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HC holds that the power vested in Registrar of Trademarks is quasi judicial hence cannot termed as groundless threats u/s 142

The Chartered Institute of Taxation vs. Institute of Chartered Tax Advisers of India Ltd.

The Chartered Institute of Taxation (Plaintiff) filed this suit for declaration, permanent injunction and damages in respect of threats under Section 142 of the Trademarks Act. 

Plaintiff, through its plaint, pleaded that it is offering two qualifications namely ‘Advanced Diploma in International Taxation’ (ADIT) for international tax professionals around the world and ‘Chartered Tax Adviser’ (CTA) qualification for domestic tax practitioners in the United Kingdom. Plaintiff is using ADIT, an acronym for ‘Advanced Diploma in International Taxation’ since 2003 and since then it is one of the most prestigious qualifications in professional tax expertise. It also has made applications for registration of ADIT in classes 9, 16, 35, 36 and 41. Institute of Chartered Tax Advisers of India Ltd. (Defendant) has opposed the registration of ADIT in class 41 whereas there is no opposition to the application for registration in other classes. Plaintiff has mentioned that there is a past history of litigation with respect to trade marks ‘CHARTERED TAX ADVISER’ and ‘CTA’ owned by the Plaintiff. Plaintiff has also filed for cancellation/rectification petition against the mark of the Defendant which is pending before Intellectual Property Appellate Board (IPAB). Plaintiff states that allegations made in the notice of opposition makes it evident that Defendant is harassing the Plaintiff.  Moreover, ADIT is in no way similar to ‘CHARTERED TAX ADVISER’ or CTA.

Court while mentioning Section 41(a) of the Specific Relief Act pointed out to the Plaintiff’s counsel that plea taken in a legal/statutory proceeding, howsoever frivolous and groundless, be subject matter of declaration as unjustifiable in another proceeding since injunction against the defendant from continuing the groundless threats would amount to injunction the defendant from pursuing oppositions filed by it. Court drawn the attention of the Supreme Court in Cotton Corporation of India Limited v United Industrial Bank Limited (1983) SCC 625 where it was held, “ (a) that expression “court” in Section 41 of the Specific Relief Act should be given the widest amplitude, comprehending every forum where relief can be obtained in accordance with law; and, (b) that anyone having a right that is a legally protected interest and complaining of its infringement and seeking relief through Court, must have an unhindered, uninterrupted access to law Courts and that Courts ordinarily will not impede access to Courts.”

Although the counsel for the Plaintiff argued that Court may clarify while injuncting the Defendant that this order will have no affect on the proceedings before the Registrar of Trade Marks which was rejected by the Court by stating that this order is bound to have an impact on the Registrar of Trade Marks. 

Plaintiff relied on Sidharth Wheels Pvt. Ltd v Bedrock Ltd AIR 1988 Del 228 where it was held that (i) the word ‘otherwise’ in Section 120 of the Trade and Merchandise Marks Act, is not to be construed ejusdem generis with the words ‘circulars’, ‘advertisements’; (ii) cause of action envisaged therein is not similar to libel; and (iii) threats need not be published to be actionable; thus a threat of suit for infringement of trade mark, in a letter to the plaintiff, was held to be actionable. 

Court rejected the arguments and pleadings of the Plaintiff and observed that there is no express bar on the Registrar to adjudicate on issues on similarity when an objection is filed. Also, Section 11(1) the Registrar is required to adjudicate on similarity of a trade mark, application for registration whereof has been filed, with any earlier trade mark. 

HC referred to

(i) Super Cassette Industries Ltd. Vs. Bathla Cassettes India (P) Ltd. AIR 1994 Del 237; (ii) Dolphin Laboratories Pvt. Ltd. Vs. Kaptab Pharmaceuticals AIR 1981 Cal 76 holding that, “

 “while restraining a person from making unjustified threats, it is not open to the Court to restrain him from taking the matter to a Court of Law and from agitating his rights there; the right to institute a suit was held to be an important and vital right incapable of being interfered with except by a statutory bar”

(iii) Value Invest Wealth Management (India) Private Limited Vs. B.G. Kishore Kumar 2011 SCC OnLine MP 2397, where notice issued by the defendant to the plaintiff asking the plaintiff to cease and desist from infringing the trade mark of the defendant was held to be not a groundless threat within the meaning of Section 142 of the Trade Marks Act, reasoning the said notice to be in aid of intending legal proceedings and further holding that the defendant could not be restrained from exercising its legal rights; and, 

(iv) Sachdeva and Sons Industries Pvt. Ltd. Vs. Jain Riceland Pvt. Ltd. MANU/PH/2565/2016 holding that, “ a proceeding under Section 142 of the Trademarks Act or Section 60 of the Copyright Act does not lie against a legal action.”

High Court pointed out Intellectual Property Attorneys Association v Union of India (2014 SCC OnLine Del 1912) where it was held by the Division Bench that, “the power vested in the Registrar of Trademarks is a quasi judicial power. Hence, proceedings pending before the Registrar of Trademarks of the Plaintiff for registration of ‘ADIT’ and the opposition of the Defendant thereto are quasi judicial proceedings, and such proceedings cannot be termed as groundless threats within the meaning of Section 142 of the Trademarks Act.”

Moreover, since Plaintiff has not drawn attention to any part of the pleading or any document treating which as groundless threat to file this suit. Hence, this suit is dismissed.  


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