Holding

The Registrar’s issuance of the notice under Section 56(4) was without jurisdiction because the "proceeding concerned" was pending before the High Court, which therefore acted as the "Tribunal"; the notice was quashed.

Summary

Whirlpool Corporation, a US company, had its "WHIRLPOOL" trademark registered in India in 1957 and renewed twice, but it lapsed after 1977. The Chinar Trust later obtained registration of the same mark and began using it, prompting Whirlpool to file a passing‑off suit and a rectification petition. While the suit was pending in the Delhi High Court, the Registrar of Trade Marks issued a suo motu show‑cause notice under Section 56(4) to cancel Whirlpool's renewed certificate. Whirlpool challenged the notice by filing a writ petition under Article 226. The Supreme Court held that the definition of "Tribunal" in Section 2(1)(x) makes the High Court the Tribunal when the "proceeding concerned" is pending before it, rendering the Registrar’s action ultra vires. Consequently, the notice was quashed and the appeal allowed. The Court also affirmed that a writ petition is maintainable despite alternative statutory remedies when the statutory authority acts without jurisdiction.

Issues considered

The meaning of "Tribunal" under Section 2(1)(x) of the Trade and Merchandise Marks Act, 1958 and whether it includes the Registrar when a proceeding is pending before the High Court.
Whether the Registrar could validly issue a notice under Section 56(4) while a passing‑off suit was pending before the High Court.
Whether a writ petition under Article 226 is maintainable despite the existence of alternative statutory remedies.
Whether the jurisdiction of the Registrar and the High Court under the Act is concurrent or mutually exclusive.

Legislation cited

Trade and Merchandise Marks Act, 1958s. 10, s. 107, s. 108, s. 109, s. 111, s. 12, s. 17, s. 19, s. 21, s. 2(1)(x), s. 23, s. 45, s. 46, s. 47, s. 5, s. 56, s. 6, s. 7

Subjects

trademark registrationrenewaljurisdictiontribunal definitionSection 56(4)passing offArticle 226 writstatutory interpretationmutual exclusivityRegistrar of Trade Marks

Judgment

WHIRLPOOL CORPORATION A
v.
REGISTRAR OF TRADE MARKS, MUMBAI AND ORS.

OCTOBER 26, 1998

[S. SAGHIR AHMAD AND K.T. THOMAS, JJ.] B

Trade and Merchandise Marh; Act, 1958 : Sections 2(1) (x), 5-7, JO,
12, 17, 19, 21, 23, 46, 47, 56, 107-109 and Ill.

Trade MarhJ-Registrar of Trade Marh; and High Court-Jurisdiction C
to act as Tribunal-Held, apparently concurrent-But in certain matters held
mutually exclusive-Before "which the proceeding concerned is pending"-
Held has to be treated Tribunal.

Trade Marhi-Registration of Trade Mark 'WHIRLPOOL' by appellant-
. Initially renewal not obtained but subsequently obtained for three successive D
periods-Jn the meantime registration of Trade Mark 'WHIRLPOOL' by Chinar
Trust-Appellant's objection for registration dismissed-Appeal by appellant
before High Court-Petition filed by appellant for removal of Trade Mark
registered in favour of Chinar Trust-Appellant also filed a passing of suit
against Chinar Trust-Grant of temporary injunction by High Court-
Thereafter appellant filed an amendment application in passing off suit to E
include the ground of infringement-During tendency of proceedings Chinar
Trust approached Registrar-Consequently show cause notice under Section
56(4) issued to appellant for cancellation of certificate or renewal granted-
Held, issue of notice was without authority and consequently quashed

Trade MarhJ-Legislative history of-Discussion regarding Constitution
F
of India, 1950 : Article 226

High Court-Power to issue writ-Nature of -Power to refuse relief
in case alternative remedy is al'ailable--Exception to-Show cause notice
issued to appellant under Trade Mark Act-Challenge to notice in writ G
jurisdiction-Held, permissible.

Statutory lnterpretation-Definiticns-lnterpretation of

Maxim-Grammatica falsa a non vitiat chartam (false grammar does
not vitiate a deed)-Applicability of
359
H
360 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A The appellant, a Corporation based in USA registered its trade mark
'WHIRLPOOL' under the Trade and Merchandise Marks Act, 1940 on 31st

B
July, 1957. This Act was subsequently replaced by the Trade and Merchandise
Marks Act, 1958. The registration certificate was renewed twice for a period
of seven years once in 1962 and again w. e. f. 22.2.1970. As no further
renewal was obtained after 1977 the trade mark was removed from the
-
register. However, the appellants continued to publicise their trade mark
'WHIRLPOOL' and also the company name through publications which had
made wide circulation in the country. On 6th August, 1986 two trustees of
the Chinar Trust applied for registration of trade mark 'WHIRLPOOL' and
the objections raised by the appellant against registration were dismissed by
C Assistant Registrar. The appeal preferred by appellant was admitted by Delhi
High Court. In the meantime 'WHIRLPOOL' was registered as trade mark
of the Chinar Trust and a certificate of Registration was granted to it. A
petition for rectification and removal of entry filed by the appellants on
4.8.1993 under Sections 45 and 46 was admitted by Registrar. Since chinar
Trust started using the aforesaid trade mark the appellant Corporation filed
D a suit for passing off in the Delhi High Court for restraining the defendants-
Chinar Trust from using the trade mark, 'WHIRLPOOL'. A temporary
injunction granted by the Single Judge was upheld by the Division Bench
of the High Court. Against this order chinar Trust unsuccessfully filed
special leave petition before this Court. Thereafter the appellant filed an
E application for renewal of trade mark on 26.2.1997 and the Registrar allowed
renewal for three successive periods namely 22.2.1977, 22.2.1984 and finally
22.12.1991. The appellant also filed an application under order 6 Rule 17
C. P.C. for amendment of the plaint in the passing off suit filed by it earlier
so as to include the ground of infringement of trade mark also in the suit.
Thereafter Chinar Trust approached Registrar for taking suo motu action
F under Section 56(4) for cancellation of the certificate of renewal granted to
the appellant and consequently the Registrar issued a show cause notice to
the appellant as to why the certificate of registration be not cancelled.
Against this notice the appellant filed a writ petition before the Bombay High
Court which was dismissed. Hence this appeal.
G
In appeal to this Court it was contended on behalf of the appellant that ,
(i) in view of the definition of Tribunal u/s 2(1) (x) a notice under Section
56(4) can be issued either by the Registrar or the High Court but out of the
two, only that authority can issue the notice before which the 'proceeding
concerned' is pending; (ii) since a passing-off suit was already pending in
H the Delhi High Court, where the appellant had also moved an application for
WHIRLPOOL CORPN. v. REGISTRAR OF TRADE MARKS, MUMBAI 361
amendment of the plaint so as to include the relief of infringement of its A
trade mark, notice under Section 56(4) could have been issued only by the
Delhi High Court and not by the Registrar; (iii) where the action initiated
by a statutory authority is wholly without jurisdiction, it can be challenged
under Article 226 of the Constitution and the writ petition cannot be dismissed
summarily and (iv) since suo motu action under Section 56(4) could be taken B
only by the High Court and not by the Registrar, the notice issued to the
appellant was wholly without jurisdiction and, therefore, a writ petition even
at that stage was maintainable.

