Yashoda Hospital and Research Center Limited v. Yashoda Super Specialty Hospital and Anr

11. Mr. Bhandari submits that the learned IPAB, thus, on 8 April 2019, erroneously presumed that the petitioner had refused to accept service as directed to be effected by its earlier order dated 10 December 2018. In actual fact, fresh notice, as was directed to be issued by the learned IPAB on 10 December 2018, was never actually issued or served on the petitioner. Had the learned IPAB been cognizant of this fact, Mr. Bhandari submits that it would never have proceeded on 8 April 2019 on the premise that the petitioner had been duly served. It was on the basis of this erroneous premise that the learned IPAB proceeded to list the matter for final hearing and proceeded to decide it against the petitioner. He submits that the interests of justice would clearly justify reconsideration of the rectification petition filed by the respondents after granting of an opportunity of hearing to the petitioner.

12. In this context, Mr. Bhandari has also drawn my attention to Rule 164 of the IPAB Rules, which requires the date of hearing fixed by the learned IPAB to be notified to all parties. He submits that this requirement is independent of the requirement of issuing notice issued on the rectification application. There was no compliance, whatsoever, by the learned IPAB with Rule 16. Mr. Bhandari submits that a case of review of the impugned order is clearly made out on this ground as well.

13. The third submission of Mr. Bhandari was that certain relevant documents, which pertained to the order passed by the City Civil Court, Hyderabad (hereinafter “the learned Hyderabad Court”) in COS No. 2/2017, instituted against the petitioner by the respondents, were never brought to the notice of the learned IPAB. COS 2/2017 alleged that the petitioner’s mark infringed the

16. Date of hearing to be notified. – The Appellate Board shall notify the parties the date and place of hearing of the application or appeal in such manner as the Chairman may by general or special order direct. registered mark of the respondents. The respondent’s prayer for interim injunction against the petitioner’s mark had specifically been rejected by the learned Hyderabad Court by order dated 12 June 2018. Even though this order was passed after ORA/13/2017/TM/DEL had been filed by the respondents before the learned IPAB, he submits that the defects in ORA/13/2017/TM/DEL were cleared only after the suit had been instituted in the Hyderabad Court. The Hyderabad Court had, on 12 June 2018, rejected the respondents’ prayer for interim injunction against the petitioner’s mark. The learned IPAB came to pass order under review only thereafter, on 21 January 2020. As such, he submits that the respondents were duty bound to bring the events relating to the Hyderabad suit, including the order dated 12 June 2018, to the notice of the learned IPAB. The learned IPAB having passed the order under review without being made conversant of the said facts, a clear case for review is, according to him, made out.

14. Opposing the Review Petition, Mr. Sandeep Sethi, learned Counsel for the respondents first emphasised the limited scope of review jurisdiction, pointing out that a review could not be an appeal and disguise. Through a Review Petition, he submits that the petitioner could not seek a rehearing of the rectification petition which stood decided by the learned IPAB.

15. On the various issues raised by Mr. Bhandari, the response of Mr. Sethi is as under:

(i) Mr. Sethi submits that the “address for service”, as envisaged in Section 143 of the Trade Marks Act, is irrelevant to proceedings before the learned IPAB. According to him, the provisions of the Trade Marks Rules, on which Mr. Bhandari places reliance, are applicable only to proceedings before the IPAB, on a rectification petition, according to him, follow an entirely distinct trajectory, for which ample and self-contained provisions are to be found in the IPAB Rules. He submits that Rule 6(2) of the IPAB Rules requires the rectification applicant to state, in the rectification application, the full address of the respondent, i.e. in the present case, the present petitioner. It is that address, he submits, at which the petitioner was required to be served, and not the address for service provided by the petitioner at the time of applying for registration of the mark. As such, Mr. Sathi’s contention is that the “address for service” provided by the petitioner at the time of applying for registration of the mark was of no relevance insofar as the rectification proceedings before the learned IPAB were concerned, inasmuch as there is no provision in the Trade Marks Rules which refer to proceedings before the learned IPAB.

