Mechanical Works Vs. P.M. Diesels Pvt. Ltd. & ANR  INSC 2219 (18
IN THE SUPREME COURT
OF INDIA CIVIL APPELLATE JURISDICTION CIVIL APPEAL NO. 7404 OF 2008 (Arising
out of SLP (C) No.6145 of 2006) M/s. Thukral Mechanical Works ... Appellant
Versus P.M. Diesels Pvt. Ltd. & Anr. ... Respondents
S.B. Sinha, J.
of the provisions of Section 46(1)(b) of the Trade and Merchandise Marks Act,
1958 (hereinafter called and referred to for the sake of brevity as `the said
Act') is involved herein.
factual matrix of the matter, which is not much in dispute is as under :
First Respondent is
the registered proprietor of a trade mark `Field Marshal' for Diesel Engines
since 1964 bearing No.228867. One M/s. Jain Industries got the trade mark
`Field Marshal' registered under clause (7), inter alia, for Flour Mills,
Centrifugal Pumps, couplings for machines, pulleys included in class and valves
(parts of machines). The said registration was renewed for the periods
13.5.1972 and 12.5.1979; 13.5.1979 and 12.7.1986 and 13.7.1986 and 12.7.1993.
Appellant is said to
have commenced its business of manufacturing and selling centrifugal pumps also
under the mark `Field Marshall'.
Allegedly, on the premise
that the first respondent is the proprietor of the said mark by reason of long
user and, thus, acquired a reputation in that behalf, a legal notice was issued
upon it questioning its right to use the said mark in respect of centrifugal
pumps by the appellant laying a claim that it had been using the said mark
No.1 thereafter filed a suit in the Delhi High Court for grant of a decree of
permanent injunction being Suit No.2408 of 1985 alleging infringement of the
said mark and/or claiming right of passing off in respect thereof. An ex parte
order of injunction was passed on 19.12.1985 against the defendant (appellant
herein) to the following effect :
3 "Notice for
April 8, 1986. Meanwhile, a temporary ex parte injunction is issued against the
defendants restraining them from manufacturing or selling either themselves or
through any dealer or representative diesel oil engines or parts thereof with
the trade mark `Field Marshal' and/or any other trade mark identical therewith
and all goods falling in Clause 7 of the Trade and Merchandise Mark Rules. The
plaintiff shall comply with the requirements of Order 39 Rule 4 of the Code of
during the proceedings in the above suit, M/s. Jain Industries by a deed of
assignment assigned the said trade mark along with its goodwill in favour of
the appellant. One of the stipulations contained therein reads as under :
"That the party
of the second part has satisfied the party of the first part of having used the
mark FIELD MARSHAL in respect of Centrifugal Pumps and Valves since 1973."
First Respondent filed an application under Section 46, 56 and 107 of the Act,
marked as C.O. No.9 of 1986, contending that M/s. Jain Industries having not
used the trade mark in respect of Centrifugal Pumps for a period more than five
years and one month, the mark should be taken off the register. It claimed user
of the said mark since 1963 and sought for rectification of the register by
expunging the expression `circulation and centrifugal pumps' from the
specification of goods. Indisputably, appellant filed an application in form TM
24 4 on 17.6.1986. The Assistant Registrar, Trade Marks, passed an order on
10.11.1986 certifying :
"THAT the trade
mark FIELD MARSHAL BRAND (word per se) is registered under No.228867 in part
`A' of the Register as of the date 13th May, 1965 in class 7 in respect of
Flour Mills, circulating and centrifugal pumps;
machines; pulleys included in Class 7, and valves (parts of machines) in the
name of Pooran Chand Jain and Kailash Chand Jain, trading as Jain Industries,
1166, Phatak Suraj Bhan, Belanganj Agra.
THAT Pursuant to a
request on form TM-23 dated 17th June, 1986 and order thereon dated 24th
October, 1986 Ganga Ram Anil Kumar (HUF), Sunil Kumar and Sumitra Rani, trading
as Thukral Mechanical Works Railway Road, Sirhind (Punjab) are registered as
subsequent proprietors of this mark as from 30th May, 1986 by virtue of
Agreement dated 30th May, 1986.