On behalf of the Registrar it was contended that the Registrar
continued to retain his jurisdiction under Section 56 of the Act, C
notwithstanding the pendency of the passing-off suit filed by the appellant in
the High Court as the said suit could not be treated to constitute, in any
manner, "proceedings" under the Act particularly when the application for
amendment, by which the relief relating to infringement of trade mark was
sought to be added in the plaint was still pending.
D
Allowing the appeal, this Court

HELD : 1. The power to issue prerogative writs under Article 226 of
the Constitution is plenary in nature and is not limited by any other provision
of the Constitution. Under Article 226 of the Constitution, the High Court, E
having regard to the facts of the case, has a discretion to entertain or not
to entertain a writ petition. But the High Court has imposed upon itself
certain restriction one of which is that if an effective and efficacious remedy
is available, the High Court would not normally exercise its jurisdiction. But
the alternative remedy has been consistently held by this court not to operate
as a bar in at least three contingencies, namely, where the writ petition has F
been filed for the enforcement of any of the Fundamental Rights or where
there has been a violation of any of the principles of natural justice or where
the order of proceedings are wholly without jurisdiction or the vires of an
Act is challenged. The jurisdiction of the High Court in entertaining a writ
petition under Article 226 of the Constitution, in spite of the alternative G
statutory remedies, is not affected, specially in a case where the authority
against whom the writ is filed is shown to have had no jurisdiction or had
purported to usurp jurisdiction without any legal foundation. Therefore, the
High Court was not justified in dismissing the writ petition at the initial
stage without examining the contention that the show cause notice issued to
the appellant was wholly without jurisdiction and, that the Registrar, in the H
362 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A circumstances of the case, was not justified in acting as the "TRIBUNAL".
[368-G; 369-A-B; 370-F-H; 371-A)
K.S. Rashid & Son v. The Income Tax Investigation Commissioner, AIR
(1954) SC 207; State of U. P. v. Mohd. Nooh, [1958) SCR 595 =AIR (1958)
SC 86; A. V. Venkateswaran, Collector of Customs, Bombay v. Ramchand
B Sobhraj Wadhwani and Anr., AIR (1961) SC 1506; Calcutta Discount Co.
Ltd v. Income Tax Officer, Companies Distt., I Am (1961) SC 372 and Rashid
Ahmad v. Municipal Board, Kairana, AIR (1950) SC 163, referred to.
2. The question relating to the jurisdiction of the "Registrar" and the
"High Court" which individually and separately constitute "TRIBUNAL"
C within the meaning of Section 2(1) (x), has to be considered in the light of
the provisions of the Trade and Merchandise Marks Act, 1958. The definition
ofTribunal under Section 2(1) (x) indicates that High Court and the Registrar,
on their own, are not "TRIBUNAL". They become "TRIBUNAL" if"thc
proceeding concerned" comes to be pending before either of them. In other
words, if "the proceeding concerned" is pending before the High Court, it
D will be treated as "TRIBUNAL". If, on the contrary. "the proceeding
concerned" is pending before the Registrar, the latter will be treated as
"TRIBUNAL". In view of the provisions contained in Sections 56,107 and
109 and 111 the phrase "before which the proceeding concerned is pending"
stands out prominently to convey the idea that if the proceeding is pending
E before the "Registrar", it becomes the "TRIBUNAL". Similarly, if the
proceeding is pending before the "High Court", then the High Court has to
be treated as "Tribunal". Thus, the jurisdiction of the Registrar and the
High Court, though apparently concurrent in certain matters, is mutually
exclusive. That is to say, if a particular proceeding is pending before the
Registrar, any other proceeding, which may, in any way, relate to the pending
F proceeding, will have to be initiated before and taken up by the Registrar and
the High Court will act as the Appellate Authority of the Registrar under
Section 109. If the proceedings are pending before the High Court, the
Registrar will ke~p his hands off and not touch those or any other proceeding
which may, in any way, relate to those proceedings as the High Court, which
G has to be the High Court having jurisdiction as set out in Section 3, besides
being the Appellate Authority of the Registrar has primacy over the Registrar
in all matters under the Act. Any other interpretation of the definition of
"Tribunal" would not be in consonance with the scheme of the Act or the
contextual background set out therein and may lead to conflicting decision
on the same question by the Registrar and the High Court besides generating
H multiplicity of proceedings. [373-A-B; 382-C; 384-F-H; 385-A-C]
WHIRLPOOL CORPN. v. REGISTRAR OF TRADE MARKS, MUMBAI 363
3.1. Since "Tribunal" is defined in Section 2 which, in its opening A
part, uses the phrase "unless the context otherwise requires'', the definition,
obviously, cannot be read in isolation. The phrase "unless the context otherwise
requires" is meant to prevent a person from falling into the whirlpool of
"definitions" and not to look to other provisions of the Act which, necessarily,
has to be done as the meaning ascribed to a "definition" can be adopted only B
if the context does not otherwise require. [373-C)

3.2. The principle is that all statutory definitions have to be read
subject to the qualification variously expressed in the definition clauses
which created them and it may be that even where the definition is exhaustive
inasmuch as the word defined is said to mean a certain thing, it is possible C
for the word to have a somewhat different meaning in different sections of
the Act depending upon the subject or context. That is why all definitions in
statutes generally begin with the qualifying words, similar to the words used
in the present case, namely 'unless there is anything repugnant in the
subject or context'. Thus there may be sections in the Act where the meaning
may have to be departed from on account of the subject or context in which D
the word had been used and that will be giving effect to the opening sentence
in the definition section, namely, unless there is anything repugnant in the
subject or context'. In view of this qualification, the Court has not only to
look at the words but also to look at the context, the collocation and the object
ofsuch words relating to such matter and interpret the meaning intended E
to be -:onveyed by the use of the words under those circumstances.
(372-E-H)
4. The argument that in view of the placement of the words "as the case
may be" between two commas, the said words would not be applicable to the
Registrar, and that he can therefore exercise the jurisdiction under Section
56 irrespective of pendency of any "proceeding" is fallacious. Incidentally, F
there is another "comma" before and after the word "High Court". This
"comma" obviously separates the phrase "before which the proceeding
concerned is pending" from the word "High Court" with the result that this
phrase becomes applicable both to "High Court" and the "Registrar". The
word "concerned" in the phrase is also of significance inasmuch as the word G
"Tribunal" has been used in different sections in relation to different
proceedings. At some places in the Act, all the three words, namely,
Registrar'', "High Court" and "Tribunal" have been used which indicate
that if the proceeding under that particular provision is pending before the
"Registrar" then on account of that proceeding, the Registrar becomes the
"TRIBUNAL". So also, if the proceeding is pending before the High Court H
364 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A then that proceeding makes the High Court a "Tribunal". It is in that sense
that the word "proceeding concerned" has to be understood.
[385-C-H; 386-A)

S. The contention that if the phrase "before which the proceeding
B concerned is pending" were meant to apply to the "Registrar" the legislature
would have used the pronoun "whom" instead of "which" and the phrase
would have read "before whom the pr1,ceeding concerned is pending" is of
no use to the respondent. The pronoun in this case is the relative pronoun,
namely, the pronoun "Which", which, incidentally, can be used in many
other forms namely, as an interrogative pronoun, an interrogative adjective,
C or as a relative adjective. Its use is not limited to inanimate objects or
animals but it can also be used for "people". The two nouns, namely, the
"Registrar" and the High Court, used in the definition of "Tribunal" are
followed by the relative pronoun "which" and, therefore, the phrase "before
which the proceeding concerned is pending" would relate to both the nouns,
namely, the "Registrar" and the High Court". In a situation of this nature,
D mere rule of Grammar would not lead to correct interpretation of the definition
which has to be analysed, in the background of those provisions in which the
word "Tribunal" has been used together with the purpose for which it has
been used keeping in mind the overall scheme of the Act. [386-B-G]

E Standard Pharmaceuticals v. Dy. Registrar of Trade Marks, (Appeal No.
213of1970 decided on 18.2.1975 by Calcutta High Court) and Registrar of
Trade Marks and Anr. v. Kumar Ranjan Sen & Ors., AIR (1966) Calcutta 311,
referred to.

A.J. Thompson And A. V. Martinet, A Practical English Grammar, 4th
F Edn. referred to.

6. In the instant case, when the Assistant Registrar of Trade Marks
dismissed appellant's opposition to the registration of respondent's Trade
Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court,
G which was admitted on 1.2.1993. Thereafter, on 4.8.1993 the appellant filed
a rectification petition under Sections 45 and 46 of the Act for removing the
entry relating to the Trade Mark for which Registration Certificate was
granted to the respondents on 30.11.1992. The appellant has also filed a suit
for passing-off in the Delhi High Court against the respondents in which an
order of temporary injunction has been granted in favour of the appellant
H which has been upheld by the Division Bench of the High Court as also by
WHIRLPOOL CORPN. '" REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, l.] 365
this Court. In that suit, an amendment application has also been filed so as A
to include the ground of infringement of the appellant's Trade Mark but that
application has not yet been disposed of. In view of the pendency of these
proceedings in the High Court and specially in view of Section 107 of the
Act, the Registrar could not legally issue any suo motu notice to the appellant
under Section 56(4) of the Act for cancellation of the Certificate of B
Registration/Renewal already granted. Consequently the show-cause notice
issued under Section 56(4) of the Act is quashed. [389-A-E)

Vanguard Fire and General Insurance Co. Ltd Madras v. Fraser &
Ross, AIR (1960) SC 971, referred to.