(ii) That apart, Mr. Sethi laid considerable emphasis on paras

2 and 3 of the present review petition, which read thus:

(iii) He submits that the averment, in para 2 of the present

Review Petition, that the petitioner was unaware, till 14 July 2020, of the order under review, is clearly incorrect, and relies, for the said purpose, on para 24 of the plaint filed by the respondents, before the learned Hyderabad Court, which reads thus:

(iv) Mr. Sethi further points out that, on the basis of the present rectification petition, the petitioner instituted an application under Section 124 of the Trade Marks Act in the Hyderabad suit, para 6 of which read as under:

(v) Reliance was also placed by Mr. Sethi on notice of opposition filed by the respondents against other marks of the petitioner in which the respondents had averred that the Rectification Petition ORA/13/2017/TM/DEL/2959 pending before the learned IPAB, had been served on the petitioner. As many as five such opposition proceedings have been brought to my attention.

(vi) In view of these facts, Mr. Sethi’s contention is that the assertion, by the petitioner, in paras 2 and 3 of the present Review Petition, that the petitioner was unaware of the prosecution of the present rectification petition by the respondents till 14 July 2020 is incorrect. A person who misstates fact before the Court and whose proverbial hands are not, therefore, clean, is not, according to Mr. Sethi, entitled to any relief, much less to relief in review jurisdiction, which is fundamentally discretionary in nature.

(vii) Apropos Mr. Bhandari’s second submission that, in fact, the papers relating to the rectification petition were not served on the petitioner as directed by the learned IPAB on 10 December 2018, Mr. Sethi has no submission to offer. He also has, therefore, no submission to offer with respect to the observation of the learned IPAB in its subsequent order dated 8 April 2019, to the effect that the petitioner had refused to accept the service. Significantly, in this context, Mr. Sethi places reliance on the following letter dated 24 July 2020 issued by the learned IPAB to the respondents’ trade mark Agent. “Intellectual Property Appellate Board Delhi Registry-Cum-Bench G-62 to 67 & 196 to 204, August Kranti Bhawan, Bhikaji Cama Place, New Delhi — 110 066. Tele No: 011-26180613/14 Website: http://www.ipabindia.org ORIGINAL APPLICATION NO.: ORA/13/2017/TM/DEL/123I[3] (For the removal/rectification of Trade Mark No. 1340261 in class 42) Dated 24.07.2020 SAIKRISHNA & ASSOCIATES B-140, SECTOR-51, NOIDA-201301 Sub: YASHODA SUPER SPECLALITY HOSPITAL YASHODA HEALTH CARE SERVICES PRIVATE LTD. Vs

1) YASHODA HOSPITAL & RESEARCH CENTRE LTD.

2) THE REGISTRAR OF TRADE MARKS With reference to your letter dated 23rd June, 2020. I herewith forwarding you following document as per your request and details are as follows:

1. Certified copy of Final Order dated 21st January 2020 10 sets (100 pages)

2. Copy of the complete file of Rectification Petition with affidavit alongwith annexures (284 pages)

3. Copy of the Form-C dated 3rd August, 2018 and 22nd March, 2018 alongwith returned courier envelope (21 pages)

4. Certified copy of Order sheet dated 19/01/2018, 10/12/2018 and 08/04/2019 (4 pages). Sd/ 24/07/2020 For DEPUTY REGISTRAR” (emphasis supplied) Mr. Sethi’s submission, predicated on this letter, is that the postman had, on the envelope in which the papers of the rectification petition had been dispatched to the Yamuna Vihar address of the petitioner’s proprietor by the learned IPAB, scrawled the Devanagari endorsement “प्राप्त करता ने लेने से मना कर दिया” (which translates to “the addressee refused to accept”). Mr. Sethi’s submission, predicated on this endorsement by the postman, is that the notice, initially issued by the learned IPAB, was not returned on the ground of insufficiency of address, but because the addressee refused to accept service.

(viii) On the merits of the matter, Mr. Sethi’s submission is that there was no default on the part of the respondents in intimating the learned IPAB of the Hyderabad proceedings as the suit was instituted after the present rectification petition was filed before this Court. Besides, he submits that the interim order passed by the Hyderabad Court would have no binding or even persuasive effect on the learned IPAB while adjudicating the respondents’ rectification petition. This, he submits, therefore, cannot constitute a legitimate ground to seek review of the order dated 21 January 2020, passed by the learned IPAB, especially given the limited scope of review jurisdiction.