AND THAT The
registration of the aforesaid trade mark has been renewed from time to time and
will remain in force for a period of a seven years from 13th May, 1986 and may
be renewed at the expiration of that period and of each succeeding period of a
the said C.O. No.9 of 1986 filed by the first respondent against M/s. Jain
Industries, despite service of notice, nobody appeared on behalf of the
16.1.1987 was the
date fixed in the said suit. Appellant's counsel appeared on that date and,
inter alia, contended that presently it was the registered owner of the trade
mark which was sought to be cancelled. In view of that statement, a submission
was made on behalf of the first respondent that it may be permitted to withdraw
the petition with liberty to file a fresh petition on the same cause of action.
The learned Judge directed recording of statements of the learned counsel in
this behalf; pursuant whereto the same were recorded which reads as under :
"C.O.9 of 1986
Mr. Singh has filed a reply in this petition bringing out that presently he is
the registered owner of the trademark which is sought to be cancelled in this
petition. In view of this situation learned counsel for the petitioner has
submitted that he may be permitted to withdraw this petition with permission to
file a fresh petition on this very cause of action after impleading M/s
Thakural mechanical Works etc. Let the statement of learned counsel for the
petitioner be recorded.
Statement of Shri
K.L. Aggarwal, counsel for petitioner without oath :
In view of the
submissions of M/s Thakural Mechanical Works I may be permitted to withdraw
this petition with permission to file a fresh petition on this very cause of
Statement of Shri
Hemant Singh, counsel for M/s. Thakural Mechanical Works without oath :
I have no objection
if the petitioner is permitted to withdraw this petition with permission to
file a fresh petition on this very cause of action."
On the basis of the
said statement, the following order was passed :
has been filed by M/s. PM Diesels Pvt. Ltd. Against M/s. Jain Industries and
the Dy. Registrar of Trade Marks under Section 46, 56 and 107 of the Trade and
Merchandise Marks Act, 1958 for rectification of 6 entry relating to the
Registered Trade Mark No.228867 in Class 7. After the notice was served upon
the respondent 1, a reply has been filed by M/s Thakural Mechanical Works
bringing out therein that they are now the registered proprietors of said Trade
In this view of the matter
learned counsel for the petitioner has submitted that he may be permitted to
withdraw this petition with permission to file a fresh petition on this very
cause of action. The request is not opposed on behalf of M/s Thakural
circumstances the request of the plaintiff is granted and petitioner is
permitted to withdraw this petition and file a fresh petition on this very
cause of action. The petition is accordingly filed as withdrawn leaving the
parties to bear their own costs."
fresh application was filed by the first respondent. The said M/s. Jain
Industries, however, was not impleaded as a party therein. The cause of action
therefor was stated to have arisen in the following circumstances :
"That the cause
of action for the present petition arose in favour of the petitioner and
against the respondents in the month of January 1987 when the respondent
informed this Hon'ble Court that they have been recorded as subsequent
proprietors of the impugned registered trade mark No.228867 in Class 7 in C.O.
No.9 of 1986, whereupon the petitioner withdrew the said earlier petition C.O.
No.9 of 1986 with permission of the court to file the present petition, because
of the changed circumstances. The cause of action is continuous from day to day
till the impugned registration is cancelled/rectified."
injunction matter in Suit No.2408 of 1985 came up for hearing before a learned
Single Judge of the High Court. By an order dated 19.1.1988, having regard to
the provisions contained in the said Act, the learned Judge opined that
appellant having become the registered proprietor of the said trade mark, no
case for grant of injunction has been made out, the interim order of injunction
passed on 19.12.1985 was vacated and the defendants were permitted to use their
registered trade mark subject to the following conditions :
will not use the logo/style of the word "Field Marshal" of which logo
and style the plaintiff is the proprietor under the Copyright Act.
(b) Defendants shall
mention the name of the defendant firm, Thukral Mechanical Works, Sirhind on
each and every centrifugal pump manufactured by them and sold in the name of
(c) The defendants
shall maintain proper accounts of the sale of centrifugal pumps under the trade
mark "Field Marshal" and shall file them in Court as and when
or otherwise of the said order has not been questioned. The second
rectification application filed by the first respondent, however, was
transferred to the Intellectual Property Appellate Board. The said application
A writ petition was
filed thereagainst by the first respondent. A learned Single Judge of the Delhi
High Court, however, refused to stay the operation of the order of the Board
dated 27.10.2004. An appeal was preferred thereagainst.