CIVIL APPELLATE JURISDICTION : Civil Appeal No. 5201 of C
1998.

·From the Judgment and Order dated 8.12.97 of the Bombay High Court
in W. P. No. 1775of1997.

Iqbal Chagla, P. Chidambaram, A. R. Lall, S. S. Rana, Ms. Anuradha D
Salhotra and Vikrant Rana for the Appellant.

R. N. Trivedi, Additicnal Solicitor General, S. C. Agrawal, N. K. Anand,
R. K. Sanghi, Ms. Binu Tamta, D. S. Mehra, Narender Mohan Sharma, Ms.
Ritu Singh and R. P. Singh for the Respondents.
E
The Judgment of the Court was deHvered by

S. SAGHIR AHMAD, J. Leave granted.

WHIRLPOOL, true to their name have created a WHIRLPOOL of litigation
in this country. Based, as they are, the United States of America, they started F
the gyrating movement by applying for registration of their Trade Mark
"WHIRLPOOL" to the Registrar of the Trade Marks under the Trade Marks
Act, 1940, which has since been replaced by the Trade and Merchandise
Marks Act, 1958 and which for the sake of brevity, shall hereinafter be referred
to as the "Act". The Trade Mark was duly registered and a Certificate of G
Registration was issued on 31st of July, 1957 which was renewed twice, in
1962 for a period of seven years and again for seven years with effect from
22.2.70. Since further renewal was not obtained after 1977, it was removed
from the Register but the appellants continued to publicise their Trade Mark
"WHIRLPOOL" as also the company name through publications Which had
wide circulation in this country and thus managed to maintain their reputation H
366 SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.

A among the business circle including prospective customers and buyers.
On 6th of Aug. 1986, Mrs. Sumitra Charat Ram and Mr. N.R. Dongre,
as Trustees of Chinar Trust applied for registration of the Trade Mark
"Whirlpool" in class 7 under Application No. 458134, which was duly advertised
by the Registrar in Trade Marks Journal No. 945 on Page 845 pursuant to
B which the appellant filed their Opposition on 6th January, 1989, but their
objections were dismissed by the Assistant Registrar by his order dated
12.8.1992. An appeal against this order which was filed in the Delhi High
Court on 7.11.1992 has since been admitted on 1.2.1993 and registered as C.M.
(Main) No. 414of1992.
c In the meantime, "Whirlpool" was registered as the Trade Mark of the
Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was
granted to them. A petition for Rectification and for removal of this entry from
the Register has already been filed by the appellant before the Registrar on
4.8.1993 under Sections 45 & 46 of the Act. It is still pending.
D
Since Chinar Trust had also started using the Trade Mark "Whirlpool"
in relation to certain washing-machines, allegedly manufactured by them, the
appellant, as owner of the Trade Mark "Whirlpool", filed a Suit (Suit No. 1705
of 1994) for passing off in the Delhi High Court with an application for
temporary injunction under Order 39 Rules 1 & 2 of the Code of Civil Procedure
E for restraining the defendants, namely, Chinar Trust, etc., from using the
Trade Mark Whirlpool in relation to their products. A Single Judge of the
Delhi High Court granted temporary injunction to the appellant on 31.10.1994
which was upheld by the Division Bench on 21.4.1995. Special Leave Petition
filed against this order by the Chinar Trust has already been dismissed by
p this Court on 30.8.1996.

On 28.2.1997, the appellant filed an application in Form TM-12 for
renewal of the Trade Mark "Whirlpool" in Class 7 and the Registrar, by his
order dated 29th July, 1997, allowed the renewal for three successive periods,
namely, 22.2.1977, 22.2.1984 and finally 22.2.1991. Thereafter, on 8th Aug., 1997
G appellant made an application under Order 6 Rule 17 C.P.C. for amendment of
the plaint in Suit No. 1705 of 1994, referred to above, so as to include the
ground of infringement of the Trade Mark also in the suit but the application
is still pending in the Delhi High Court which has already granted time twice
to the defendants, namely, Chinar Trust to file a reply.

H In the meantime, Chinar Trust, through its attorneys, wrote on 10th
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI IS. SAGHIR AHMAD, J.] 367

Sept. 1997 to the registrar to take suo motu action under Section 56(4) for A
cancellation of the Certificate of Renewal granted to the appellant on 29th
July, 1997 and the registrar, acting on that request, issued a notice to the
• appellant on 26th Sept., 1997 requiring it to show cause why the Certificate
of Registration be not cancelled. Against this notice, the appellant filed a writ
petition in the Bombay High Court which was dismissed on 8.12.1997. It is B
against this judgment that the present appeal has been filed.

Mr. Iqbal Chagla, senior counsel appearing for the appellant, has
contended that a notice under Section 56(4) can be issued only by the
'TRIBUNAL' which has been defined in Section 2 {l)(x), which means the
Registrar or the High Court before which the 'proceeding concerned' is C
pending. Mr. Chagla has contended that it is either the Registrar or the High
Court, which can issue a notice under Section 56(4), but out of the two, only
that authority can issue the notice before which the 'proceeding concerned'
is pending. It is further contended that since a passing-off suit was already
pending in the Delhi High Court, where the appellant has also moved an
application for amendment of the plaint so as to include the relief of D
infringement of its Trade Mark. notice under Section 56(4) could have been
issued only by the Delhi High Court and not by the Registrar.

Mr. R.N. Trivedi, ASG appearing for the Registrar, has on the contrary,
contended that the Registrar continued to retain his jurisdiction under Section E
56 of the Act, notwithstanding the pendency of the passing off suit filed by
the appellant in the High Court as the said suit could not be treated to
constitute, in any manner, "proceedings" under the Act. Moreover, the
application for amendment, by which the relief relating to infringement of
Trade Mark was sought to be added in the plaint was still pending and unless
that application was allowed and the additional paragraphs, including the F
above relief, were added in the plaint, the nature of proceedings would not
change and they will continue to be treated as proceedings in a suit and not
"proceeding" under the Act.

This is also the contention of Mr. Sudhir Chandra, senior counsel G
appearing for the Chinar Trust. He has also contended that the High Court
was fully justified in dismissing that petition at the threshold particularly as
the Writ Petition was directed only against a notice issued under Section 56(4)
of the Act requiring the appellant to show cause why the Registration Certificate
be not cancelled. The appellant, it is contended, should have submitted a
reply to that notice and allowed the Registrar to dispose of the whole matter H
368 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A on merits particularly as the Registrar had initiated the action principally on
the ground that the appellant had obtained the renewal of the Trade Mark by
misrepresentation and concealment of relevant facts.

Mr. Chagla, in reply, has submitted that where the action initiated by a
statutory authority is wholly without jurisdiction, it can be challenged under
B Article 226 of the Constitution and the Writ Petition cannot be dismissed
summarily. In the instant case, the Registrar, it is contended, could not have
legally acted as the Tribur,d as the "Proceedings concerned" was pending
before the High Court and, therefore, the High Court alone could have acted
as a "TRIBUNAL" and initiated action under Section 56(4) of the Act.
c Learned counsel appearing on behalf of the parties have thus tried to
create a whirlpool of arguments around the word "TRIBUNAL" as defined in
Section 2(1 )(x) of the Act and, therefore in order to save ourselves from
becoming the victim of"Vertigo" of this whirlpool at the Bar, we have, for the
time being, dispassionately assumed the role of a grammarian, to consider the
D science of English language from the point of view of inflexion, punctuation
and of course, whole syntax, as the argument of the respondent's counsel is
based, almost wholly, on the importance of "comma" and the pronouns,
"which" or "whom" occurring in that definition keeping at the same time in
our mind the principle Grammatica falsa non vitiat chartam (false grammar
E does not vitiate a deed) and the question whether this would also apply to
statutory interpretation. But before we do it, we will first dispose of the
preliminary objection relating to maintainability of the Writ Petition as filed in
the High Court, allegedly, being premature and having been brought without
first exhausting the alternative remedies under the Act.

F Learned counsel for the appellant has contended that since suo motu
action under Section 56(4) could be taken only by the High Court and not
by the Registrar, the notice issued to the appellant was wholly without
jurisdiction and, therefore, a writ petition even at that stage was maintainable.
The appellant, in these circumstances, was not obliged to wait for the Registrar
G to complete the proceedings as any further order passed by the Registrar
would also have been without jurisdiction.