16. Responding to these submissions, Mr. Bhandari points out that the copy of the envelope on which Mr. Sethi places reliance, has been introduced by him in an “additional convenience compilation” dated 28 November 2023, and does not form part of the record of the present case. He also disputes Mr. Sethi’s contention that the said copy of the envelope forms part of the record of the learned IPAB. He submits that the petitioner had obtained the scanned copy of the record of the IPAB from this Court and filed it as such, and the said copy does not contain the aforesaid envelope. Be that as it may, Mr. Bhandari submits that, even if the postman had, on the envelope, remarked that the addressee had refused to accept service, it would result in a situation in which there was a discrepancy between the remark on the envelope entered in hand and the tracking report of the postal authorities which, apropos delivery on 12 April 2018 at 15:51 hours records “item delivery attempted insufficient address”. It would, therefore, be hazardous for the Court to proceed solely on the basis of the alleged postal endorsement on the envelope in Devanagari, especially as this document had been introduced now at a belated stage.

17. Mr. Bhandari also places reliance on the notice dated 24 July 2020 addressed by the learned IPAB to the respondents’ trade mark Agent (reproduced in extenso in para 15 (vii) supra), but for a different purpose. He points out that the said communication was after both the orders dated 10 December 2018 and 8 April 2019 had been passed by the learned IPAB. The fact that the documents annexed to the said communication only contained the returned courier envelope of 22 March 2018, he submits, indicates that there was, in fact, no attempt at fresh service on the petitioner in accordance with the order dated 10 December 2018 passed by the learned IPAB. Even on this sole ground, he submits, the present review petition is required to be allowed and the petitioner is entitled to be heard on the respondents’ rectification petition, after setting aside the impugned order.

18. Having heard learned Senior Counsel/learned Counsel for both sides and applied myself to the issues at hand, I do not deem it necessary to enter into the intricacies of all arguments which were advanced as the petitioner is, in my opinion, entitled to succeed even on the sole ground of the impugned order having been passed without effecting due service on the petitioner as directed by the learned IPAB by its order dated 10 December 2018.

19. As such, I eschew expressing any opinion on other aspects which were argued before me, as they have no effect on the point on which I deem the petitioner entitled to relief.

20. There is no dispute about the fact that, on 10 December 2018, the learned IPAB treated the petitioner as not having been served in the rectification petition prior thereto and, in fact, directed fresh notice to be issued to the petitioner for 8 April 2019. There is also nothing to show that the said fresh notice was ever issued or served on the petitioner. The communication dated 24 July 2020 from the learned IPAB to Saikrishna & Associates encloses, therewith, only the returned courier envelope on 22 March 2018. No document, evidencing any attempt at service having been made on the petitioner, in accordance with the direction to that effect, as passed by the learned IPAB on 10 December 2018 is forthcoming on record. Had the petitioner refused to accept service of the notice issued by the learned IPAB on 8 April 2019, it goes without saying that a copy of the postal endorsement in that regard would also have been enclosed with the communication dated 24 July 2020. The learned IPAB, therefore, was clearly in error in observing, in its subsequent order dated 8 April 2019, that the petitioner had refused to accept service.

21. In fact, as Mr. Bhandari correctly submits, it appears that the learned IPAB confused the first abortive attempt at service of the papers relating to the rectification petition on the petitioner on 22 March 2018 with the service of the papers as directed by the order dated 8 April 2019. The record reveals, quite clearly, that there was no compliance with the direction passed by the learned IPAB in its order dated 8 April 2019, for fresh service to be effected on the petitioner. Mr. Sethi, too, is unable to answer this submission as advanced by Mr. Bhandari or to advance any argument which could convince the Court that the observation, in the subsequent order dated 8 April 2019, of the learned IPAB that the petitioner had refused to accept service, was not, in fact, incorrect.

22. Apparently, therefore, the learned IPAB, under an erroneous presumption of fact that the petitioner had been duly served, proceeded, on 21 January 2020, to decide the rectification petition filed by the respondents ex parte against the petitioner.