The Division Bench of
the High Court thereafter while disposing of both the writ petition and the
Letters Patent Appeal allowed the writ petition and set aside the order of the
Board and directed it to adjudicate the dispute on merits. The said order of
the Division Bench is under challenge in this appeal.
core question which arises for our consideration is as to whether in the
aforementioned facts and circumstances of the case, the application under
Section 46(1)(b) was maintainable.
thereto, we may take notice of the relevant statutory provisions :
46(1)(b), 48(1), 48(2) and 56 read as under :
46--Removal from register and imposition of limitations on ground of
non-use--(1) Subject to the provisions of section 47, a registered trade mark
may be taken off the register in respect of any of the goods in respect of
which it is registered on application made in the prescribed manner to a High
Court or to the Registrar by any person aggrieved on the ground either-- (a)
(b) that up to a
date one month before the date of the application, a continuous period of five
years or longer had elapsed during which the trade mark was registered and
during which there was no bona fide use thereof in relation to those goods by
any proprietor thereof for the time being:
Provided that, except
where the applicant has been permitted under sub-section (3) of section 12 to
register an identical or nearly resembling trade mark in respect of the goods
in question or where the tribunal is of opinion that he might properly be
permitted so to register such a trade mark, the tribunal may refuse an
application under clause (a) or clause (b) in relation to any goods, if it is
shown that there has been, before the relevent date or during the relevant
period, as the case may be, bona fide use of the trade mark by any proprietor
thereof for the time being in relation to goods of the same description, being
goods in respect of which the trade mark is registered.
48--Registered users--(1) Subject to the provisions of section 49, a person
other than the registered proprietor of a trade mark may be registered as the
registered user thereof in respect of any or all of the goods in respect of
which the trademark is registered otherwise than as a defensive trade mark; but
the Central Government may, by rules made in this behalf, provide that no
application for registration as such shall be enertained unless the agreement
between the parties complies with the conditions laid down in the rules for
preventing trafficking in trade marks.
(2) The permitted use
of a trade mark shall be deemed to be used by the proprietor thereof, and shall
be deemed not to be used by a person other than the proprietor, for the
purposes of section 46 or for any other purpose for which such use is material
under this Act or any other law.
Section 56--Power to
cancel or vary registration and to rectify the register--(1) On application
made in the prescribed manner to a High Court or to the Registrar by any person
aggrieved, the tribunal may make such order as it may think fit for cancelling
or varying the registration of a trade mark on the ground of any contravention,
or failure to observe a condition entered on the register in relation thereto.
(2) Any person
aggrieved by the absence or omission from the register of any entry, or by any
entry made in the register without sufficient cause, or by any entry wrongly
remaining on the register, or by any error of defect in any entry in the '
register, may apply in the prescribed manner to a High Court or to the
Registrar, and the tribunal may make such order for making, expunging or
varying the entry as it may think fit.
(3) The tribunal may
in any proceeding under this section decide any question that may be necessary
or expedient to decide in connection with the rectification of the register.
(4) The tribunal, of
its own motion, may, after giving notice in the prescribed manner to the
parties concerned and after giving them an opportunity of being heard, make any
order referred to in sub-section (1) or sub- section (2).
(5) Any order of the
High Court rectifying the register shall direct that notice of the
rectification shall be served upon the Registrar in the prescribed manner who
shall upon receipt of such notice rectify the register accordingly.
(6) The power to
rectify the register conferred by this section shall include the power to
remove a trade mark registered in Part A of the register to Part B of the
the scope of the provisions for removal from Register in terms of Section 46
and 56 of the Act stand on different footings. Whereas Section 46 had a limited
application, Section 56 of the Act is wider in nature. Concededly, clause (a)
of sub-section (1) of Section 46 is not attracted in the case.
the purpose of appreciation of the rival contentions, we may notice the
findings of the Board as also the High Court.
The Board has taken
the view that the period of five years and one month will begin to run from the
date on which Thukral became the proprietor of the trademark, that is, 30th
May, 1986 and, therefore, the rectification application could have been filed
by the appellant only sometime in 1991. Opining that an application for
rectification against the appellant within a period of seven and a half months
from the date of assignment of the trade mark was not maintainable, the
application was dismissed.