The power to issue prerogative writs under Article 226 of the Constitution
is plenary in nature and is not limited by any other provision of the constitution
This power can be exercised by the High Court not only for issuing writs in
H the nature of Habeas Corpus, Mandamus, prohibition, Qua Warranto and
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 369

Certiorari for the enforcement of any of the Fundamental Rights .~ontained in A
Part III of the Constitution but also for "any other purpose".

Under Article 226 of the Constitution, the High Court, having regard to
the facts of the case, has discretion to entertain or not to entertain a writ
petition. But the High Court has imposed upon itself certain restrictions one
of which is that if an effective and efficacious remedy is available, the High B
Court would not normally exercise its jurisdiction. But the alternative remedy
has been consistently held by this court not to operate as a bar in at least
three contingencies, namely, where the Writ Petition has been filed for the
enforcement of any of the Fundamental rights or where there has been a
violation of the principle of natural justice or where the order or proceedings C
are wholly without jurisdiction or the vires of an Act is challenged. There is
a plethora of case law on this point but to cut down this circle of forensic
whirlpool we would rely on some old decisions of the evolutionary era of the
constitutional law as they still hold the field.

Rashid Ahmad v. Municipal Board, kairana, AIR (1950) SC 163, laid D
down that existence of an adequate legal remedy was a factor to be taken into
consideration in the matter of granting Writs. This was followed by another
Rashid case, namely, KS.Rashid & Son v. The Income Tax Investigation
Commissioner, AIR (1954) SC 207 which reiterated the above proposition and
held that where alternative remedy existed, it would be a sound exercise of
discreation to refuse to interfere in a petition under Article 226. This proposition E
was, however, qualified by the significant words, "unless there are good
grounds therefor", which indicated that alternative remedy would not operate
as an absolute bar and that Writ Petition under Article 226 could still be
entertained in exceptional circumstances.
F
Specific and clear rule was laid down in State of U.P. v. Mohd. Nooh,
[1958] SCR 595 =AIR 1958 SC 86, as under:

"But this rule requiring the exhaustion of statutory remedies before
the Writ will be granted is a rule of policy convenience and discretion
rather than a rule of law and instances are numerous where a writ of G
certiorari has been issued in spite of the fact that the aggrieved party
had other adequate legal remedies."

This proposition was considered by a Constitution Bench of this Court
in A. V. Venkateswaran, Collector of Customs. Bombay v. Ramchand Sobhraj
Wadhwani & Anr., AIR (1961) SC 1506 and was affirmed and followed in the H
t

370 SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.

A following words :
"The passages in the judgments of this Court we have extracted
would indicate (I) that the two exceptions which the learned solicitor
General formulated to the normal rule as to the effect of the existence
of an adequate alternative remedy were by no means exhaustive and
B (2) that even beyond them a discretion vested in the High Court to
have entertained the petition and granted the petitioner relief
notwithstanding the existence of an alternative remedy. We need only
add that the broad lines of the general principles on which the Court
should act having been clearly laid down, their application to the facts

c of each particular case must necessarily be dependent on a variety of
individual facts which must govern the proper exercise of the discretion
of the Court, and that in a matter which is thus pre-eminently one of
discretion, it is not possible or even if it were, it would not be
desirable to lay down inflexible rules which should be applied with
rigidity in every case which comes up before the Court".
D
Another Constitution Bench decision in Calcutta Discount co.Ltd. v.
Income Tax Officer Companies Distt., I AIR (1961) SC 372 laid down:

"Though the writ of prohibition or certiorari will not issue against an
executive authority, the High Courts have power to issue in a fit case
E an order prohibiting an executive authority from acting without
jurisdiction. Where such action of an executive authority acting without
jurisdiction subjects or is likely to subject a person to lengthy
proceedings and unnecessary harassment. the High Court will issue
appropriate orders or directions to prevent such consequences. Writ
of certiorari and prohibition can issue against Income Tax Officer
F acting without jurisdiction under S.34 LT.Act".

Much water has since flown beneath the bridge, but there has been no
corrosive effect on these decisions which though old, continue to hold the
field with the result that law as to the jurisdiction of the High Court in
G entertaining a Writ Petition under Article 226 of the Constitution, in spite of
the alternative statutory remedies, is not affected, specially in a case where
the authority against whom the Writ is filed is shown to have had no jurisdiction
or had purported to usurp jurisdiction without any legal foundation.

That being so, the High Court was not justified in dismissing the Writ
H Petition at the initial stage without examining the contention that the show
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 371
cause notice issued to the appellant was wholly without jurisdiction and that A
the Registrar, in the circumstances of the case, was not justified in acting as
the "TRIBUNAL".

We proceed to the next question now.

Section 56, under which the notice to show cause has been issued to B
the appellant, provides as under :

56. Power to cancel or vary registration and to rectify the register -

I. On application made in the prescribed manner to a High Court or
to the registrar by any person aggrieved, the tribunal may make such C
order as it may think fit for the cancelling or varying the registration
of a trade mark on the ground of any contravention, or failure to
observe a condition entered on the register in relation thereto.

2. Any person aggrieved by the absence or omission from the register
of any entry, or by any entry made in the register without sufficient D
cause or by any entry wrongly remaining on the register, or by any
error of defect in any entry in the register, may apply in the prescribed
manner to a High Court or to the Registrar, and the tribunal may make
such order for making expunging or varying the entry as it may think
& E
3. The tribunal may in any proceeding under this section decide any
question that may be necessary or expedient to decide in connection
with the rectification of the register.

4. The tribunal, of its own motion, may after giving notice in the F
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make any order referred to in sub-section
(I) or sub-section (2).

5. Any order of the High Court rectifying the register shall direct that
notice of the rectification shall be served upon the Registrar in the G
prescribed manner who shall upon receipt of such notice rectify the
register accordingly.

6. The power to rectify the register conferred by this section shall
include the power to remove a trade mark registered in Part A of the
register to Part B of the register. H
372 SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.

A Section 56(1) provides that on an application made to the High Court
or the Registrar by the person aggrieved, the "TRIBUNAL" may cancel or
vary the registration of the Trade Mark. Under Sub-section 4 of Section 56,
this power can be exercised by the "TRIBUNAL" suo motu.

TRIBUNAL has been defined under Section 2(l} (x) as under:
B
"Tribunal" means the Registrar, or as the case may be the High Court
before which the proceeding concerned is pending."

This definition treats "High Court" and "Registrar" both as "TRIBUNAL" for
purposes of this Act.
c
High Court has been defined in Section 2(h) as the "High Court" having
jurisdiction under Section 3" which, in its turn, provides that it shall be that
High Court within the limits of whose appellate jurisdiction the office of the
Trade Marks Registry referred to in each of the sub-clauses (a) to (e) is
situate.
D
We have to consider the meaning of these definitions in the context of
other relative provisions of the Act so· as to find an answer to the question
relating to the extent of jurisdiction of the Registrar and the High Court
functioning as "TRIBUNAL".
E
Now the principle is that all statutory definitions have to be read
subject to the qualification variously expressed in the definition clauses
which created them and it may be that even where the definition is exhaustive
inasmuch as the word defined is said to mean a certain thing, it is possible
for the word to have a somewhat different meaning in different sections of
F the Act depending upon the subject or context. That is why all definitions
in stautes generally begin with the qualifying words, similar to the words used
in the present case, namely 'unless there is anything repugnant in the subject
or context'. Thus there may be sections in the Act where the meaning may
have to be departed from on account of the subject or context in which the
G word had been used and that will be giving effect to the opening sentence
in the definition section, namely 'unless there is anything repugnant in the
subject or context'. In view of this qualification, the Court has not only to
look at the words but also to look at the context, the collocation and the
object of such words relating to such matter and interpret the meaning
intended to be conveyed by the use of the words under those circumstance".
H (See : Vanguard Fire and General Insurance Co. Ltd. Madras v. Fraser &
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 373

Ross, AIR (1960) SC 971. A
Before considering the contextual aspect of the definition of
"TRIBUNAL'', we may first consider its ordinary and simple meaning. A bare
look at the definition indicates that High Court and the Registrar, on their
own, are not "TRIBUNAL". They become "TRIBUNAL" if "the proceeding
concerned" comes to be pending before either of them. In other words, if "the B
proceeding concerned" is pending before the High Court, it will be treated as
"TRIBUNAL''. If on the contrary, "the proceeding concerned" is pending
before the Registrar, the latter will be treated as "TRIBUNAL".

