii) mistake or error apparent on the face of the record; or
(iii) any other sufficient reason7. Evidently the case of the respondents does not fall under category No. (i) as to discovery of new and important matter or evidence, which after the exercise of due diligence, was not within the applicants' knowledge or could not be produced at the time when the decree was passed or the order was made. They can possibly lay their hand upon category No. (ii) and so have argued that the Registrar has already overruled the opponents' objection raised under section 12(1) of the Act and, therefore, the Tribunal should not have restricted the registration of the impugned trade mark to a limited area and that a mistake or error apparent on the face of the record had taken place which led the Assistant Registrar to interpret section 33 of the Act narrowly by imposing a geographical limit for the exercise of the registration. The scope of section 33 vis--vis section 12(3) of the Act is well known and any view taken in a judgment as to applicability of a specific provision in the relevant case can best be called as mere erroneous decision and not an error apparent on the face of the record. The error which is not self-evident and has to be detected by the process of reasoning can hardly be said to be an error apparent on the face of the record justifying the court to exercise its power of review (Saramma v. Mathews, 2001 (1) KLT 758). An error which has to be established by long drawn process of reasoning on points where there may be conceivably two opinions can hardly be said to be an error apparent on the face of the record (Parison Devi v. Sunitry Devi, 1997) 8 SCC 715). Similarly the words 'any other sufficient reason' have been interpreted as 'reason sufficient on grounds at least analogues to those specified immediately previously' i.e. excusable failure to bring to the notice of the Court new and important matters or error apparent on the face of the record (Moranmar v. Mar Poulose, AIR 1954 SC 526). The Assistant Registrar has negated the submission of the respondent/applicant in the review application about he having overlooked section 33 of the Act while passing orders dated 9th November, 2001. The respondents/applicants had asserted that in face of the evidence of the applicants in regard to prior use of the impugned trade mark the registration should not have been restricted to some area, Assistant Registrar having imposed a condition of restricting to some area is violation of the principles of natural justice and as such amounts to be an error apparent on the face of the record. The Assistant Registrar has chosen to go along with the arguments of respondents/applicants and has decided that the respondents/applicants are the prior user of the mark `BABA' and the registration of the impugned application granted inadvertently for certain areas as concurrent user in the circumstances, when they were prior user, is also an error apparent on the face of the record and thus, the aforesaid error needs to be rectified in the interests of natural justice. The Assistant Registrar on this score has gone beyond the scope of power of review. The relevant evidences were very much available on the record and these were taken into consideration by the Assistant Registrar while issuing his order dated
Please Login To View The Full Judgment!
9th November, 2001. To concede at this late stage that there had been a violation of principles of natural justice and hence modification in the order is called for is nothing but an excuse to exercise his power as an appellate authority which is beyond the scope of power of review under Order 47 Rule 1 of CPC. The Assistant Registrar has solely based his exercise of power in this regard on the basis of a judgment of Supreme Court and Bombay High Court referred to in his order which does not help him at all. That only brings out a distinction between the nature of power conferred under section 33 and section 12(3) of the Act, the former being restrictive in character vis--vis the latter and nothing more. It no way deals with the fundamental thing in this case, that is, the scope of power in review matters. 7. In view of the above, we feel that there had been an erroneous exercise of the power of review and for that reason we set aside the order of Assistant Registrar of Trade Marks dated 31st December, 2002.