The High Court on the
other hand opined :
"It was not
anybody's case before us that M/s Jain Industries the registered proprietor of
the trademark used it at all. The trademark was used by the Appellant and
Thukral, neither of whom were proprietors thereof, except that Thukral claims
to have become its proprietor with effect from 30th May, 1986.
According to learned
counsel for the Appellant, the use of the trademark by Thukral was not legally
permissible use inasmuch as Thukral did not have the consent, tacit or
otherwise of M/s. Jain Industries to use the trademark.
If Thukral did, then
it cannot be said that there was no bona fide use thereof by its proprietor,
that is, M/s Jain Industries. This appears to be the position at least till
30th May, 1986. In the meantime, as a result of the ex parte ad interim
injunction granted on 19th December 1985 by this Court in Suit No.2408 of 1985,
there was no question of Thukral using the trademark Field Marshal till the
injunction was vacated on 19th January, 1988."
Act was enacted to provide for the registration and better protection of
trademarks and for the prevention of the use of fraudulent marks of
Registration of a
trade mark remains valid for seven years. Renewal applications are required to
be filed on the expiry of seven years. M/s. Jain Industries got itself
registered and obtained periodical renewal thereof as is required under the
Act. First Respondent withdrew the application against M/s. Jain Industries.
The prayer in the application was to take off the registered trade mark from
the register in respect of centrifugal pumps (goods) so far as the registration
made in favour of the appellant is concerned.
is in the aforementioned situation, we are called upon to determine the meaning
of the words `for the time being' occurring in Section 46(1)(b) of the Act.
thereto which are possible are :
13 (1) the said
words would denote non-use of the trade mark in relation to the goods by the
appellant for a period of five years or longer; and (2) The mark had not been
used for a period of five years or longer either by the present proprietor
thereof or his predecessor.
may, however, also notice that another construction of the said provision has
been put forth by Mr. Sunderam, learned senior counsel appearing on behalf of
the appellant, that the word `proprietor' would not mean a registered
proprietor but also a person who has become `proprietor' by long use thereof.
words `for the time being' would mean differently in different situations. It
may mean `the moment or existing position' as was held by this Court in the
case of Jivendra Nath Kaul v. Collector/District Magistrate and Anr.
[(1992) 3 SCC 576] or
in the context of clause (22) of Article 366 of the Constitution as has been
held in H.H. Maharajadhiraja Madhav Rao Jivaji Rao Scindia Bahadur of Gwalior,
H.H. Maharajadhiraja Maharana Shri Bhagwat Singhji Bahadur of Udaipur v. Union
of India and Anr. [AIR 1971 SC 530 para 110] to mean :
"By the use of
the expression "for the time being" in Clause (22) of Article 366 the
President is not invested with authority to accord a temporary recognition to a
Ruler nor with authority to recognize or not to recognize a Ruler arbitrarily :
the expression "for them time being"
predicts that there
shall be a Ruler of the Indian State, that if the first recognized Ruler dies,
or ceases to be a Ruler, a successor shall be appointed, and that there shall
not be more Rulers than one at a given time."
The terms also may
bring within its umbrage the entire period of five years or more irrespective
of the fact as to whether the registered proprietor was one or more than one as
has been held by the High Court.
cannot be any doubt or dispute that the registration of a trade mark confers a
very valuable right. The person in whose name the trade mark has been
registered may take action against any person for passing off the goods as that
of the registered owner. It confers an exclusive right of use of the trade mark
in relation to the goods in which the trade mark is registered. The same is an
assignable right in terms of Section 36 of the Act, whereas an unregistered
trade mark is not.
of the said mark, therefore, entails the consequences laid down under clause
(b) of Sub-section (1) of Section 46.
However, such an
application can be filed only by a person aggrieved.
When the applicant
before the Board establishes the fact in regard to non-user of the mark for a
period of more than five years on the part of the registered owner, the latter
may show that his case falls within the purview of sub-section (3) of Section
question which, therefore, arises is as to who can prove that he had the bona
fide intention to use the trade mark on the date of application for
would be the registered proprietor. Section 46 is a penal provision. It
provides for civil or evil consequences. It takes away the valuable right of a
registered proprietor. It, therefore, can be taken away only when the
conditions laid down therefor are satisfied.
we say so, we are not oblivious of the fact that trafficking in trade mark is
to be discouraged. A registered proprietor of a trade mark should not be
permitted to circumvent the law of user of the trade mark for a long time by
assigning the same from time to time. But then such a case has to be made out.