Since "TRIBUNAL" is defined in Senction 2 which, in its opening part,
uses the phrase "Unless the context otherwise requires", the definition, C
obviously, cannot be read in isolation. The phrase "Unless the context otherwise
requires" is meant to prevent a person from falling into the whirlpool of
"definitions" and not to look to other provisions of the Act which, necessarily,
has to be done as the meaning ascribed to a "definition" can be adopted only
if the context does not otherwise require. D
The history of legislation is more than a century old. The first legislation
brought on the Statute Book was the Indian Merchandise Marks Act, 1889
(Act No. 4 of 1889). This was followed by the Trade Marks Act, 1940 (Act
No. 5 of 1940). Both these acts were repealed by the :rrade & Merchandise
Marks Act, 1958. This Act follows the pattern of Trade Marks Act, 1938 of E
the United kingdom. Prior to the enactment of Trade Marks Act, 1940, the
disputes or problems, specially those relating to infringement of trade-marks
or passing-off were decided in the light of Section 54 of the Specific Relief
Act, 1877, while the registration problem was tackled by obtaining a declaration
as to ownership of a trade-mark under the Indian Registration Act, 1908. The F
present Act which, as pointed out above, has repealed the Indian Merchandise
Marks Act, l 889 and Trade Marks Act, 1940, also provides in Section 129 that
any document declaring or purporting to declare the ownership or title of a
person to a trade-mark other than a registered trade mark, shall not be
registered under the Indian Registration Act, 1908.
G
We may now have a quick look at other relevant provisions of the Act.

Section 4 provides that Central Govt. shall appoint a person as
Controller-General of Patents, Designs & Trade Marks who shall be the
Registrar of Trade Marks under the Act. The functions of the Registrar, as
are authorised by him, can also be performed by such other persons as the H
374 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A Central Government may appoint. Thus, there is an element of plurality in the
sense that the functions of the Registrar can be performed by more than one
person.

Section 5 provides for the establishment of a Registry known as Trade
Marks Registry, with a Head Office and Branch Offices at such places as the
B Govt. may think fit.

Under Section 6 read with Section 7 of the Act, a Register of Trade
Marks, in two parts, namely, Part A and Part B, is to be maintained with the
original Register kept at the Head Office of the Trade Marks Registry and
copies thereof at the Branch Offices. All Registered Trade Marks with the
C names, addresses and descriptions of the proprietors, and all notifications of
assignments are to be entered in that Register. Section 9 indicates the requisites
for registration of a Trade Mark in Part A or Part B. Sub-section (5) of Section
9 gives guidelines to the TRIBUNAL to follow in determining one of the
relevant criteria for that purpose.
D There is a prohibition contained in Section 12 on the registration of a
Trade Mark which is identical or deceptively similar to an already registered
Mark except as provided in Sub-section (3) thereof which authorises the
Registrar to permit the registration by more than one proprietor of Trade
Marks which are identical or nearly resemble each other (whether any such
E Trade Mark is already registered or not) in respect of the same goods or
description of goods subject to such conditions and limitations as he may
think fit to impose.

Section 10( 1) provides that a trade mark may be limited wholly or in part
to one or more specified colours, and any such lamination shall be taken into
F consideration by the "TRIBUNAL" while deciding the distinctive character of
the trade mark.

Section 17 contains the provision for "Registration of Trade Mark
subject to disclaimer" and provides that the TRIBUNAL, in deciding whether
G the Trade Mark shall be entered or shall remain on the register, may require
as a condition of its bein,g on the register, that the proprietor shall either
disclaim any right to the exclusive use of such part or of all or any portion
of such matter, as the case may be, to the exclusive use of which the
TRIBUNAL holds him not to be entitled, or make such other disclaimer as the
TRIBUNAL may consider necessary for the purpose of defining the rights of
H the proprietor under the registration.

t::
t
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.) 375

Chapter III of the Act deals with the procedure for and duration of A
Registration. Section 18 deals with the making of an application for Registration
of a Trade Mark either in Part A or Part B of the Register. The application
has to be made to the Registrar though filed in the office of the Trade Mark
Registry within whose territorial limits the principal place of business of the
applicant, or in the case of joint applicants, whose name is first mentioned, B
is situate. The Registrar may either accept or refuse the application or accept
it with conditions. Section 19 empowers the Registrar to withdraw his
acceptance if it was given in the circumstances enumerated in clauses (a) and
(b) of the Section.

Where an application has been accepted either absolutely or subject to C
certain conditions and limitations, it has to be advertised (See : Section 20),
though the Registrar may advertise it even before its acceptance in certain
situations contemplated by that Section. Under Section 21, Notice of Opposition.
may be given to the Registrar by any person opposing registration and the
applicant may, in reply thereto, file a counter-statement. Thereafter the Registrar
is required, after giving an opportunity of hearing to the applicant and his D
opponent, to decide whether registration is to be permitted absolutely or
subject to such conditions or limitations as he may deem fit to specify. Then
comes the stage of registration of the Trade Mark under Section 23 which
provides that if the application is not opposed and the period of filing
"opposition" has expired or the "opposition" has been decided in favour of E
the applicant, the Registrar shall register the Trade Mark either in Part A or
part B of the Register and issue a Certificate of Registration.

Registration of a Trade Mark is done initially for a period of 7 years
which can be renewed from time to time in accordance with the provisions
of Section 25. The renewal can be obtained by making an application to the F
Registrar in the prescribed manner within the prescribed period and on payment
of the prescribed fee. The renewal will be for another period of 7 years. Sub-
section (3) of Section 25 provides that the Registrar, at the prescribed time
before the expiration of the last registration of the Trade Mark, shall send a
notice to the registered proprietor of the date of expiration and the conditions G
as to payment of fees upon which a renewal of registration may be obtained.
If, at the expiration of the time prescribed in that behalf, those conditions have
not been duly complied with, the Registrar may remove the Trade Mark from
the Register. But the Trade Mark can be restored and it can be renewed
provided an application is made within one year from the expiration of the last
registration and provided the Registrar is satisfied that it would be just so to H
376 SUPREME COURT REPORTS [1998) SUPP. 2 S.C.R.

A do. Once a Trade Mark has been removed from the Register for failure to pay
the fee for renewal, it would, nevertheless, be deemed to be a Trade Mark
already on the Register for a period of one year for purposes of any application
for registration of another Trade Mark, unless the "TRIBUNAL" is satisfied
either :

B (a) that there has been no bona fide trade use of the trade mark which
has been removed during the years immediately preceding its removal;
or

(b) that no deception or confusion would be likely to arise from the
use of the trade mark which is the subject of the application for
c registration by reason of any previous use of the trade mark which
has been removed.

Chapter IV of the Act deals with the effect of the registration. This
Chapter deals with the rights conferred by registration, infringement of Trade
Marks and also defines the acts which do not constitute infringement.
D
Chapter V deals with assingment and transmission, while Chapter VI
deals with the use of Trade Marks and registered users.

Chapter VII deals with Rectification and Correction of the Register,
which begins with Section 56, around which the bulk of arguments made by
E both the sides, nay three, as Registrar has also addressed us has revolved.
This Section also speaks of the "TRIBUNAL", "Registrar" and the "High
Court". '

Chapter VIII deals with Certificate of Trade Marks, Chapter IX contains
"Special Provisions For Textile Goods", while chapter X deals with offences,
F penalties and procedure therefor. Chapter XI contains the miscellaneous
provisions which, inter alia, provides that suits for infringement etc. of the
Trade Marks or.relating to any right in a registered Trade Mark or for passing
off arising out of the use by the defendant of a Trade Mark, which is identical
with or deceptively similar to the plaintiffs Trade Mark, whether registered
G or unregistered, shall not be instituted in any court inferior to a district Court.
(See : Section I 05). Section I 06 specifies the reliefs which may be granted in
suits for infringement or for passing off.

