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CHAPTER – IV
ANALYSIS AND INTERPRETATION - I
IV.1 INTRODUCTION
The significance of Law towards Trade Mark Registration, Assignment
and Transmission etc, gives new dimension to the businessmen and public at large.
Great attempts have been made from time to time by persons to expand the
boundaries of Intellectual Property acquired by them and to convert this protective
law into a source of monopoly. But courts have resisted this from time to time. As
such , the Act contains lengthy sections, many cross references and plenty of
provisions and exceptions. The more important provisions have been clarified by
judicial interpretation. But some sections still remain under judicial scrutiny and
analysis.
The purpose of the law of Trade mark to provide for registration and
better protection of trade marks for goods and services and to prevent the use of
fraudulent marks. It is evident from the following judgements of the court, that the
loop - holes in this Act can be removed by court verdicts as the court is the authority
for the interpretation of law. Thus, the present Trade Marks Act 1999 has introduced
better reforms in the law, when a trade mark is presented for registration in order to
protect the interest of the consumers and the traders.
Hence, the detailed analysis of the important case laws relating to the
Assignment and Transmission of Trade mark issues were presented to understand
the intricacies of selected court judgements and its implications. They are,
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IV.2 INTERPRETATION OF SPECIFIC CASE JUDGEMENTS
1. Parties: Supriya Prabhu–Plaintiff–Vs – Janus Remedies – Defendant
Issue: Supriya Prabhu – was the prior user of the trade mark – Colivan D,
Pharmaceutical preparation. There was an assignment of the mark to her from her
predecessor. She changes the packing, which is similar to that of defendants.
Janus Remedies registered their trade mark Colivan D in green packing.
The new company formed came into operation after winding up of the old one. They
could not show a valid deed of assignment of trade mark in their favour. There was
no validity in the deed of assignment issued by the company which was liquidated
consequent to the winding up. The defendants could not claim to the prior user of
the mark.
Supriya Prabhu filed a case against Janus Remedies to bring an action for
trade mark infringement and passing off for using a mark – Colivan D.
Though the defendant did not have a valid deed of assignment, the act of
the Plaintiff in changing the packing similar to that of defendants to be tainted. She
was an imitator of another person’s design.
Judgement: The court refused to grant the remedy.
Implication: She had lost the right of remedy due to her misconduct, eventhough
there was a valid assignment.
2. Parties: Doctor Morepen Ltd. – Plaintiff - Vs - Yash Pharma
Laboratories Ltd. Defendant.
Issue: The Plaintiff “Doctor Morepen” had purchased “LEMOLATE” brand
from the defendant, Yash Pharma Laboratories Ltd. along with the trademark and
entered into an agreement and thus transferring all the rights vested in the defendant
in respect of “Lemolate” and also gave an undertaking that it shall not use or create
any trademark similar to the brand LEMOLATE. But the defendant launched
products under the trademark `LEMOTAB’ Tablet.
The Plaintiff filed a case against the defendant sought for permanent
injunction restraining them from infringement and passing off of a trademark.
Judgement: Held the Plaintiff was entitled to an interim injunction against
defendant as there was a clear evidence of infringement of trademark.
Implication: By a valid assignment the plaintiff stepped into the shoes of the
defendant to take advantages of trademark. When there is a valid assignment, the
aggrieved party will get remedy.
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3. Parties: Brakes International – Petitioner-Vs – Tilak Raj Bagga and
another – Respondent
Issue: M/s. Forward Auto Industries was a firm comprising of two partners namely
Tilak Raj Bagga and Trilok Chand. They had got registered a trademark called
`FINEX’. The firm was dissolved in the year 1985.
On 15.06.1987 Trilok Chand and others trading as M/s. Brakes
International moved a Petition U/s 44 of the Trade and Merchandise Marks Act
1958 alleging assignment of “FINEX” trademark in their favour. The Registrar of
Trademarks registered the assignment in favour of the Petitioner without giving
notice to Tilak Raj Bagga and it was violation of the Principles of Natural Justice.
Judgement : Held ordered for the removal of entry made in favour of Trilok Chand
and others and restoration of the position as it existed prior to 15.06.1987. Direction
was given to both parties to appear before the Registrar and the Registrar will decide
the matter, after hearing both the parties in accordance with law.
Implication: Legal protection is given to the affected person by restoration to the
original position when natural justice is violated.
4. Parties: Akal Mechanical works– Appellant –Vs- Paras Special
Machine – Respondents Company and others.
Issue: Goal Singh (One of the Partners of the firm) and Gurcharan Singh (one
of the Partners of the respondent firm) were joint proprietors of the registered
trademark “Paras Special” trading as M/s. Akal Mechanical Works, Ludhiana.
The Appellant presented an application on Form TM 24, before the
Registrar, for the removal of the name of the Respondent, from the Certificate of
Registration, this application was allowed and the name of the respondents was
removed from the Certificate of registration without any notice to him. The
respondent contented that the order of removal of his name from the register was
obtained on the basis of forged document and the order was made by the Registrar
without any notice was illegal and void.
Aggrieved by the order of the Registrar the appellant has filed an appeal
before Delhi High Court.
Judgement: Held Statusquo should be maintained till the disposal of the
rectification proceedings.
Implication: The order of the removal of the name of the respondent without
giving notice, seriously affects the proprietary right of the respondent and thereby
contravene of the principles of natural justice.
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5. Parties : Bawa Jagmohan Singh and others – Appellants - Vs -
The Registrar of Trademarks – Respondent
Issue: Petitioner, respondents 3 to 5 and their father Bawa Sardar were partners of
M/s Bawa Masala Company. Bawa Sardar Singh died in 1993. Form TM-24 was
filed for bringing on record their names as registered proprietors of the Trademark.
The application was pending. MOU was executed by them and petitioner, retired
partner was allowed to carry on business of Bawa Masala Co. Pvt. Ltd. but
territories were allotted to him. Respondents submitted an application before the
Registrar of Trademarks for registering the trademark in their name on the basis of
deed of dissolution. The Registrar of Trademarks without issuing notice to petitioner
passed an order in favour of respondents and removed the name of the petitioner
from the register of trademarks.
Judgement: Held. Petitioner name appeared in the register of the trademarks from
1982. His name was removed without giving notice. MOU was not placed before the
Registrar. Stay is granted in favour of the petitioner and direction is given to follow
the terms of MOU.
Implications: Rule of Audi-Altrum-Partem has been violated by the Registrar.
There is a violation of natural justice. Without hearing or without issuing notice to
the affected party, the registrar of trademarks should not pass an order.
6. Parties : Radhakishan Khandelwal – Appellant -Vs -Assistant
Registrar of trade marks & others – Respondents
Issue: The appellant claims to be a joint proprietor along with Shri Jai Madho
Avasthi and Shri Rama Shankar Avasthi, impleaded as respondents 3 and 4
respectively, of a registered trade mark “USHA” in respect of fountain pens”. The
trademark “USHA” was duly registered in the names of the appellant and
respondents 3 and 4 trading as “Asia pen Co”. Respondents 3 & 4 made two
applications on from T.M. 24 (for assignment) and T.M. 16 (for amendment &
correction) in order to correct the names of the registered proprietors by substituting
the names of respondent.The appellant contends that the removal of his name from
the certificate of registration is the result of a conspiracy and the impugned orders
have been made by respondents without any notice to him. Hence he prefers an
appeal before this High Court.
Judgement : FORM T.M. 24 relates to a request to register a subsequent proprietor
of a trademark as assignee upon the same devolution of title. Registrar at the time of
discharging his duties he performs “Quasi Judicial functions”.The registrar’s orders
in this case have got to be set aside on the ground that the appellant has not been
given opportunity to shown cause against the action. Appeals are allowed and the
orders removing the name of the appellant from the register of trademarks are set
aside.
Implication: Person adversely affected should have a notice of proceedings and
would be entitled to a copy of the order of the registrar. Notice is essential even if
the order is considered as to be administrative.
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7. Parties: Sun Pharmaceuticals Industries Ltd. – Plaintiff -Vs-
Cipla Limited Defendant
Issue: The Trademark “THEOBID” was assigned to the Plaintiff along with the
goodwill by deed of assignment Form TM 24 was submitted to register the name of
the Plaintiff as the subsequent proprietor of Trade Mark – “THEOBID” the
defendant – Cipla Ltd. used the Trademark “THEOBID - D, deceptively similar to
the Plaintiff. The Plaintiff Sun Pharmaceutical Industires Ltd. had instituted the suit
for Permanent injunction against defendant.
Judgement: Held, the Plaintiff, whose registration of assignment is pending before
the registrar (not registered) is entitled to exercise right as the Registered Proprietors
of Trade Mark THOEBID. Plaintiff entitled to interim order. The defendant co. was
restrained from manufacturing, selling or dealing in medical preparations under the
trademark “THEOBID”.
Implication: If title in registered trademark vests in assignee, after assignment
before registration, he is entitled to have the right of the registered proprietor.
8. Parties: Waman - Appellant/Defendant –Vs-Ramesh – Respondent /
Plaintiff
Issue: The Plaintiff had purchased the trademark “Hebare” from Dayalal & Co. and
accordingly, deed of assignment was executed and thus Ramesh became the owner
of the Trade Mark from the date of Assignment. The Plaintiff and the Defendant are
brothers. Both have surname “Hebare”. Waman, the appellant transferred the
property name, goodwill of the business to his brother Ramesh.The Plaintiff Ramesh
is the proprietor of the trade mark “HEBARE” for the last 20 years for sewing
machine.Waman – Appellant using the word Hebare in large font while other words
“Ajnit” and Ajinkya used in small letters.The Plaintiff sought temporary injunction
restraining Waman from using the trademark.