trafficking is a serious one. It must be proved in presence of the person
against whom such allegations are made. At the time of grant of original
registration, advertisements are issued and objections are called for. Renewal
of registration, in a sense, also is not automatic. A person who had been using
the said trade mark as a proprietor thereof by user is supposed to keep itself
abreast with such applications filed by another either for registration of the
trade mark or 16 renewal thereof. The non-user for a long time would
disentitle a registered proprietor from renewal of the registration.
must not, however, be forgotten that Section 46(1)(b) provides for a special
remedy. As a person obtains a right on and from the date of registration and/or
renewal thereof, he can ordinarily be deprived of his right unless it is shown
that the assignment thereof by his holder was not a bona fide one or had been made
by way of camouflage. If the assignee has obtained assignment for bona fide
use, he may not be fastened with any liability owing to non-user on the part of
his predecessor. In other words, the mistake of the predecessor should not be
visited with non-use of the present registered owner.
must, however, be observed that whether a use is for bona fide purpose would
essentially be a question of fact. Whether Section 46(1)(b) read with Section
48 of the Act would bring within its purview, not only a registered proprietor
but also the proprietor who had otherwise acquired a right would depend upon
the facts and circumstances of each case.
In Kabushiki Kaisha
Toshiba v. Tosiba Appliances Co. & Ors. [(2008) 8 SCALE 354], this Court
"We do not find
any force in the aforementioned submission. Clauses (a) and (b) operate in
different fileds. Sub-section (3) covers a case falling within clause (b) and
not the clause (a) thereof. Had the intention of the Parliament been that
sub-section (3) covers cases falling under clause (b) and clause (a), having
regard to the similarity of the expressions used, there was no reason as to why
it could not be stated so explicitly.
It was furthermore
"There may be a
case where owing to certain special circumstances, a continuous use is not
possible. The trade mark for which registration is obtained is used
intermittently. Such non-user for a temporary period may be due to any exigency
including a bar under a statute, or a policy decision of the Government or any
action taken against the registrant."
It was observed that
in cases of intermittent use also, clause (b) shall apply.
In Kabushiki Kaisha
Toshiba, this Court relied upon Hardie Trading Ltd. & Anr. V. Addisons
Paint & Chemicals Ltd. [(2003) 11 SCC 92] :
"In our opinion,
the phrase "person aggrieved" for the purposes of removal on the
ground of non-use under Section 46 has a different connotation from the phrase
used in section 56 for canceling or expunging or varying an entry wrongly made
or remaining in the Register."
submission of Mr. Sudhir Chandra that the appellant was an infringer both of
the right of M/s. Jain Industries as also the first respondent and, thus, its use
was not bona fide in a case of this nature cannot be accepted. If appellant infringed
the right of M/s. Jain Industries, it was for it to take action therefor. It
did not. First respondent itself accepts that at least immediately prior to the
institution of the suit, appellant had been using the same.
We are not concerned
herein as to since when it had been doing so. It obtained an or of injunction.
The order of injunction was vacated. For one reason or the other, the said
order attained finality. Prima facie, therefore, appellant has been held to be
the registered owner of the trade mark. It is one thing to say that for the
purpose of frustrating an application for rectification, the appellant had
colluded with its predecessor for the purpose of trafficking by entering into
the deed of assignment which is otherwise illegal and bad in law but it is
another thing to say that the appellant could be proceeded against alone for
non-user of the registered trade mark for a period of more than five years. For
the purpose of making out such a case, both the original registrants as also
the assignee were required to be impleaded as parties.
may, at this stage, notice that in Law of Trade Marks by Mr. K.C. Kailasam,
while commenting on Section 47 of the Trade Marks Act, 1999 to which our
attention has been drawn by Mr. Sudhir Chandra, it is stated :
clauses.--This clause corresponds to section 46 of the existing Act and
provides for removal of a trade mark from the register on the ground of
non-use. A trade mark which is not used within five years of its registration,
becomes liable for removal either completely or in respect of those goods or
services for which the mark has not been used. Under Section 46(1), it is
proposed to clarify that the five years period will start from the date on
which the trade mark is actually entered on the register. This amendment is
intended to remove any ambiguity, as for all other purposes, the date of
registration will be the date on which the application was filed vide clause
23(2). Proviso to sub-clause (1) also provides that the tribunal may refuse
removal of the mark if it is shown that any proprietor had in fact made bona
fide use of the trademark for goods or services of the same description or
associated goods or services.