Under Section 107 of the Act, any application for rectification of Register
has to be made, in the circumstances specified therein, only to the High Court
H and not to the Registrar. The provisions of this section are quoted below :-
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI (S. SAGHIR AHMAD, J.] 377

"I 07. Application for rectification of register to be made to High Court A
in certain cases. (I) Where in a suit for infringement of a registered
trade mark the validity of the registration of the plaintiffs trade mark
is questioned by the defendant or where in any such suit the defendant
raises a defence under Clause ( d) of sub-section (I) of section 30 and
the plaintiff questions the validity of the registration of the defendant's B
trade mark, the issue as to the validity of the registration of the trade
mark concerned shall be determined only on an application for the
rectification of the register, and notwithstanding anything contained
in section 46, sub-section (4) of section 47 or section 56, such
application shall be made to the High Court and not tc.. the Registrar.
c
(2) Subject to the provisions of sub-section (!), where an
application for rectification of the register is made to the Registrar
under Section 46 or sub-section (4) of section 47 or section 56, the
Registrar may , if he thinks fit, refer the application at any stage of
the proceeding to the High Court."
D
Since a reference in this Section has been made to Sections 46 and 4 7
of the Act, they are reproduced below:-

"46. Removal from register and imposition of limitations on ground of
non-use. - (1) Subject to the provisions of section 47, a registered
trade mark may be taken off the register in respect of any of the goods E
in respect of which it is registered on application made in the prescribed
manner to a High Court or to the Registrar by any person aggrieved
on the ground either

(a) that the trade mark was registered without any bona fide intention F
on the part of the applicant for registration that it should be
used in relation to those goods by him or, in a case to which
the provisions of section 45 apply, by the company concerned,
and that there has, in fact, been no bona fide use of the trade
mark in relation to those goods by any proprietor thereof for the
time being up to a date one month before the date of the G
application; or

(b) that up to a date one month before the date of the application,
a continuous period of five years or longer had elapsed during
which the trade mark was registered and during which there was
no bona fide use thereof in relation to those goods by any H
378 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A proprietor thereof for the time being.,:

Provided that, except where the applicant has been permitted
under sub-section (3) of section 12 to register an identical or nearly
resembling trade mark in respect of the goods in question or where
the tribunal is of opinion that he might properly be permitted so to
B register such a trade mark, the tribunal may refuse an application
under clause (a) or clause (b) in relation to any goods, if it is shown
that there has been, before the relevant date or during the relevant
period, as the case may be, bona fide use of the trade mark by any
proprietor thereof for the time being in relation to goods of the same
description, being goods in respect of which the trade mark is registered.
c
(2) Where in relation to any goods in respect of which a trade
mark. is registered -

(a) the circumstances referred to in clause (b) of sub-section (I) are
shown to exist so far as regards nor.-use of the trade mark in
D relation to goods to be sold, or otherwise traded in, in a particular
place in India (otherwise than for export from India), or in relation
to goods to be exported to a particular market outside India; and

(b) a person has been permitted under sub-section (3) of section 12
to register an identical or nearly resembling trade mark in respect
E of those goods under a registration extending to use in relation
to goods to be so sold, or otherwise traded in or in relation to
goods to be so exported, or the tribunal is of opinion that he
might properly be permitted so to register such a trade mark;

on application by that person in the prescribed manner to a High
F Court or to the Registrar, the tribunal may impose on the registration
of the first-mentioned trade mark such limitations as it thinks proper
for securing that registration shall cease to extend to such use.

(3) An applicant shall not be entitled to rely for the purpose of
clause (b) of sub-section (!) or for the purposes of sub-section (2) on
G any non-use of a trade mark which is shown to have been due to
special circumstances in the trade and not to any intention to abandon
or not to use the trade mark in relation to the goods to which the
application relates."

"47. Defensive registration of well known trade marks:(!) Where a
H trade mark consisting of any invented words has become so well
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 379

known as respects any goods in relation to which it is registered and A
has been used, that the use thereof in relation to other goods would
be likely to be taken as indicating a connection in the course of trade
between those goods and a person entitled to use the trade mark in
relation to the first-mentioned goods, then notwithstanding that the
proprietor registered in respect of the first mentioned goods does not B
use or propose to use the trade mark in relation to those other goods
and notwithstanding anything in section 46, the trade mark may, on
application in the prescribed manner by such proprietor, be registered
in his name in respect of those other goods as a defensive trade mark,
and while so registered, shall not be liable to be taken off the register
in respect of those goods under the said section. C
(2) The registered proprietor of a trade mark may apply for the
registration thereof in respect of any goods as a defensive trade mark
notwithstanding that it is already registered in his name in respect of
those goods otherwise than as a defensive trade mark, or may apply
for the registration there of in respect of any goods otherwise than D
as a defensive trade mark notwithstanding that it is already registered
in his name in respect of those goods as a defensive trade mark in
lieu in each case of the existing registration.

(3) A trade mark registered as a defensive trade mark and that
trade mark as otherwise registered in the name of the same proprietor E
shall, notwithstanding that the respective registrations are in respect
of different goods, be deemed to be and shall be registered as
associated trade mark.

(4) On application made in the prescribed manner to a High Court F
or to the Registrar, by any person aggrieved, the registration of a
trade mark as a defensive trade mark may be cancelled on the ground
that the requirements of sub-section (I) are no longer satisfied in
respect of any goods in relation to which the trade mark is registered
in the name of the same proprietor otherwise than as a defensive trade
mark, or may be cancelled as respects any goods in relation to which G
it is registered as a defensive trade mark on the ground that there is
no longer any likelihood that the use of the trade mark in relation to
those goods would be taken as giving the ind/Cation mentioned in
sub-section {I).

(5) The Registrar may at any time cancel the registration as a H
380 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A defensive trade mark of a trade mark of which there is no longer any
registration in the name of the same proprietor otherwise than as a
defensive trade mark.

(6) Except as otherwise expressly provided in this section, the
provisions of this act shall apply in respect of the registration of trade
B marks as defensive trade marks and of trade marks so registered as
they apply in other case." Section 108 lays down the procedure and
the manner in which the application for rectification shall be dealt with
by the High Court. It provides as under :-

"108. Procedure for application for rectification before a High Court (I)
c An application for rectification of the register made to a High Court
under Section 46, sub-Section (4) of Section 47 or Section 56 shall be
in such form and shall contain such particulars as may be prescribed.

(2) Every such application shall be heard by a single Judge of the
D High Court :

Provided that any such Judge may, if he thinks fit, refer the
application at any stage of the proceedings for decision to a Bench
of that High Court.

E (3) Where any such application is heard by a single Judge of the
High Court an appeal shall lie from the order made by him on application
to a Bench of the High Court.

(4) Subject to the provisions of this Act and the rules made
thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of
F 1908), shall apply to applications to a High Court under this section.

(5) A certified copy of every order of judgment of the High Court
or of the Supreme Court, as the case may be relating to a registered
trade mark under this section shall be communicated to the Registrar
by that Court and the Registrar shall give effect to the order of Court
G
and shall, when so directed, amend the entries in, or rectify, the
register in accordance with such order."

Section 109 makes provision for an appeal to the High Court against
any order or decision of the registrar under this Act or the rules made
H thereunder. The appeal is to be heard by a Single Judge with a further appeal
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.) 38]

before the Division Bench of the High Court. Sub-section (6) of Section I 09 A,
provides that in disposing of the appeal, the High Court shall have power to
make any order which the Registrar could make under the Act.

Section 111 provides for the circumstances in which proceedings in
a suit are to be stayed. It is quoted below :-
B
"111. Stay of proceedings where the validity of registration of the
trade mark is questioned, etc.-(!) Where in any suit for the infringement
of a trade mark -

(a) the defendant pleads that the registration of the plaintiffs trade
mark is invalid; or C
(b) the defendant raises a defence under clause (d) of sub-section
(I) of section 30 and the plaintiff pleads the invalidity of the
registration of the defendant's trade mark;

the court trying the suit (hereinafter referred to as the court), shall, - D
(i) if any proceeding for rectification of the register in relation to the
plaintiffs or defendants' trade mark are pending before the
Registrar or the High Court, stay the suit pending the final
disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied E
that the plea regarding the invalidity of the registration of the
plaintiff's or defendant's trade mark is primafacie tenable, raise
an issue regarding the same and adjourn the case for a period
of three months from the date of the framing of the issue in order
to enable the party concerned to apply to the High Court for p
rectification of the register.