Judgement : The High Court of Bombay has come to conclusion that Ramesh, the
Assignee immediately on assignment i.e. by writing acquires title to the registered
Trademark, Waman could not be allowed to make use of the Trade Mark in order to
get themselves illegally enriched Appeal was dismissed.
Implication: u/s 45(1) Registration is “on proof of title”. The title exists in
assignee even before registration.
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9. Parties: Wipro Cyprus Private Ltd.-Plaintiff -Vs- Zeetel Electronics–
Defendant
Issue: Lornameded Group Ltd. got its trademark registered in India under the Trade
Marks Act 1999. The Plaintiff – Wipro Cyprus Private Limited purchased the
registered trademark “Yardley” from Lornameded Group Ltd., U.K. After getting
the assignment from the original owner of the Trademark YARDLEY the plaintiff
filed an application for getting the registration transferred in its name for the Talcum
powder. The defendant Zeetel Electronics is attempting to bring into India from
Singapore the products bearing the plaintiff’s trademark - `YARDLEY’, so as to sell
them in India and thereby, trying to infringe the right of the plaintiff. The plaintiff
prays for injunction.
Judgement: Once the assignee, Wipro Cyprus Private Ltd., has got the assignment
of the trademark from the original registered owner (Assignor) then he has got
exclusive right to use it in India. If the defendant, Zeetel Electronics, is permitted to
bring YARDLEY product by importing from Singapore in Violation for the purpose
of sales in India comes within the definition of infringement. The intention of law is
to see that such assignees are protected and if no injunction is granted then certainly
the plaintiff would be prejudiced. Injunction granted against defendant from
importing such goods into India from Singapore.
Implication: When the assignee is having valid assignment, he has got the right u/s
28 i.e., rights conferred by registration and u/s 29 protection against infringement.
10. Parties: Shaw Wallace & Co. Ltd. and another – Plaintiff –Vs-
Superior Industries Ltd. – Defendants.
Issue: The Plaintiff NO. 1 who is the proprietor of the various trade marks,
including subject Trade mark “HAYWARDS 5000 SUPER STRONG BEER” – has
assigned this trademark to the SKOL Brewaries Ltd. Bangalore by virtue of deed of
assignment dated 27.05.2005. The assignor – Shaw Wallace Co. and the assignee
Skol Brewaries Ltd. have filed TM-23 & TM-24 before the Registrar of Trade Mark
on 27.05.2005 itself in compliance with the provisions of Sec. 45 of the Trade
Marks Act. 1999.
No objections have been filed before the Registrar. The Registrar of trade
mark is yet to register the assignment in favour of Skol Brewaries Ltd.
Judgement: The assignee is impleaded as a party to the suit eventhough the
registrar is yet to register the assignment in favour of the assignee. The present
application is allowed. The Plaintiff No. 3 (assignee) is permitted to impleade as a
party to the suit.
Implication: Application for impleadment of the assignee, as plaintiff to the suit, is
accepted.
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11. Parties: Sigrune Marlene Chapman – vs - Mill Valley Cotton
Issue : An application to register the mark “MILL VALLEY COTTON” for
clothing namely pants, tops, dresses, skirts & jumpsuits was filed in the name of
Mill Valley Cotton, an entity described as a Joint Venture organized under the law
of California, Composed of Jeffery Vinokur and Sigrune M. Chapman. Registration
was opposed by Signune M. Chapman. Opposer Sigrune, M. Chapman and Jeffrey
Vinoker entered into an oral agreement for the manufacture and sale of garments.
The trademark Mill Valley Cotton belonged to the opposer. The mark sought to be
registered was not owned by the alleged Joint Venture and that Jefferey Vinokour
was not authorized to execute. The oral agreement between the opposer and Jeffrey
Vinokar was terminated by Jeffrey in November 1988 and has expressly abandoned
whatever rights he may have claimed in Mill Valley cotton and that the opposer is
the sole owner of “Mill Valley Cotton”.
Judgement : Jaffrey filed a copy of an assignment of the Mark Mill Valley cotton to
the opposer. The Board had not accepted and decided that the oppose is the owner of
the mark and the person entitled to register it. The Board ordered that the application
should be amended to show sigure M. Chapman as an applicant (and the owner of
the trade mark Mill Valley cotton) and the registration of the mark should be in the
name of Sigrune M. Chapman).
Implication: The person who abandoned the rights in the assignment cannot claim
rights over the trademark.
12. Parties: Performs Nautee Ltd. Incorporated–Petitioner–vs-American
International Industries – Respondents
Issue: Performs Nautee Ltd. Inc. filed a Petition to Cancel a registration, owned by
American International Industries, of the mark “NAUGHTY” for perfumes. As
grounds for cancellation, petitioner asserts that respondent has discontinued the use
of the registered mark with intent not to resume use, thus resulting in an
abandonment of the mark. Respondent had denied the allegations of the Petitioner.
This case now comes up on petitioner’s motion for summary judgement. Petitioner
asserts that the registered mark was abandoned by its previous owner Neslemur,
Nestle-Lemur company owner. Therefore the mark was not capable of assignment to
the present owner, respondent. Petitioner further asserts that, following this
assignment, respondent itself made no actual commercial use of the mark for 3
years.
Judgement: Respondent has objected to the entry of summary judgement. The
purpose of summary judgement is one of the judicial economy, that is, to save the
time and expense. The assignor/predecessor has abandoned the registered mark
“NAUGHTY” for perfumes. This abandonment resulted in a invalid assignment (i.e.
an assignment in gross). Abandoned trademark is not capable of assignment.
Petitioner’s motion for summary judgement is granted. The petition for cancellation
is granted.
Implication: Abandonment of a registered mark cannot be reversed by subsequent
re-adopting of a mark.
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13. Parties: B.S. Ramappa & Another – Petitioners –vs- B. Manoappa
and another – Respondents
Issue: B.S. Ramappa and his son applied for registration of the trade mark in 1961
in their favour.The elder son Monappa applied for the registration of trademark in
1963, he claimed registration of trademark in 1963, he claimed registration of
trademark as the owner of the trade mark by virtue of assignment on 17.01.1950. On
1965 the Assistant Registrar of trade mark passed an order registering a trade mark
in the name of B. Monappa.
Judgement: An appeal against this order of the Assistant Registrar was filed by
his brother B.S. Ramappa. Held, eventhough the father had expressly permitted
Monappa to use the trade mark it would not necessarily amount to assignment, the
person permitted to use would be user by the proprietor himself.Monappa was not
entitled to registration. The court directed the Registrar for the registration of altered
mark in favour of Monappa. Appeal was dismissed.
Implication: The permitted user is not entitled to register his name as owner of the
trademark. He is only the registered user not the registered proprietor.
14. Parties: Dulil Chand – Petitioner –vs- Registrar of trademarks and
Naushardar & Others – Respondents.
Issue: An application was made to the Registrar of trade marks by Shri Dwarka
Parshad Bindal & Others who were carrying on business under the name and style of
Naushardar Bar Assocation on 26.08.1956.The applicant registered a trademark
which consisted of a label containing the device of two half sun, the word sun and
letters B.C.I. in respect of ammonium chloride bars for use in Industry. The
appellant filed a notice of opposition to the registration of the said trade mark. The
joint Registrar of trademarks rejected the opposition filed on behalf of the appellant
and ordered for the registration of the mark. An appeal against the order of the Joint
Registrar of trade mark was filed by the appellant / petitioner. The respondents
argued that there was a valid assignment. In the partnership deed (dated 03.05.1961)
partners have decided by mutual consent to the assignment and transfer of trade
mark infavour of the partnership firm.
Judgement: The firm continued the business after the assignment. Besides several
documents filed as evidence, the two most important post cards which are placed on
record, written a number of years ago. These post cards refer to goods bearing the
Sun Brand, which bear the seal of the post office which cannot be fabricated.
Therefore the opposition of the appellant cannot succeed. The appeal is dismissed.
Implications: The respondent succeeded his case based on the strong evidence
produced in the appeal. No remedy for the false claim.
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15. Parties: M/s. Thermofriz Insulations - Petitioners-vs-Vijay Udayog-
Defendant
Issue: The Plaintiff M/s. Thermofriz Insulations Private Limited instituted a suit for
injunction rendition of accounts and damages etc., on the allegations that they were
registered proprietors of the trademark “THERMOFRIZ” in respect of non metallic
fiber boards for use as building materials for ceiling and paneling. The defendants –
Shri Mohan Rai trading as Vijay Udyog fraudulently and dishonestly adopted the
trade mark “THERMOFRIZ” in order to gain undue advantage of the reputation of
the plaintiff and started passing off his inferior goods as that of the plaintiff. During
the pendency of the suit, one Vinod Kumar Bhuwalka, sole proprietor of firm styled
M/s. Vijay Chemical moved an application for substitution in the place of the
original plaintiff , stating that by deed of assignment, the plaintiff assigned all
proprietory rights in the registered marks “THERMOFRIZ” to him. The defendants
have raised objections that the present plaintiff has no right to continue with this
suit.
Judgement: There is an assignment of registered trademark by the original plaintiff
infavour of the present plaintiff along with its goodwill and he can continue the suit.
Implication: Where during the pendency of a suit for infringement and passing off,
the plaintiff assigns the trademark to a third party, the assignee can continue the suit
so-far as the relief of injunction is concerned but not for rendition of accounts and
damages.
16. Parties: Sharda Machinery Corporation – Appellants - vs -
R.S. Sewing Machine Co., – Respondents.