23. Mr. Sethi’s doubt regarding the cleanness of the petitioner’s hands is based on paras 2 and 3 of the Review Petition, reproduced in para 15 (ii) supra. While it may not be strictly correct that the petitioner was unaware of the filing of the rectification petition, as it found mention in the plaint in the Hyderabad suit, when the Court pointedly queried of Mr. Sethi whether there is anything to indicate that the petitioner was made aware of the proceedings before the learned IPAB or of the hearing which was fixed before the learned IPAB, he is unable to answer in the affirmative.

24. The petitioner’s hands are not, therefore, in my view, in any case so unclean, as to disentitle him to relief in a case such as this, in which the learned IPAB has proceed to disenfranchise the petitioner’s mark ex parte, fifteen years after it had been registered.

25. Additionally, the passing of the impugned order would also be liable to be set aside for non-compliance with Rule 16 of the IPAB Rules, which requires the date of hearing of the IPAB to be notified to both parties. Inasmuch as the order dated 8 April 2019 which fixed final hearing in the matter on 9 October 2019 was also passed by the learned IPAB in the absence of the petitioner, the impugned order additionally infracts Rule 16 of the IPAB Rules and is liable to be set aside on that ground as well.

26. As already noticed at the commencement of this order, the impugned order has resulted in serious prejudice to the petitioner as mark, which was registered in the petitioner’s favour as far back as on 22 February 2005, came to be removed from the register fifteen years thereafter, without the petitioner being heard in that regard.

27. The impugned order came to be passed ex parte only because of an erroneous impression, harboured by the learned IPAB, that the petitioner had refused service of the notice issued by the learned IPAB on 10 December 2018 and, therefore, stood duly served. Once the learned IPAB had deemed it appropriate, in its order dated 10 December 2018, to direct fresh service to be effected on the petitioner, it was duty bound to proceed with the matter only after such service had been effected. That, however, never happened. The earlier default in service on the petitioner on 12 April 2018 ceased to have relevance, whether it was because the address was insufficient or because the addressee refused to accept service. [One may, even if inferentially, borrow a precedential leaf, in this regard, from the judgment of the Supreme Court in State Bank of India v. Chandra Govindji (Km.)5, which holds that, once the Court decides to grant adjournment, the number of adjournments earlier granted cease to have relevance.] The observation, in the subsequent order dated 8 April 2019, that the petitioner had refused service was, therefore, incorrect. Had the learned IPAB known that there was, in fact, no compliance with the direction, in its order dated 10 December 2018, to issue fresh notice, it appears obvious to me that it would not have proceeded ex parte against the petitioner.

28. The facts of the case, as well as the pre-eminent public interest involved in ensuring that justice is, at all costs, done, convince me, therefore, that a case for review of the order dated 21 January 2020, within the meaning of Rule 23 of the IPAB Rules does exist.

29. I may note, here, Mr. Bhandari had, towards the commencement of arguments, drawn attention to a decision of the Full

Bench of the IPAB in Aachi Masala Food (P) Ltd v. S.D. Murali[6], which holds that the scope of review jurisdiction as conferred on the IPAB by Rule 23 of the IPAB Rules is not confined to the peripheries of the jurisdiction vested in the Civil Court by Order XLVII of the Code of Civil Procedure, 1908 (CPC). I am not entering into that arena as, even on facts, I deem this an appropriate case for the petitioner to be granted an opportunity to contest the rectification petition filed by the respondents.

30. Needless to say, no prejudice would result as a consequence, to the respondents, as they could always plead and argue the rectification petition. Only, this time, it would be a contested, rather than an uncontested, matter. Facing contest, in litigation, cannot be said to be prejudicial.

31. In view of the aforesaid, without making any observation on the merits of the impugned order or on the merits of the rival stands of the parties in the rectification petition instituted by the respondents, and solely on the ground of violation of the principles of natural justice and the requirement of due opportunity to the petitioner to contest the rectification petition, the impugned order dated 21 January 2020 passed by the learned IPAB is quashed and set aside.

32. Rectification Petition No. ORA/13/2017/TM/DEL would be heard afresh, as the learned IPAB stands abolished. The petition would have to be heard by the Intellectual Property Division (learned IPD) of this Court. MANU/IC/0050/2013

33. Accordingly, list the rectification petition for hearing before the appropriate Bench of the learned IPD of this Court on 24 January

2024.

34. The present petition stands allowed accordingly.