(2) If the party concerned proves to the court that he has made
and such application as is referred to in clause (b) (ii) of sub-section
(I) within the time specified therein or within such extended time as
the court may for sufficient cause allow, the trial of the suit shall stand G
stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the
time so specified or within such extended time as the court may allow,
the issue as to the validity of the registration of the trade mark
concerned shall be deemed to have been abandoned and the court H
382 SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.

A shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred
to in sub-section (I) or sub-section (2) shall be binding upon the
parties and the court shall dispose of the suit conformably to such
order in so far as it relates to the issue as to the validity of the
B registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under
this section shall not preclude the court making any interlocutory
order (including any order granting an injunction directing accounts
to be kept, appointing a receiver or attaching any property), during
c the period of the stay of the suit."

It is in the background of the above provisions that the question
relating to the jurisdiction of the "Registrar" and the "High Court", which
individually and separately constitute "TRIBUNAL" within the meaning of
D Section 2(l)(x), has to be considered.

be functions and extent of jurisdiction of the registrar and that of the
'1

High Court which, incidentally, has also been constituted as the appellate
authority of the Registrar, have been distinctly set out in different provisions
of the Act. There are, however, certain matters for which jurisdiction has been
E given to the "TRIBUNAL" which, by its definition, includes the "High Court"
and the "Registrar" and therefore, the question is "can both be said to have
"concurrent" jurisdiction over matters as are set out for example, in Sections
9, 10,26,45,46,47 and 56".

If the proceeding is cognisable both by the Registrar and the High
F Court, which of the two will have jurisdiction to entertain such proceeding
to the exclusion of the other or the jurisdiction being concurrent, can the
proceeding go on simultaneously before the High Court and the Registrar,
resulting, may be, in conflicting decisions at the end, is a question which
seems to be answered by the words "before which the proceeding concerned
G is pending" occuring in the definition of"TRIBUNAL" in Section 2(l)(x) of
the Act. Let us test whether the answer is correct.

Section 56 contemplates proceedings of varyine nature. The proceedings
contemplated by Sub-section (I) relate to the cancellation of Trade Mark or
varying the registration of Trade Mark, on the ground that the condition on
H which the registration was granted, was either violated or there was failure
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 383

in observing the condition of registration. These proceedings may be A
entertained either by the High Court or the Registrar on the application, and,
at the instance, of the "person aggrieved".

The proceedings contemplated by Sub-section (2) of Section 56 relate
to the absence or omission of an entry in the Register or an entry having been
made without sufficient cause or an entry wrongly remaining on the Register B
or there being any error or defect in an entry in the Register. Such proceedings
may also be entertained either by the Registrar or the High Court on an
application made in the prescribed manner by a "person aggrieved". The High
Court or the registrar may, in these proceedings, pass an order either for
making an entry, or expunging or varying the entry. In these proceedings C
which may be pending either before the High court or the Registrar, it would
be open to either of them to decide any further question which may be
necessary or expedient to decide in connection with the rectification of the
Register. Obviously, this gives very wide jurisdiction to the High Court or the
Registrar working as a Tribunal as the jurisdiction is not limited to the
proceedings pending under Sub-section (I) or Sub-section (2) but extends D
also to decide, in the same proceedings, any other question which may
legitimately arise in connection with the rectification proceedings.

The jurisdiction conferred on the High Court or the Registrar under
Sub-section (I) or Sub-section (2) can also be exercised suo motu subject to E
the condition that a notice is issued to the parties concerned and an opportunity
of hearing is given to them before passing any order contemplated by Sub-
section (I) or Sub-section (2).

The Registrar and the High Court have also been given the jurisdiction
under this Section to order that a Trade Mark registered in Part A shall be F
shifted to Part B of the Register.

An order of rectification, if passed by the High Court, is implemented
by the Registrar by rectifying the Register in conformity with the order passed
by the High Court. G
The extent of jurisdiction conferred by Section 56 on the Registrar to
rectify the Register, is, however curtailed by Section I07 which provides that
an application for rectification shall, in certain situations, be made only to the
High Court. These situations are mentioned in Sub-section (I) of Section 107,
namely, where in a suit for infringement of the registered Trade Mark, the H
384 SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.

A validity of the registration is questioned by the defendant or the defendant
in that suit, raises the defence contemplated by Section 30(1)(d) in which th~
acts which do not constitute an infringement, have been specified, and the
plaintiff in reply to this defence questions the validity of the defendant's
Trade Mark. In these situations, the validity of the registration of the Trade
B Mark can be determined only by the High Court and not by the Registrar.

Section 107 thus impels the proceedings to be instituted only in the
High Court. The jurisdiction of the Registrar in those cases which are covered
by Section 107 is totally excluded. Significantly, Section 107(2) provides that
if an application for rectification is made to the registrar under Section 46 or
C Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that
application, at any stage of the proceeding, to the High Court.

Similarly, under Section 111 of the Act, in a pending suit relating to
infringement of a Trade Mark, if it is brought to the notice of the Court that
any rectification proceedings relating to plaintiffs or defendant's trade Mark
D are pending either before the Registrar or the High Court, the proceedings in
the suit shall be stayed pending final decision of the High Court or the
Registrar. Even if such proceedings are not pending either before the Registrar
or the High Court, the trial court, if prima facie satisfied that the plea
regarding invalidity of plaintiffs or defendant's Trade Mark is tenable, may
E frame an issue and adjourn the case for three months to enable the party
concerned to apply to the High Court for rectification of the Register. If within
three months, the party concerned does not approach the High Court, the
plea regarding invalidity of Trade Mark would be treated as abandoned but
if such an application has been given hearing, the suit would be stayed
awaiting final decision of the High Court. The finding of the High Court would
F bind the parties and the issue relating to the invalidity of Trade Mark would
be decided in terms of those findings.

In this background, the phrase "before which the proceeding concerned
is pending" stands out prominently to convey the idea that if the proceec.ing
G is pending before the "Registrar'', it becomes the "TRIBUNAL" Similarly, if
the proceeding is pending before the "High Court", then the High Court has
to be treated as "TRIBUNAL". Thus, the jurisdiction of the Registrar and the
High Court, though apparently concurrent in certain matters, is mutually
exclusive. That is to say, if a particular proceeding is pending before the
registrar, any other proceeding, which may, in any way, relate to the pending
H proceeding, will have to be initiated before and taken up by the Registrar and
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD,!.] 385
the High Court will act as the Appellate Authority of the Registrar under A
Section 109. It is obvious that if the proceedings are pending before the High
Court, the registrar will keep his hands off and not touch those or any other
proceedings which may, in any way, relate to those proceedings, as the High
Court, which has to be the High Court having jurisdiction as set out in
Section 3, besides being the Appellate Authority of the Registrar has primacy B
over the Registrar in all matters under the Act. Any other interpretation of
the definition of "TRIBUNAL" would not be in consonance with the scheme
of the Act or the contextual background set out therein and may lead to
conflicting decision on the same question by the Registrar and the High Court
besides generating multiplicity of proceedings.
c
Learned counsel for the respondent - Chinar Trust, at this stage, invoked
the Rule of Punctuation in English Grammar and contended that the definition
of "TRIBUNAL" is amply clear and requires no interpretative exercise as there
is a distinction between the "Registrar" and the "High Court" inasmuch as
the Registrar will have jurisdiction irrespective of the pendency of any
proceeding, the High Court will have jurisdiction only when "proceeding D
concerned is pending before it. This he tried to show by pointing out that
the words "as the case may be" are placed between two commas, one at the
beginning immediately after the word "Registrar" and the other at the end,
with the result that the words "Tribunal means the Registrar" stand out
distinctly, while the words "High Court before which the proceeding concerned E
is pending" stand out separately as an independent phrase. It is contended
that the words "before which the proceeding concerned is pending" will not
be applicable to the Registrar and, therefore, the Registrar can exercise the
jurisdiction under Section 56 irrespective of pendency of any "proceeding".

The argument is faHacious. F

Learned counsel for the Chinar Trust is trying to give a measure of
importance to the punctuation mark "comma", more than it deserves. If
"comma" were that important, there, incidentally, is another "comma" before
and after the word "High Court". This "comma" obviously separates the G
phrase "before which the proceeding concerned is pending" from the word
"High Court" with the result that this phrase becomes applicable both to
"High Court" and the "Registrar". The word "concerned" in this phrase is
also of significanr,e inasmuch as the word "TRIBUNAL" has been used in
different sections in relation to different proceedings. At some places in the
Act, all the three words, namely, "Registrar", "High Court" and "TRIBUNAL" H
386 SUPREME COURT REPORTS [1998) SUPP. 2 S.C.R.