Issue: The Trade Mark “EVEREST” was originally used in India by centre sewing
Machine manufacturing Company of Japan. It was exporting its sewing machine
under the trademark “EVEREST” since 1948. In 1955, the applicants were assigned
the said trademark along with the goodwill of the business. The deed of assignment
was executed and they had become the proprietors of the said trademark. This was
the contention of the appellants. The respondents had been dealing in the
manufacture of Sewing Machines under the trade mark “EVEREST”. The
respondents did not come to know of the Everest Sewing Machines being sold by
centre Sewing Machines manufacturing company of Tokyo, Japan (i.e. Japanese
firm). The respondents claimed proprietorship of this mark. Both the respondent and
the appellant filed the applications for the registration of the trademark
“EVEREST”. The assistant registrar of trademarks ordered the registration of
respondent’s trademark. The appellants preferred an appeal before the High Court
against the order of the Assistant Registrar of Trade mark.
Judgement: The respondents were widely advertising their Everest Sewing
Machines in various newspapers and Journals. No action was taken against them
either by the Japanese firm or by any of their agents in India. There was
misrepresentation that the trademark had been assigned with the goodwill in India.
The alleged letter of assignment is not a genuine one. Appeal is dismissed with cost.
Implication: The claimant has lost remedy due to misrepresentation, as the
assignment deed is not a bonafide transaction and is colourable.
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17. Parties: Raji Tirathdas Rupchand & Co – Appellant / Plaintiff -Vs –
Laxman Bhai Vansimal Rajali – Respondent / Defendant.
Issue: The defendant was the agent of the plaintiff in the bidi business. A
partnership agreement was entered between the plaintiff and the defendant.
Registered trade mark was dealt with by the defendant as owner through assignment
of trade mark. The suit was filed in connection with registered trade mark by the
Appellant / Plaintiff. Application for interim injunction to restrain respondent from
using the trade mark was filed by the Appellant. His contention was that there was
fraud and misrepresentation in the assignment of trade mark in favour of Respondent
/ Defendant.
Judgement: Documents of assignment was duly attested by Advocates and Notary
Public. So assignment was genuine. Stay order was not given for the Appellant /
Plaintiff. No interim injunction can be issued unless the plaintiff has a prima facie
case in his favour. The appeal is dismissed.
Implication: The genuineness of the assignment is the strong base for the success
of the case.
18. Parties: Tata Oil Mills Co., Ltd. – Plaintiff -Vs - M/s. Wipro Ltd.,
and another – Defendants.
Issue: The plaintiff was the registered proprietor of the trademark “Dubble” the
Defendants was the registered proprietor of the trademark “Bubbles”.In the year
1977, the plaintiff, Tata Oil Mills Co., Ltd. adopted a distinctive trade mark
“Dubble” for washing soaps. Defendant No. 1 M/s. Wipro Ltd., is engaged in the
manufacture and sale of toilet soaps and has adopted the trade mark “Bubble” .The
defendant’s predecessor M/s. Utility Home Product were using the trade mark
“Bubbles” since 1977. By an agreement dated 06.09.1985, this mark was assigned
by M/s. Utility Home Products to M/s. Wipro Ltd., Defendant No. 1.The Registrar
has accepted the assignment and has entered the name of M/s. Wipro Ltd, as
subsequent proprietor of the trade mark “Bubbles”.
Judgement: The plaintiff filed the present suit claiming injunction against
defendants and interim injunction was granted in favour of the plaintiff. The
defendant No. 1 came into existence only on 2.8.1977, which is subsequent to the
date of registration of plaintiffs trade mark “Dubble” i.e. 22.2.1977.Defendant No. 1
made a crude attempt to defeat the claim of the plaintiff by creating bogus
assignment. Even otherwise the mere pendency of the trade mark application confers
no legal rights in favour of the defendant No. 1.The Exparte Injunction order already
granted by this court is confirmed.
Implication: No legal remedy is available, if there is bogus assignment submitted
to defeat the claim of other person.
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19. Parties: Hardie Trading Limited, Melbourne, Australia and other
Appellants-Vs Addisons Paints and chemicals Ltd., Madras and
Another – Respondents
Issue: M/s. Hardie Trading Limited is a foreign company having its registered
office at Melbourne, Australia. Hardie is the registered owner of the trademark
SPARTAN and warrior device and SPARTAV VELOX. M/s. Addisons paints and
Chemicals Limited, Madras was the Selling agent of Hardie in India and the
registered user. The registration of Addison as registered user of the trade mark was
cancelled by Hardie. The Registration was allowed for Addison to adopt the device
of ancient warrior– “Super Fine Products” as trademark. Hardie had entered into a
trademark licence agreement with Hansa Paints and assigned Hansa the registered
trademarks, SPARTAN and SPARTAN VELOX. The joint Registrar of Trade
Marks removed the three marks of Hardie from the Registrar, pursuant to the
rectification proceedings initiated by Addison. Appeal was filed by the Hardie
against this removal of trade mark.
Judgement: Held the device of bust of warrior said to have been registered as a
trademark in Australia by Hardie had not been registered in India and he could not
have used the device of bust of warrior. Hansa cannot claim to be the assignee with
respect to the unregistered trademark of the assignor (Hardie) either on Law or on
facts.
Implication: The person who is having neither business nor goodwill cannot assign
the trademark.
20. Parties: M/s. Modi Threads Limited – Petitioner- Vs - M/s. Som &
Soot Gola Factory and another – Respondents.
Issue: The plaintiff’s predecessor M/s. Modi Thread Mills had been engaged in the
business of manufacturing exporting and selling cotton, synthetic threads and yarns.
In the year 1966, it adopted the trade mark “Cock Brand”. In 1983 the plaintiff took
over the business of M/s. Modi Thread Mills, predecessor. The defendants have
dishonestly adopted the impugned trademark similar to that of the plaintiff. The
plaintiff filed a suit against defendent for infringement of trade mark. The
defendants contested that the plaintiff is not the proprietor of the Registered Trade
Mark. He has no locus standi to file the present suit.
Judgement: The plaintiff has placed on record the copy of the assignment deed
showing that the proprietor of the M/s. Modi Thread Mills transferred all their rights
in the mill including the rights in the trade mark infavour of the plaintiff during
1984. The cause of action is the infringement of the trademark. Held, the plaintiff
has become owner of the registered trade mark, he is entitled to have temporary
injunction till the disposal of the suit.
Implication: The plaintiff, the legal representative of the deceased proprietor,
already inherits the legal title. So he has locus Standi to file the suit seeking
injunction.
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21. Parties: M. Ramaswami Chettiar – Appellant / Defendant - Vs -
T.M. Ramaswamy Chettiar & Co. - Respondent
Issue: T.M. Ramaswami Chettiar and Co. is a partnership firm carrying on business
in gingelly oil under the name “Shri Kannan Brand Pure Gingelly oil” from 1975
onwards. M. Ramaswami Chettiar is one of the partners of his firm, retired from the
parnership firm and severed all his connection from the firm. The firm was
reconstituted on 27.2.1979. The firm filed for the relief of permanent injunction,
restraining him from interfering with the user of the trade mark. After contest, the
suit was decreed. M. Ramaswami Chettiar has filed an application before the
Registrar of Trademarks in Form TM-24 to bring on record his name. Assignment of
trade mark is made in the name of defendant. The order has been passed without
giving an opportunity to the other persons.
Judgement: In the absence of any notice to other partners, the order of registrar of
trademarks is not valid. The defendant who claims registration as an assignee should
file an application before the expiry of 6 months from the date on which the
assignment is made and the Registrar has got a discretion for extending the period
by another 3 months and in all, the application should have been filed within 9
months. The application filed by appellant is beyond the period of 9 months.
Therefore, the application is barred by limitation. Appeal is without merits and liable
to be dismissed. Set aside the order of Joint Registrar of Trademarks.
Implications: Application by the assignee for the registration of assignment must be
filed within the stipulated period 9months.
22. Parties: Cluett Peabody & Co. Inc. – Plaintiffs / Appellants - Vs -
Arrow Apparels – Defendants / Respondents
Issue: Plaintiff No. 1 is a corporation organized under the laws of the State of
Deleware, USA carrying on an international business of goods and marketing
readymade garments. Plaintiff No. 2 is the licensed user of the trade mark.
Defendant No. 1 is a firm, carrying on a business of manufacturing and dealing in
readymade shirts. The Plaintiff’s trade mark is “ARROW.” These trademarks were
assigned to the second plaintiff. The Registrar brought the plaintiff’s name on record
as the proprietor of the Trade Mark: ARROW. The suit is filed by the Plaintiffs to
restrain infringement of registered trademark of plaintiff No. 1 “ARROW”. The suit
is filed by the plaintiff to restrain the defendant from using the “ARROW” as part of
the defendant’s trade name.
Judgement: Assignment of trade mark of plaintiff 1 infavour of plaintiff 2 was
effected. The goods were manufactured in India and exported to Canada, there were
import restrictions. They were not able to use the mark ARROW in India for 30
years. The prayer for injunction sought by the plaintiff is rejected.
Implication: The object of the Trade Marks Act is to protect the proprietary right of
registered trade mark holder. However, if the mark is registered and not used for 30
years, it becomes a source of monopoly which is not the object of the Act.
114
23. Parties: Hirubhai Bimabhai patel and others – Appellants - Vs -
V.H. Patel and Company and others – Respondents
Issue: The firm M/s. V.H. Patel and Co is a registered partnership firm. The
business of the firm is manufacturing and selling chewing tobacco. There were three
trademarks registered in the name of the partnership firm. A firm M/s. V.H. Patel &
Co. was constituted with Hirubai Patel and Co and his two sons as partners. Hirubai
was also a partner in V.H. Patel & Co. Hirubai was given right to use the trademarks
separately only in the territories. Hirubai executed document i.e deed of retirement.
Respondents filed a suit against Hirubai in order to restrain him from using the
Trade Marks. The respondents, by deed of assignment had assigned 3 registered
Trademarks with goodwill to defeat the interest of the petitioner (Hirubai).
Judgement: The litigation reached the Supreme Court by way of Special Leave
petition. The Supreme Court decided to refer the dispute to the arbitration of Sole
Arbitrator. Hirubai argued by counter claim for the dissolution of the partnership
firm. Arbitrator “refused to award for dissolution of firm for the reason that he
(Arbitrator) has no jurisdiction. It is clear that the Supreme Court has held that the
Arbitrator had to consider the counter claim.
Implications: According to the Supreme Court an Arbitrator has jurisdiction to
consider all questions before him in case of dispute. Driving a party to a separate
litigation for the relief would not be proper and valid.
24. Parties: Auto Pex Motor Co.–Plaintiff -Vs- Deepak Sethi and
another - Defendants
Issue: M/s. Auto Pex Sales India was the predecessor of the plaintiff. The plaintiff
– Auto Pex Sales Motor Co is a partnership firm consisting of two partners Ramesh
Chand Sethi and Kapil Sethi. It is engaged in the business of manufacturing and
marketing of gaskets with the trademark of “Master Label”. The plaintiff also started
using the trademark, Super Master and Gold Master.
The trademark was assigned to the plaintiff by deed of Assignment by
the predecessor. An application was filed for recording the said assignment of
trademark. Defendant No.1 Deepak Sethi engaged in the business of manufacturing
and marketing the gasket and has adopted the trademark “Super Master Label”. The
defendant argued that the said trademark was a family trademark, ancestral property.
Plaintiff claim is that the deed of assignment had been assigned and the partners of
M/s. Auto Pex Motor Co are having the right to use the trademark along with the
goodwill. The deed of assignment is signed by Sethi brothers to which defendant
No.1. Deepak Sethi witnessed the assignment deed.
Judgement: The trademark had been assigned to the plaintiff and it was witnessed
by defendant No. 1. The plaintiff has primafacie case. The plaintiff is prior user of
the trademark. The defendant, his representatives are restrained from manufacturing
and selling or advertising the gaskets bearing the trademark super market label.
Implication: A person, who is a witness to the valid deed of assignment, cannot
question the assignment in a court of law.
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25. Parties: Soundarapandian Match Works – Appellant- Vs-
M. Jayarama Chetty and Others - Respondents
Issue: The plaintiff is the appellant before the Madras High Court. The plaintiff
contended that they are manufactures of safety matches and seller for the past 23
years. One of the trademarks of the goods marketed by the plaintiff is the label
trademark “BULB” with the device of the bulb. The first defendant under the name
of “The Andhra Pradesh Co.The first and second defendant were not using the
registered “Bulb” for the past 20 years. Their trademark met its natural death as a
result of continuous non user. This argument was placed before the court. The third
defendant was carrying on business at Rajapalayam. Without the knowledge of the
plaintiff the 3rd
defendant had negotiated with the second defendant for the purchase
of abandoned and unused Trademark which stood registered in the name of the first
defendant.
Judgement: The allegation by the plaintiff that the first defendant had abandoned
the user of goods had not been disclosed before the court. The truth and validity of
the assignment deed appears to have been challenged before the trial court by the
plaintiff. Application for the Registration of the assignment was pending for disposal
of the Deputy Registrar of Trade Marks, Mumbai. It is held that the third defendant
is not entitled to use the impugned packing without proper approval of the alteration
by the Registrar. The plaintiff is entitled to the consequential reliefs. The appeal is
allowed.
Implications: As long as the registration of assignment had not been completed, the
assignee cannot claim to have stepped into the shoes of the assignor/ registered
proprietor.
26. Parties: Harmohan Singh–Plaintiff - Vs - Gurbax Singh – Defendant
Issue: The plaintiff and the defendant are brothers carrying on business of
manufacturing of motor parts, engine parts for use in automobiles in partnership
under the name of Guaranteed parts manufacturing company. During the course of
the business, the trademark GP was adopted in respect of pipes, its application for
registration is pending. By mutual consent the partnership was dissolved by virtue of
Deed of Dissolution. The defendant retired from partnership. The defendant
thereafter started using the trademark GPI in relation to pipes. The trademark GPI is
deceptively similar to the trademark G.P. Hence, the defendant is guilty of
infringement of copy right and also passing off their goods.
Judgement: The Court granted an exparte and interim injunction order, restraining
the defendant from using the trademark GPI. Held. As per the Dissolution deed, the
defendant had surrendered all his rights infavour of the plaintiffs. The defendant was
restrained from using the same trademark. Interim order is made absolute till the
disposal of the suit.
Implications: Once the dissolution deed lays down the rights and obligation of the
erstwhile partner, there is no necessity to execute a separate assignment deed. In
fact, the dissolution deed itself would become an assignment under the law.
116
27. Parties: Agromore (P) Ltd. & Another Plaintiff - Vs - Chembond
Chemicals Ltd & Another – Defendants
Issue: The plaintiff has filed a suit claiming that it is a company carrying on
business of the manufacture and sale of Industrial and Agrochemical products and in
export market for 4 decades. “RODINE”, the trademark for the Industrial chemical
products is used in the form of Acid inhibitor for Industrial cleaning. The plaintiff
made an application for registration of the trademark RODINE in their name.
Defendant No. 1 was selling an identical product as that of the plaintiff product
RODINE under the trademark “RODINE-58”. The plaintiff filed a suit for infringing
the trade mark of the plaintiff.
Judgement: Amchem Products Incorporated Company has assigned its trade mark
to the plaintiff with a right to obtain reassignment on 15.05.1963. The plaintiff had
reassigned the trade mark to the Amchem Corporation on 16.08.1973. On the same
date i.e. 16.08.1973 by an agreement, the said company granted the plaintiff
permissive right to use the trade mark RODINE. The plaintiff has not been able to
establish the case of abandonment of the trade mark by the Amchem Corporation or
its successors. Plaintiff is not entitled to temporary injunction.
Implications: The plaintiff is not entitled to temporary injunction in the capacity as
a registered user, after reassignment to the assignor.
28. Parties: Three N. Products (P) Ltd., - Petitioner-Vs - Jocil Ltd., and
another – Respondents
Issue: The applicant is the registered proprietor of the trademark “Ayur in respect
of cosmetics. The applicant filed a petition seeking for cancellation of the
Registration of the trademark “Ayush” and seeking for an interim injunction
restraining the 3rd
respondent – registrar from registering the 2nd
respondent, Jocil
Ltd., as Subsequent proprietor of the Trademark “Ayush”. The 1st respondent is the
original owner of the trademark “Ayush”. The 2nd
respondent is the assignee of the
trademark “Ayush” and a valid assignment was made in its favour . By reason of the
non-renewal and non payment of the renewal fee, on the date of the deed of
assignment of the “Ayush” trademark, there was no property in the hands of the
assignor to assign infavour of the second respondent.
Judgement: Registrar without application of mind has allowed the registration of
the trademark infavour of the second respondent. When the renewal of a trademark
becomes due, even a registered owner of the said trade mark, who has not renewed
the same as required by law, cannot make any claim Interim injunction is granted
against respondents. Application by the petitioner is allowed.
Implications: On the date of execution of assignment deed, there was no property in
the hands of assignor to assign infavour of the assignee. At this stage, even a
registered owner cannot make any claim over his registered trademark.
117
29. Parties: Casio India Co Limited. – Plaintiff - Vs - Ashita Telesystem
Pvt. Limited – Defendants
Issue: Plaintiff is Casio India Ltd, Defendant No. 1 is M/s. Ashita Telesystem Pvt.
Ltd., Mumbai Defendant No. 2 is the Registrar. Plaintiff is aggrieved by the
Registration of domain name www.casioindia.com by the defendant No. 1 .Plaintiff
claims to be a 100% subsidiary of Casio computer Ltd., Japan (Casio Japan) which
is registered owner of the trademark “Casio” in India used for a large number of
electronic products, watches and calculators. Plaintiff was the sole selling agent of
Casio Japan in India. Plaintiff claims to have been given exclusive right to use the
trademark in India and has filed a suit claiming that the impugned registration of
domain name by defendant No. 1. The defendant has no authorization or right to use
the name “CASIO” in its domain name. The defendant opposes the injunctions
claimed by the plaintiff.
Judgement: Held. The distribution agreement between the defendant and the
plaintiff has expired and has not been renewed. The Plaintiff has made out prima
facie case for the grant of an injunction. There was an agreement between Casio
Japan and the plaintiff. It records that the plaintiff is authorized to use the brand
name “CASIO” in India. The agreement was inforce at the time of institution of the
suit and it has been extended. No specific assignment of Trademark or authority is
required for instituting the suit. Therefore, the plaintiff has locus standi to institute
the suit and the objection of the defendant is without merit.
Implication: When the agreement is in force, the authorised user has inherent right
to file a suit. No specific assignment of trademark is required for that purpose.
30. Parties: Vinod Kumar Jain – Plaintiff - Vs - Blumac Electricals India
- Defendant
Issue: Classic Equipments Pvt. ltd. had become the proprietor of the trademark
“Johnson” on its acquisition of M/s. Johnson Sales (India) by an agreement during
1992. A registered user Agreement (License) between classic equipments Pvt. Ltd.
and the defendant, Blumac Electricals India was entered for a period of 51 years
subject to the payment of royalty by the defendant. He already used the mark for 20
years. The deed of Assignment of the trademark is executed between Classic
Equipments and the plaintiff, Vinod Kumar Jain as a consequence of a family
settlement. In the meantime Classic Equipments revoked the assignment made in
favour of the plaintiff, Vinod Kumar Jain. The plaintiff has filed a case and prayed
for an interim injunction restraining the defendant from using the trademark
“Johnson”. The defendant opposed the registration of the trademark.