A have been used which indicate that 1f the proceeding under that particular
provision is pending before the "Registrar" then on account of that proceeding,
the Registrar becomes the "TRIBUNAL". So also, if the proceeding is pending
before the High Court then that proceeding makes the High Court a
"TRIBUNAL". It is in that sense that the word "proceeding" concerned has
B to be understood.

Not content with the rejection of the above contention, learned counsel
for the respondent invoked another rule of English grammer relating to the
use of pronouns "which" and 'whom" and contended that if the phrase
"before which the proceeding concerned is pending" were meant to apply to
C the "Registrar", the Legislature would have used the pronoun 'whom" instead
of "which" and the phrase would have read "before whom the proceeding
concerned is pending." The High Court, it is contended, is an inanimate
object and, therefore, the pronoun "which" has been used.

"Pronoun" means "for-a-noun". It is defined as a word used "instead
D of a noun". The Pronoun with which we are concerned in this case is the
relative pronoun, namely, the pronoun "WHICH" which incidentally, can be
used in many other forms, namely, as an interrogative pronoun, an interrogative
adjective, or as a relative adjective. Its use is not limited to inanimate objects
or animals but it can also be used for "people" as explained in A Practical
E English Grammar (A.J.Thomson and A.V. Martinet - Fourth Edition). The two
Nouns, namely, the "Registrar" and the "High Court" used in the definition
of"TRIBUNAL" are followed by the relative pronoun, "which" and, therefore,
the phrase "before which the proceeding concerned is pending" would relate
to both the Nouns, namely, the "Registrar" and the "High Court". This rule
of Grammar which was sought to be pressed into aid by the learned counsel
F for the repondent is, therefore, of no use to him.

Moreover, in a situation of this nature, mere rule of Grammar would not
lead to correct interpretation of the definition which has to be analysed, as
we have already done, in the background of those provisions in which the
G word "TRIBUNAL" has been used together with the purpose for which it has
been used keeping in mind the overall scheme of the Act.

Learned counsel for the respondent then cited before us a decision of
the Calcutta High Court in Standard Pharmaceuticals v. Dy. Registrar of
Trade Marks, (Appeal No. 213of1970 decided on 18.2.1975 by Sabyasachi
H Mukherjee, J. (as His Lordship then was )], in which it was inter alia,
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.) 387

observed as under :- A

"The definition clause under section 2(1 )(x) provides as follows;
"Tribunal means the Registrar or as the case may be, the High Court
before whom the proceeding concerned is pending. Therefore, in
order to be a tribunal the Registrar must be one before whom a B
proceeding is pending. Counsel for the appellant contended that in
section 56(1) of the Act, a proceeding could only be pending before
the Registrar where there were two parties or, in other words, where
there was a proceeding initiated at the behest of a third party. It was
contended that in this case no proceeding was pending. In my opinion,
this contention also cannot be accepted. It is true that under the Act, C
the registrar (being the person designated) performs some function as
the Registrar and the Registrar as well as the High Court perform in
certain other cases certain functions of the tribunal. But both the High
Court and the Registrar perform the function of the tribunal, only in
cases where proceedings are pending Proceedings in the case of D
statutory bodies, like this, need not be a dispute between two
contending private parties. It could be a dispute between the
adjudicating party and the party against whom the proceedings are
taken. In this connection, reliance may be placed on the observations
of the Supreme Court in the case of Associated Cement Companies E
Ltd. v. P.N Sharma and another, A.LR. ( 1965) S.C. 1965 at page 1999
where the Supreme Court observed "If a statutory body has power to
do any act which will prejudicially affect the subject then although
there are not two parties apart from the authority and the contest is
between the authority proposing to do the act and the subject opposing
it, the final determination of the authority will yet be a quasi judicial F
act provided that the authority is required by the statute to act
judicially. In such case the statutory body which adjudicates such a
dispute would, in my opinion be a tribunal in terms of Section 2( 1)(x)
of the Trade and Merchandise Marks act, 1958. In this case, after the
proceeding which was pending by the initiation of the notice dated G
the 9th May, 1968, the Registrar in deciding this controversy in my
opinion, was acting as a tribunal and therefore, was competent to take
action as a tribunal contemplated under section 56(4) of the Act.''

As against the above decision, there is a decision of a Division Bench
of the s~me High Court in Registrar of Trade Marks and Anr. v. Kumar H
388 SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.

A Ranjan Sen & Ors., AIR (1966) Calcutta 311, in which it was laid down as
under:-

"It will be noticed that the word "Tribunal" as defined in clause (x)
of Sub-section (I) of S. 2 does not simply mean the Registrar or the
High Court but the Registrar or the High Court, only when proceedings
B are pending before them. It is a convenient way of describing either
the Registrar of the High Court before whom proceedings were
pending. Coming now to S. 56, we find that sub-section (I) refers to
an application made in the Prescribed manner to a High Court or to
a Registrar, but it is the Tribunal which can make an order under it of
c cancellation or varying the registration as the case may be. It is a
mistake to think that the word "Tribunal" Stands in contra-distinction
to the word "High Court" or the "Registrar". The word "Tribunal" has
been used as meaning the "High Court" or the "Registrar" before
whom proceedings are pending. It is in this sense that the word
"Tribunal" has been used in sub-section (4). It is intended to convey
D that the "Tribunal'', that is to say, the High Court or the "Registrar"
before whom proceedings are pending may, after giving notice in the
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make an order as referred to in sub-
section (I) or sub-section (2). As will appear from sub-section (5) the
E High Court has itself power to order a rectification of the register. In
fact, the Court below, having come to the conclusion that the
registration had been improperly done in violation of the provisions
of the said Act, was not powerless in the matter, but could of its own
motion have rectified the register, even if its conclusion as to the
powers of the Deputy Registrar was right. It is clear to us that the use
F of the word "Tribunal" in sub-section (4) of S. 56 does not exclude
the provisions of sub-section (2) of S.4. The only thing to note is that
in order to attract the provisions of sub-section (4) of Section 56.
proceedings must be pending before the Registrar or the persons
authorised by him to exercise a particular function under sub-section
G (2) of S. 4."

This decision has been considered by the learned Single Judge in
Standard Pharmaceuticl/J/'s case (supra). In our opinion, both the decisions
are in line with the view that we have taken in the instant case on the
interpretation of the definition of"TRIBUNAL". But the point before us is a
H little different as we are concerned essentially with the extent of jurisdiction
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.) 389

of the "Registrar" and the "High Court" vis-a-vis other provisions of the Act. A
In the instant case, it has already been indicated above that when the
Assistant Registrar of Trade Marks dismissed appellant's opposition to the
registration of respondent's Trade Mark by its order dated 12.8.1992, it filed
an appeal in the Delhi High Court, which was admitted on 1.2.1993 and has
since been registered as C.M.(Main) 414of1992. Thereafter, on 4.8.1993, the B
appellant filed a rectification petition under Sections 45 and 46 of the Act for
removing the entry relating to the Trade Mark for which Registration Certificate
was granted to the respondents on 30.J 1.1992. The appellant has also filed
a suit for passing-off (Suit No. 1705 of 1994) in the Delhi High Court against
the respondents in which an order of temporary injunction has been granted C
in favour of the appellant which has been upheld by the Division Bench of
the High Court as also by this Court. In that suit, an amendment application
has also been filed so as to include the ground of infringement of the
appellant's Trade Mark but that application has not yet been disposed of. It
is, however, obvious that if the application is allowed, the amendments will
relate back to the date of the application, if not to the date of plaint. D
fn view of the pendency of these proceedings in the High Court and
specially in view of Section I 07 of the Act, the Registrar could not legally
issue any suo motu notice to the appellant under Section 56(4) of the Act for
cancellation of the Certificate of Registration/Renewal already granted. The E
appeal is consequently allowed and the show-cause notice issued by the
Deputy Registrar (respondent No.2) on 26th of Sept. 1997 under Section 56(4)
of the Act is hereby quashed. The appellants shall be entitled to their costs.

T.N.A. Appeal allowed.