Judgement: The plaintiff has failed to disclose the existence of a primafacie case in
his favour. The Plaintiff application is dismissed and the defendants application for
vacating the stay is allowed.
Implication: Law provides legal sanction to the trade mark by its registration and
not necessary to the holder of the trademark
118
31. Parties: M/s. Wonderfield electrodes Pvt. Ltd., Gujarat – Appellant /
Defendant - Vs - Ahura welding electrodes manufacturing Limited
Coimbatore – Respondent / Plaintiff.
Issue: The Respondents / Plaintiff – Ahura welding Electrodes Manufacturing Ltd.,
is a public Limited Company, engaged in the manufacturing and supply of welding
electrodes. The first defendant engaged in the production and supply of electrode
and is the registered owner of the trademark SUN-ARC. It was a partnership firm till
1988 and became a private company. The trade name SUN–ARC is the property of
the first defendant and the plaintiff acquired the right to sell from the defendant for
10years. The Plaintiff has got the right to use the trade name and emblem. The
Plaintiff came to know that the first defendant has assigned the trade name SUN-
ARC to the second defendant. The defendants 1 and 2 have suppressed the material
facts before the Registration authorities and obtained an illegal registration and filed
a suit for injunction.
Judgement: The first defendant is the proprietor of the trade mark SUN-ARC.
The plaintiff is a licensee to use the trademark SUN-ARC. The plaintiff has failed to
make out a prime facie case. After assignment of trademark in favour of defendant
the licensee cannot seek an order to restrain the statutory rights vested in the
registered proprietor of the trademark and the licensee cannot prevent the use of the
mark by any other licensee.
Implication: One cannot question the statutory right vested in assignor to assign
the mark in favour of the assignee or any one.
32. Parties: New Nandi Seeds Corporation – Application - Vs -
M.V. Subbiah & Others – Respondents
Issue: The Applicant – New Nandi seeds Corporation is engaged in the business of
Production and marketing of seeds i.e.,Hybrid Bajra, Hybrid Cotton
Seeds,etc.“Nandi” was registered by the predecessor and the trade mark was
assigned to the applicant “New Nandi Seeds Corporation”. The assignment was
approved by the Registrar of Trademarks and the applicant is the registered
proprietor of the said trademark “Nandi”. The first respondent was trading under the
name of M/s. Nandi seeds and claiming to be the prior user and the registered
proprietor of trademark “Nandi”.
Judgement: The applicant filed a suit in the District court against respondent for
infringement of applicant’s trademark and obtained interim exparte injunction. The
respondent preferred an appeal before the High Court. The High Court confirmed
the order of injunction granted in favour of the applicant. There is no material placed
before the Registrar of Trade Mark or before IPAB. Registration of impugned
Trademark in the respondents names to be removed from the Register. Application
for rectification allowed.
Implication: The person who is claiming as the prior user must prove with
bonafide evidence.
119
33. Parties: Cott Beverage Inc., A Georgia Corporation – Petitioner-Vs -
Silvassa Bottling Company – Respondents
Issue: The appellants are the successors of Royal Crown Company Inc., a company
incorporated in U.S.A. The Royal Crown Company applied for registration of the
trademark containing the letters “RC” in respect of non-alcoholic, beverages and
syrups. The Royal crown company by deed of assignment assigned trademark in
favour of the appellant. In the year 1995, Royal Crown Company made an
application for registration “RC Cola”. The respondents also have made an
application for registration of “RC Cola” Mark. Both these applications for
Registration of “RC Cola” are thus pending registration. The assignee (Appellant)
fails to apply to the Registrar for Direction with respect to advertisement of
assignment within the period (nine months) as prescribed by the Registrar.
Mandatory condition U/s 41 not complied with Assignment had not taken effect.
The District Court has vacated the order of exparte injunction given earlier. The
appellants have preferred an appeal against this order.
Judgement: The appellants have been assigned the trade mark but failed to take
steps for advertisement within a period of 9 months. The case of respondents is that
of prior use. The Plaintiff – appellants have started marketing its goods in Andhra
Pradesh and Bangalore. Both the parties have invested huge amount. The trial court
is directed to decide the suit as expeditiously as possible to decide the matter.
Implication: Mandatory condition i.e., advertisement of assignment within the
period of 9months in the case of assignment without goodwill not complied with.
Assignment had not taken effect.
34. Parties: Gopal Dass Arora-Applicant - Vs – Takkar (India) Tea Co.
Kaithal Opponent
Issue: Shri Gopal Dass Arora – Applicants trading as M/s. Gopal Dass & Sons filed
an application for registration of a Trade Mark “Gopal” in respect of Tea. The
trademark was in use since 1981, adopted from the personal name of the proprietor.
The application was examined and was allowed to be advertised in the Trade Mark
journal. M/s. Takkar (India) Tea Company gave a notice of their intention to oppose
the registration of the Trademarks advertised. It was argued that the opponents
become the proprietors of the Trademarks “Gopal” in relation to tea by virtue of use
by their predecessors since 1992 and assignment was executed in favour of the
opponents.
Judgement: There was prior use of the impugned trademark “Gopal” by the
applicants since 1981 and have established the user of the trademark with substantial
documentary evidence. The opponents neither proved any use of the Mark prior to
the applicants nor proved any assignment as alleged to have been executed. The
applicants are very much entitled for registration of the impugned trade mark. In the
result, the mark applied for should proceed to registration and the notice of
opposition deserves to be dismissed.
Implication: The person, who has neither proved any prior use of the mark nor any
assignment executed in his favour, is not entitled to object registration.
120
35. Parties: Heinz Italia can another – Appellants -Vs- Dabur India Ltd.
– Respondent
Issue: The plaintiffs – appellants M/s. Heinz Italia SRL is the proprietor of the trade
mark “Glucon – D” which has been registered in India. This trade mark had earlier
been registered in the name of Glaxo on 21.5.1975 and subsequently assigned to the
Appellant during 1994. The respondent Dabur India had launched a similar product
under the name “Glucose – D” by using packaging which was deceptively similar to
the packaging used for “Glucon-D”. The appellant filed a suit for permanent
injunction for infringement of the trademark. The trial judge, in his order heid that
the word “Glucose was a generic word and no similarities between these two
trademarks. The application was dismissed.This matter has come to the Supreme
Court.
Judgement: The word “Glucon-D” and its packaging has been used by Glaxo since
1940 and the appellant acquired proprietary right by virtue of assignment whereas
the word “Glucose-D” had been used for the first time in the year 1989. Appellants
are the prior user of the trademark Glucon-D”. There is a primafacie case. It has to
be shown that there was dishonest intention on the part of the Defendant in passing
off goods. The Supreme Court set aside the order of the Trial Court and the order of
the High Court. Ad interim injunction order is given in favour of the appellant and
against the respondent.
Implication: Prior user of the product with valid assignment can secure injunction
in his favour.
36. Parties: M/s. Ajanta India Ltd. – Petitioner / Plaintiff-Vs-Ajanta Ltd.
and others – Respondents / Defendants
Issue: In 1971, Mr. Odhavji Bhai R. Patel established a partnership firm “Ajanta
Transistor clock manufacturing company. The firm adopted the Mark AJANTA,
which was the origin of the products like wall clocks time pieces and wrist watches.
A “Deed of Assignment was executed between “Ajanta Transister Clock
manufacturing company as the assignor and Ajanta India Ltd. as the assignee. The
Mark Ajanta was assigned by the registered proprietor to Ajanta India Ltd. along
with the good will. Ajanta India Ltd. has objected and restrains the Respondents,
Ajanta.Ltd from using the Word “Ajanta” as part of their corporate name. The
defendants should not describe themselves as Ajanta Group. They are at liberty to
call themselves, `OREVA/ORPAT Group.
Judgement: The Packaging of the defendants and the name of the manufacturing
company with the word “Ajanta” would have defeated the very purpose of exclusive
assignment of the mark Ajanta in favour of the Petitioner / Plaintiff for products
other than wall clocks and time pieces. General Public may not understand the
difference in two groups. By taking into this fact an interim order is being passed in
favour of Ajanta India Ltd.
Implications: Irreparable injury may be caused to the affected party in case if there
is confusion in the minds of the general public about the source of the goods
manufactured by the defendants.
121
37. Parties: Jain Inder Jain and others – Applicant -Vs - Arihant Jain
& Others – Respondents
Issue: Late Janki Das Jain, who was doing business in the name of M/s. Kangaro
Industries at its sole proprietor, adopted and started using the trade mark “Kangaro”
for stationery products. Late Janki Das Jain was the father of Arihant Jain
(Respondent) Jain Inder Jain (Appellant). Appellant and Respondents are partners in
Joint Family business. Appellants claim to have been assigned trademark Kangaro
with regards to stationery products vide a Family Settlement Agreement. Civil suits
were filed by both parties for the use of trade mark “Kangaro”. Respondents
challenged the validity of assignment of impugned trademark in favour of
Appellants on the ground that the trademark was assigned to them by only two of
the four partners without the consent of the other two partners who were their wives.
Single judge granted injunction to the Respondents restraining Appellants from
using the trade mark “Kangaro” during the pendency of suits.
Judgement: The Appellants have challenged the order passed by the single judge.
1. There is no restriction on the right of a partner to permit concurrent users of the
property of the firm by another person even if a partner in a firm assigns a property
of the firm without consent of the other partners.
2. Assignment of trademarks vide family arrangement would not require compulsory
registration. The order of the single judge is set aside and “status quo” ordered.
Implication: In order to avoid the confusion in the minds of customer, the court
directed to display the name of the manufacturer on the box.
38. Parties: Koxan India – Appellant / Petitioner-Vs - Ramesh Mardia
and others. – Respondents / Defendants
Issue: The trademark “MARDIA CABLES” has been assigned infavour of Kamlesh
Jain, Partner of Koxan India Firm and this assignment was registered. Trademark
“MARDIA CABLES” is in relation to electrical cables, wires. The defendant
RameshMardia alleged that there was a re-assignment by the plaintiff, and the trade
mark reverted back to the defendant. The defendant sought an ad interim injunction
restraining Plaintiff from using the trademark “MARDIA CABLES”.
Judgement: Judge finds that neither party has been able to set up clear prima facie
case in its favour. To decide as to whether the registration stands in favour of the
plaintiff even after reassignment deed of May 2005, would require the support of
evidence. In this case neither party is entitled to an ad interim injunction
consequently both the applications are dismissed.
Implications: Ad interim injunction cannot be granted if the party seeking
injunction is not able to set up a primafacie case in his favour in the matter related to
assignment and reassignment.
122
39. Parties: Thukral Mechanical Works - Appellant - vs - P.M. Diesel
Private Limited and another – Respondents
Issue: M/s. Jain Industries got the trademark “Field Marshal” registered for flour
mills’; coupling for machines, pulleys and the registration was renewed from 1972
to 1993. The first respondent is the registered proprietor of a trademark “Field
Marshal” for diesel engines since 1964. Respondent 1 filed a suit in the High Court
for permanent injunction alleging infringement of his trademark. A temporary
exparte injunction is issued against M/s. Jain Industries. By deed of assignment,
M/s. Jain Industries assigned the trademark along with its goodwill in favour of the
appellant and filed an application in TM-24 and registered his name as subsequent
proprietor.
Judgement: 1.In a suit for injunction a single judge of a High Court vacated the
interim order of injunction and permitted the appellant to use their registered
trademark. 2. The respondent filed the second rectification application. It was
transferred to the Intellectual Property Appellate Board and dismissed the
rectification application as not maintainable. This case was finally brought to the
Supreme Court. The Supreme Court set aside the order of the High Court. The
Board shall proceed to determine a fresh application filed by the first respondent in
the light of the legal principles, the Appeal is allowed with costs.
Implication: An assignor can transfer only right which he possesses. The right of a
registered trade mark is not lost automatically on the expiry of 5 years and one
month.
40. Parties: Hindustan Lever Ltd. – Plaintiff / Appellants-Vs - Bombay
Soda Factory by K.K. & Others – Defendants / Respondents
Issue: Lever Brothers (India) Pvt. ltd., has been a leading soap manufacturing
company in India. The said company had registered its distinctive label of the
"Sunlight Soap" under the Trademarks Act 1940 for its product “Sunlight Soap”.
Lever Brothers (India) Private Limited was converted into a public company, the
company changed its name to Hindustan Lever Limited. A suit was filed by
Hindustan Lever Ltd. against the defendants for Injunctions restraining them from
infringing the trademark. Lever Brothers (India) Ltd. applied to the Registrar of
trademarks, Bombay to enter the change in the name of the registered proprietor of
the trade mark. The change in the name was effected during the pendency of the
suit.
Judgement: The appellant, Hindustan Lever Ltd. prefers an appeal
before the High court against the order of District court i.e., the appellant was not
entitled to the trademark on the date of suit. Held The trial court came to the
conclusion the Hindustan Lever Ltd. is a different legal entity from Lever Brother
(India) Private Ltd. The court below has taken an erroneous view of the Law. The
High Court allowed the appeal. Set aside the order of the Lower court.
Implications: The conversion of a private company into a public company does not
affect the legal personality. This does not affect maintainability of the suit.
123
41. Parties: R.G. Oswal Hosiery Industries – Petitioner- Vs -
Union of India & Others. – Respondents
Issue: M/s. R.G. Oswal Hosiery Industries is a partnership firm, conducting
business, manufacturing and marketing of socks, hosiery articles. The petitioner
claims that it is the proprietor of the trade mark “Dollor” adopted from 1966.The
Petitioner has been keeping the registration renewed from time to time either by
itself or through it licensee M/s. Kedia Knitwear, Delhi (a licence user). After 1996,
the renewal applications were filed by M/s. Kedia Knitwear, for renewal of the
registration upto 2010.M/s. Kedia Knit Wear was claiming itself to be the proprietor
of mark in the public notices, there was conflicting proprietary claims in respect of
M/s. Kedia Knit Wear.
Judgement: The Intellectual property Appellate Board (IPAB) passed an order
allowing the rectification application filed by the Respondent No. 2 in respect of the
registration granted to the Petitioner for trademark DOLLAR. According to the High
Court, the subsequent renewals made on the basis of applications filed by the
Petitioner itself, cannot cure the illegality of the earlier renewals. The Court finds no
reason to interfere with the order of IPAB. The Writ Petition held by the Petitioner
was dismissed.
Implication: An application for renewal of a registered trademark could only be
made by the registered proprietor of the trade mark and not by the licensee of the
registered proprietor. Licensee of a registered proprietor is not permitted to apply for
renewal. Licensee is not an agent.
42. Parties: SKOL Breweries Ltd. – Petitioner - Vs - Som Distilleries and
Breweries Ltd. & another – Respondents
Issue: The Plaintiff is the owner of the trade mark, “HAYWARDAS 5000” having
acquired the same by a deed of Assignment from Defendant
No. 2 Shaw Wallace & Co. Ltd. Defendant No. 2 is therefore only a formal party to
the suit. By a deed of assignment Defendant No. 2 assigned to the Plaintiff several
registered trademarks including the trademark “HAYWARDS 5000”. The second
defendant and the plaintiff made a request in Form TM24 to the Registrar of Trade
Marks to enter the name of the Plaintiff as the subsequent proprietor of the said
trademarks. The suit was filed. In 2007, on the date of the suit the registration of
assignment is pending before the Registrar. The Registrar granted the registration of
the said mark in favour of the plaintiff in 2008.
Judgement: The Registration granted by the Registrar U/s 45 of the Trade Marks
Act 1999 is proof of title to the trade mark of the assignee. Suit was filed against the
respondents for the cause of action for passing off and infringement of a Plaintiff’s
trade mark “HAYWARDS 5000”. Prayer made absolute.
Implication: An assignee is entitled to file an action for infringement during the
pendency of the application before the Registrar to register him as the subsequent
proprietor.
124
43. Parties: Hindustan Unilever Limited (HUL) - Petitioner - Vs -
Three N Products (P) Ltd. – Respondent
Issue: Hindustan Unilever Limited (HUL) Launched its line of Ayurvedic health
and beauty care products under the trademark “Lever Ayush” in 2002. The Registrar
had granted registration of the Mark “Ayur” for products of Three-N-Products (P)
Ltd. HUL sought rectification of the mark “Ayur” contending that it is a commonly
used word and a derivative of the word Ayurveda, a 5000 year old system of
medicine. Three-N-Products had filed a suit in 2003 in the district court of
Ernakulam wherein it was contended that “Lever Ayush” of HUL was deceptively
similar to its own products. Following this, HUL approached the IPAB with
applications to remove “Ayur” from the trademark registry.
Judgement: IPAB had allowed the applications filed by HUL, rejected the
contention of Three-N-Products that “Ayur” is an invented word and pointed out
that the word was associated in the public consciousness with “Ayurveda” and
healthy life and no one could appropriate it to oneself.
Implication: In the public interest, the word “Ayur” shall not remain in register.
Registrar should not have allowed the registration. Public interest would be harmed
if this mark remains in the register thereby preventing other persons in our country
access to a common Indian word denoting an ancient system of medicine.
44. Parties: Shree Ganesha Enterprises – Plaintiff -Vs-Sandeep Gullah –
Defendant
Issue: Shree Ganesha Enterprises, the plaintiff firm is engaged in a business of
catering and banquets hall (referred as business and services). A partnership deed
was constituted between Shri Shyam Sundar Suri, the Managing Partner of the
Plaintiff firm and Shri Sandeep Gullah, the defendant. After the retirement of the
defendant, the plaintiff firm was reconstituted and the trademark “CITY
BANQUET” was adopted. The defendant upon his retirement assigned all his rights
in goodwill and other assets of the business in favour of the reconstituted firm by
way of the Reconstitution deed. After retirement, the defendant has started the same
business and services and has adopted an identical deceptively similar trademark
“CITY BANQUETS’. The contention of the plaintiff is that the defendant has no
right to use the impugned trademark after assigning the same in favour of the
reconstituted firm.
Judgement: The defendant was directed to produce the originals by order dated
11.1.2011. The originals were not produced by the defendant. There are sufficient
documents produced on record by the plaintiff pertaining to the admitted case.
Held. It is clear that the plaintiff has been able to make out a strong case for grant
of interim injunction.
Implication: The person has no right to use the trademark, after assigning the same
infavour of the reconstituted firm
125
45. Parties: M/s. Kisan Industries - Appellant-Vs - M/s. Punjab Food
Corporation another - Respondents
Issue: The trademarks “KISAN” and “SOHNA” were being used by Sant Ram,
proprietor of M/s. Sant Ram & Sons since 1976. Sant Ram assigned the trade marks
along with the goodwill of the business to Vivender Kumar. Vivender Kumar and
others entered into Partnership to carry on business of manufacture and re-sale of
cattle poultry feed under the name of KISAN INDUSTRIES. M/s. Punjab Food
Corporation, a partnership firm instituted a suit for passing off cattle poultry feed
under the trade name “KISAN” and “SOHNA”. It was alleged that they had been
carrying on business since 1977 and using trademarks “KISAN” and “SOHNA”
since 1978. They had filed an application for registration of their trademarks. The
respondent filed a case for infringement of trademarks and copy right of “KISAN”
and “SOHNA”.
Judgement: In the trial court the Additional District Judge ordered, restraining M/s.
Kisan Industries from selling the product under the trademarks “KISAN” and
“SOHNA” which were deceptively similar that of respondent and amounting to
infringement. An appeal was filed before the single judge of High Court by the
appellant. The respondent argued that the document of the appellant’s assignment
was not property stamped. This objection has no force. The single Judge of Delhi
High Court is of the opinion that the appellants are prior user of the trade mark. The
appeal of Kisan Industries is allowed. The order of Trial Court is set aside.
Implications: An instrument which is not properly stamped is admissible in
evidence on payment of the necessary stamp duty and penalty.
46. Parties: Cruickshank & Co. Ltd. – Plaintiff / Appellants –Vs-
BDA Breweries & Distilleries Ltd. – Defendants / Respondents
Issue: The business of manufacturing and sale of Indian made foreign liquor
products namely “Officer’s choice “1000 guineas” and Calypso Rum together with
goodwill of the business were assigned by C&C in favour of BDA and claims the
right to use the said trademarks and to get them registered in its favour. By
executing the deed of Assignment in 1991, C & C assigned in favour of BDA all the
proprietary rights along with goodwill. In 1993 C&C filed a suit against BDA for
declaration that C&C is the rightful owner of the said three trademarks. C&C sought
for an injunction as well as decree for specific performance against BDA for
directing BDA to reassign the three trademarks in favour of C&C. According to
BDA the deed of assignment is valid.
Judgement: The genuineness of deed of assignment and reassignment are disputed.
The document admitted by both parties are not favouring grant of injunction. This
facts should be decided by the trial court, injunction is refused by this Division
Bench and both the appeals are dismissed.
Implication: When there is a dispute in the genuineness of the document related to
assignment and reassignment, that should be decided by the trial court only.
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47. Parties: Dhariwal Industries Limited and Another – Petitioner /
Defendant - Vs – M/s. M.S.S. Food Products – Respondents /
Plaintiff
Issue: The respondent – M/s. M.S.S. Food Products and its predecessors were using
the trademark "Malik chand" in its packets containing Pan Masala, Gurkha, Supari
Mix. The defendants - Dhariwal Industries Ltd., are marketing the same products
under the name "Malikchand". The products are marketed in pouches that are
deceptively similar to the ones used by the respondent. The respondent, being the
prior user of the mark "Malikchand is entitled to prevent the defendant from
marketing their products under the name "Malikchand". The defendant challenged
the claim of respondent as prior user and filed a suit against him.
Judgement: The trial court held that the plaintiff / respondent has established prior
user of the mark "Malikchand” and the assignment relied on from its predecessors
by the respondent were genuine. The defendants filed an appeal before the High
Court. The Highcourt dismissed the appeal and uphold the view of the trial court.
The defendants have challenged this order before the Supreme Court. The apex
court held the fact that neither party has a registered trademark on the date of suit.
The court has granted the plaintiff an injunction.
Implication: The genuineness of the unregistered trademark is proved on the basis
of the prior user of the mark.
48. Parties: Lekha Ram Sharma – Petitioner - Vs - Balar Marketing Pvt.
Ltd. & Others – Respondents
Issue: The trade mark KUNDAN / KUNDAN CAB is registered in the name of
the respondent No.1 is in respect of electrical accessories. The petitioner claims that
it has also been using the trademark KUNDAN/KUNDAN CAB/KUNDAN
CABLES INDIA in respect of these goods since 1980. Petitioner filed a petition for
rectification in Delhi and prayer is made to cancel the trade mark of the respondent
from the Register of trademarks. The applications for registration and for assigning
the trademark in favour of respondent no 1 were filed in Chennai. The certificate of
registration was granted on 1994 to the respondent No.1 in Chennai. The question of
territorial jurisdiction arises.
Judgement: Assignment was allowed and registration certificate was issued at
Chennai Registry. Only the Madras High Court has jurisdiction to entertain
rectification petition. Petition in Delhi High Court is not maintainable. The
registered proprietor gets confined to one jurisdiction wherein the validity / removal
of his mark can be determined. Application filed by the Petitioner for rectification is
not maintainable in Delhi High Court and ought to have been instituted in the High
Court of Madras.
Implication: The purpose of confining the trade mark registration to one
jurisdiction / office for the purpose of its rectification is to facilitate rectification
proceedings, so that an aggrieved party does not have to run around the various
courts to know where the assignment is effected in the jurisdiction.
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49. Parties: Bloomfield Co. Ltd.–Plaintiff -Vs -Bagaria Business (P) Ltd.
– Defendants
Issue: The plaintiff became the owner of a "Bloomfield Tea Estate" and this
company was incorporated by him. The name of Tea Estate was changed to Orange
Valley Tea Estate in 1984. The plaintiff used the trade name "Bloomfield". In
1990, the plaintiff sold the Orange valley Tea Estate to one Longview Tea Co. Ltd.
and the defendant - Bagaria Business (P) Ltd. purchased the said Orange Valley Tea
Estate from Longview Tea Company Ltd. The plaintiff came to known that the
defendant had started selling in the name of "Bloomfield" in addition to the name
Orange Valley Tea Estate. The objection was raised by the plaintiff
Judgement: The plaintiff has transferred his interest in respect of the tea estate
situate at a place in the name of Bloomfield as a going concern and such state has
ultimately been acquired by the defendant as a going concern. If a particular-
property is transferred as a "going concern" the now settled position of law is that it
passes its title along with its goodwill. The plaintiff has filed an application for
injunction against defendant. The plaintiff is not entitled to get any order of
injunction against the defendant from using the mark "Bloomfield" till the disposal
of the suit. The application is dismissed.
Implication: If a particular property is transferred as a “going concern”, the settled
position of law is that it passes its title along with its goodwill.
50. Parties: Cycle Corporation of India Ltd. – Appellant -Vs -
T.I. Raleigh Industries Pvt. Ltd. and Others – Respondents
Issue: The Respondents – T.I. Raleigh Industries Pvt. Ltd. had registered trade mark
“Raleigh”. The respondent entered into an agreement with Sudhikumar Sen on 1948
to render technical knowhow to the Indian Company. A company called "Sen
Raleigh Ltd." came into existence which manufactured cycle with technical
Assistance of the Respondents. Sen Raleigh was recorded as permitted user of trade
mark. The Government - Appellant took over the Sen Raleigh Ltd. on 1975 under
the IDR Act, and took over the Management. In 1980, Sen Raleigh was nationalized
under Industrial (Development and Regulation) Act.
Judgement: Removal of the trade mark of the respondent from the register was the
demand of the appellant. Unregistered user coming to succeed registered user of
Trade Mark by operation of law i.e. nationalization of Industry.
The High Court refused to exercise the discretion to strike off the trade mark from
the register. It is seen that the registered user had not abandoned, at any point of
time. The Supreme Court accepted the view of the High Court and refused to rectify
and strike off the trade mark from the register of the trade mark. The appeal is
dismissed.
Implication: Unregistered user (government) is trying to succeed registered user of
the Trademark by nationalization of Industry. Removal of the trademark of
Registered user from the register of the trademark is not permitted.
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51. Parties: Ratansi Mulji – Petitioner - Vs - Vinod Ratilol Gandhi and
another – Respondents
Issue: In the year 1983, the government of India enacted the "Textile undertakings
(taking over of management) Act 1983 and took over management of Finlay Mills
Ltd. Finlay Mills Ltd. even after takeover, continue to function as a limited company.
It is only the management of the undertaking that has been taken over by the
National Textile Corporation which has been designated as "the custodian" under the
takeover Act. The, Finlay Mills Ltd. who are the registered owners filed a case
against the National Textile Corporation for unauthorized user of the trade marks
and filed a suit in the Bombay High Court on 1984, for the purpose of obtaining an
injunction restraining the National Textile Corporation from the trade mark of this
company.
Judgement: The single Judge dismissed the application. Finally Mills filed an
appeal to the Division Bench on 1986. The Bench dismissed the appeal and in the
course of the order observed that the National Textile Corporation was authorized to
use the trademarks of “Finlay Mills Ltd.” which was the registered owner of the
trademark. It was the contention of National Textile Corporation that by operation of
law they have become the registered proprietor of the trademarks. There is no
assignment or transmission of trade marks to the National Textiles Corporation by
the Finlay Mills Ltd. Finlay Mill Ltd., the registered owner of the trademark, in any
event cannot be prosecuted for the infringement of the trade mark.
Implication: Without registration of the assignment or transmission, no rights can
be pleaded on the ground that the trademarks have been assigned or transmitted.
52. Parties: T.I. Muhammed Zurnoon Sahib – Appellant/Defendant-Vs -
Fathimunnissa Alias Bibijan and others – Respondents / Plaintiff
Issue: Muhamed Yoonus Sahib was the person in whose name the trademark was
duly registered with the Registrar of Trademarks, the trade mark being "708 yoonus
Beedi". Yoonus died and it is not denied that the respondents are his legal heirs.
After the death of yoonus the respondents continued to run his business and to
manufacture and sell beedies under the said trademark. They found that the
defendant / Appellant was also manufacturing and- selling beedies under a similar
trademark. Sahib's legal heirs filed a suit for infringement of trademark against the
Appellant. On the date of the institution of the suit, respondent had not taken steps to
register the trademark.
Judgement: Both the District Judge and the single Judge of the High court took the
same views that the suit was maintainable even without the order of the Registrar
U/s 35 of the Trademark Act 1940. In this case, the cause of action is the
infringement of the trademark. The order of the Registrar U/S 35 itself does not give
a cause of action. All that it gives is recognition of the title which already inheres in
the legal representatives of the deceased proprietor. The appeal filed by the
respondent was dismissed.
Implication: Transfer of ownership right to legal heirs by the operation of law is
Transmission. The suit by the legal representatives was maintainable even without
an order of the registrar in the case of transmission.
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IV.3 The above Court verdicts lay down the following laws and guidelines
i. Assignment Validity
1. One who seeks justice must reveal the real facts for the claim. The
claimant had lost the right of remedy due to her misconduct, eventhough there was a
valid assignment.
2. When there is a valid Assignment in favour of the plaintiff, the court will
give verdict in his favour.
ii. Natural Justice
3. Pre decisional hearing is necessary. Notice must be served to the
aggrieved person before passing the order. It is well settled law that an order passed
without following the principles of natural justice is void.
4. When an application of assignment or transmission is pending, the
removal of the name of the existing proprietor of the trade mark without complying
with the elementary requirements of rules of natural justice is void. In the eye of
law, there is a necessary implication that the party adversely affected should be
heard.
5. Rule of Audi-Altrum-Partem means “Right to be heard”. The Registrar
should not pass an order without hearing or without issuing notice to the affected
party, otherwise it will amount to violation of natural justice.
iii. Interpretation of Law decided by the Court
6. Assignee acquires title to the registered trade mark on assignment and
not by registration. Registration is “on proof of title”. The title exists in assignee
even before registration.
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7. Registration u/s. 45 (1) is “on behalf of title and thus the title exists in
assignee after assignment but before registration.
8. When the assignee is having valid assignment, he has got the right u/s. 28
(Right conferred by Registration) and u/s. 29 Protection against infringement of
Trade mark under the Trade marks Act 1999.
9. The assignee is impleaded as a party to the suit even though the Registrar
is yet to register the assignment in favour of the assignee.
10. Abandoned trade mark is not capable of assignment. Abandonment of a
registered mark cannot be reversed by subsequent readopting of a mark.
11. Alteration in the certificate of registration by removing the name of the
person entered as proprietor and substituting the name of another person either by
assignment or transmission is not an administrative function. Registrar performs
“Quasi Judicial Function” at the time of discharging his duties.
12. Permission to use trade mark is not assignment of the mark u/s. 10 92)
for registration, the claimant should be the proprietor.
13. Assignment of trade mark during the pendency of suit of suit for
infringement and passing off is valid. During the pendency of a suit, the assignee
can continue the suit so far as the relief of injunction is concerned but not for
rendition of accounts and damages.
14. When the assignment deed is not a bonafide transaction, one cannot get
remedy before a court of law.
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15. The Registration, of a trade mark recognized only within the country in
which it registered.
16. If any fraud and misrepresentation in assignment of trade mark, it must
be proved by the aggrieved party.
17. Registration u/s. 45 does not give a cause of action. All that it gives is
recognition of the title.
18. Incase of assignment, the application for registration must be filed by the
assignee within stipulated period. If it is not filed within the stipulated period of six
months plus extension period of 3 months, then it is improper and invalid.
19. The object of the Trade marks Act is to protect the proprietary right of a
registered trade mark holder. Proprietary rights in a trade mark acquired by use are
superior to rights obtained by Registration under the Act.
20. According to the Supreme Court, Arbitration has jurisdiction to consider
all questions raised before him by the parties which related to dispute referred to the
Arbitrator. Driving a party to a separate legal litigation for the relief by the
Arbitrator would not be proper and valid.
21. Non - registration of Assignment will not confer any legal right to the
assignee.
22. Once the dissolution deed lays down the rights and obligation of the
erstwhile partner, there is no necessity to execute a separate assignment deed
between the two partners. The dissolution deed itself would become an assignment
under the law.
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23. The Plaintiff is not entitled to temporary injunction, if he is a registered
user of the trade mark. He is having right to use only.
24. On the date of assignment there was no property in the hands of the
assignor to assign in favour of the assignee by reason of the non renewal and
nonpayment of the renewal fees. On the day when the assignment was given, no
property was available; in that case even a registered owner cannot make any claim
over his registered trade mark.
25. It is settled law that once there is a transfer of property, the license
granted by the owner / transferor for use of the property stands automatically
terminated. This principle is not only applicable to the immovable property but also
applicable to movable property.
26. Law provides legal sanction to the trade mark by its registration and not
necessarily to the holder of the trade mark.
27. The assignee fails to apply to the Registrar for direction with respect to
advertisement of assignment within the period of nine months as prescribed by the
Registrar. If this mandatory condition u/s 41 is not complied with, Assignment will
not be taken effect.
28. There is no restriction on the right of a partner to permit concurrent users
of the property of the firm by another person even if a partner in a firm assigns a
property of the firm without consent of the other partners. Documents related to
Assignment of trade marks vide family arrangement shall not require compulsory
registration.
133
29. Ad interim injunction cannot be granted if a party seeking injunction is
not able to setup a primafacie case in his favour in the matter related to assignment
and reassignment.
30. An assignor can transfer only such right which he possess.
31. An instruction which is not properly stamped is admissible in evidence
u/s 35 of the Stamp Act 1899 on payment of the necessary stamp duty and penalty.
32. When there is a dispute in the genuineness of the documents related to
assignment and reassignment, that should be decided by the trial court only.
33. When a private company is converted into a Public Co., there is
alteration of Memorandum of Association and of Articles of Association of the
Company. There is no change in the legal personality of the company.
34. The purpose of confining the trade mark registration to one jurisdiction
for the purpose of its rectification is to facilitate rectification proceedings, so that an
aggrieved party doesnot have to run around the various courts to know the
assignment is effected in the jurisdiction. Likewise, even the registered proprietor
gets confined to one jurisdiction where in validity / removal of his mark can be
determined.
35. If a particular property is transferred as “ongoing concern”, settled
position of law is that it passes its title along with its goodwill. The defendant, being
the owner is entitled to use the trade name.
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iv. Operation of Law
36. When unregistered user – Government is trying to succeed registered
user of the trade mark by nationalization of Industry, removal of the trade mark of
Registered User from the register of the trade mark is not permitted.
37. It is clear that without registration of the assignment or transmission no
rights can be claimed on the ground that the trade marks have been assigned or
transmitted.
38. Transfer of ownership right to the legal heirs by operation of law. The
suit by the legal representation was maintainable even without an order of the
Registrar U/s 35. It gives recognition of the title which already inheres in the legal
representatives of the deceased proprietor.
39. The Power to assign to “the person for the time being entered in the
register as proprietor of trade mark” it would appear that even if the mark was
registered in the wrong name the registered proprietor has power to assign the mark
and the validity of the assignment cannot be questioned.
Since the High Courts and the Supreme Court are the rule making
courts, judgements given by the above courts are binding on the subordinary
judiciary. The interpretations of judgements of courts reveal that one who seeks
justice must come with the real facts for the claim. Eventhough there is a valid
assignment as per Trade marks Act, due to misconduct, the claimant may not get
remedy. Court has given verdict by giving importance to misconduct rather than the
proper assignment.
135
The Term Natural Justice comes under Administrative Law. Though the
Trade marks Act does not contemplate the issuance of notice and hearing the
aggrieved person, the court determines predecisional hearing is necessary. It is well
settled Law that an order passed without following the principles of natural justice is
void and it will amount to violation of natural justice.
The Supreme Court specifies the jurisdiction of the Arbitrator, when the
dispute is raised before him. It is decided that an Assignment Deed which is not
properly stamped is admissible in evidence on payment of the necessary stamp duty
and penalty. The courts are having supervisory powers over all authorities .If any
violation of the Trade marks Act and Rules, the court can set right the law by giving
proper direction. The above analytical study of Judgments on Assignment and
Transmission of Trade marks in India has paved the way for the clearance of
loopholes and strict legal compliances on the related issues.
IV.4. Implications on Consumers and Traders
Trade mark law protects public interest by protecting them from
infringement of trade mark. There should not be any confusion as regards the
manufacturer of the product because of the deceptive similarities of the trade marks.
Consumers may not be able to differentiate two identical trade names or trade
marks, at a glance, which will defeat the very purpose of the Trade marks Act i.e., to
prevent the use of fraudulent marks. To protect the consumers, formation of
‘Redressal Forum’ is essential like “Lok Adalat” System.
The overall view of the study in this chapter clarifies that the legal
remedy is always available to the businessmen to redress their grievances. The
136
provisions made under the act and rules create awareness to the businessmen in the
litigation which will ultimately safeguard their interest in times of need. The liberal
approach in the procedure for assignment registration before Trade mark Registry
and filing of cases before the courts give sufficient protection to the businessmen in
particular. Besides, the legal interpretations lend further assurance for their future
guidance. The registered assignment is enforceable in a court of law in case of
dispute. Businessmen are protected by registration of assignment. Unregistered trade
marks can also be assigned with or without goodwill. This is yet another milestone
in the Trade mark Law on assignment and transmission, giving much benefit to the
business society.
CHAPTER - IV END NOTES
LAW JOURNALS REFERED
Case Studies :-
1. (36) PTC 139 2008 High Court, Bombay. Patent trade mark and copyright
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2. (35) PTC (357) 2007 Delhi High Court. Patent trade mark and copyright
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