It is also proposed
to increase the period from 1 to 3 months in clause 47(1)(a) and (b) in which
use of the trade mark, prior to the date of filing of the application for
removal of the trade mark, shall be disregarded. This is intended to prevent
the registered proprietor to by pass the Act by such token use after he comes
to know that an application for removal is about to be filed. ?Sub-clause (3)
protects a mark from being removed from the register on ground of non-use if
such non-use is shown to have been due to special circumstances in the trade.
The clause is proposed to be modified to clarify that special circumstances in
the trade will include restrictions imposed by any law or regulation on the use
of trade mark in India. Consequential amendments have been made to cover
services. (Clause 47 of the Bill)"
Court while construing a statute takes into consideration the parliamentary
intent in amending the provisions thereof. It seeks to enhance the period of
moratorium of use of the registered trade mark from one month to three months
so as to prevent speculative assignment. Thus, a case of speculative assignment
is specifically required to be made out. Such an application may be
maintainable in terms of Section 56 of the Act but strictly not in terms of
Section 46(1)(b) thereof and that too in the absence of the original registered
are not satisfied with the explanation offered by the first respondent that it
gave up the case of non-use of the registered trade mark against M/s Jain
Industries on the basis of statement made by the learned counsel for the
consent does not confer jurisdiction; secondly, because want and/or lack of
jurisdiction on the part of the Tribunal cannot be waived as if any order is
passed without jurisdiction, the same would be a nullity; and thirdly because
the cause of action, even according to the first respondent in his application
before the High Court, was different.
The counsel appearing
on behalf of the appellant did not state that it had waived its right so far as
non-impleadment of M/s Jain Industries was concerned.
It only consented for
grant of liberty in favour of the first respondent for filing of an application
for the self-same cause of action. The question of maintainability of the
second suit is absence of the registrant proprietor was not and could not have
been the subject matter of consent at that stage. The cause of action which
permitted the first respondent to file an application for rectification against
Jain Industries was
non-user thereof by it. Its non-user and rectification of the register could
not, in the aforementioned situation, have been tagged with the cause of
action, if any, against the appellant.
second contention of Mr. Sudhir Chandra that the appellant was an infringer of
the trade mark is again a question of fact. The right of the first respondent
as a proprietor of the trade mark by reason of a long user is required to be
determined vis-`-vis M/s. Jain Industries as also the appellant in the suit
filed by it which is pending. The Board could not, while exercising its
jurisdiction under Section 46(1)(b), of the Act proceeded on the basis of such
It is not correct
that no cause of action survived against Jain Industries. It was not lost by
reason of assignment as was contended by the learned counsel. In the suit, only
the competing right of the first respondent qua the appellant can be determined
and not a right against M/s. Jain Industries. Such a right cannot be determined
in a proceeding under Section 46(1)(b) of the Act which is restricted to
non-user of the registered trade mark. Both the appellant and the respondent
No.1 were the infringers of the right of M/s. Jain Industries as it was the
registered proprietor of the trade mark in respect of the goods in question,
namely, centrifugal pumps.
interpretations of the said provision Section 46(1)(b) are possible.
the same, however, certain basic principles of construction of statute must be
kept in mind. As it takes away somebody's right, it deserves strict
construction. Jurisdiction of the Board being dependent on determination of the
foundational facts, the same was required to be established on the basis of the
averments made in the application and not otherwise.
The right of a
registered trade mark is not lost automatically on the expiry of five years and
one month. It does not provide for a `sun set' law. It has to be adjudicated
upon. Whether the registered proprietor of the trade mark had taken recourse to
trafficking or not must be determined in an appropriate proceeding.
The principle of
`purchaser of a property has a duty to make enquiries', therefore, cannot apply
in a case of this nature. So long as the right to assign a registered trade
mark remains valid, once the same is validly assigned, the assignee derives the
same right as that of the assignor in terms of the statute. A title to a trade
mark derived on assignment as provided for under the Act cannot be equated with
a defective title acquired in any other property as admittedly on the date of
assignment, the right of the registered trade mark was not extinguished.
the findings of the High Court which we have noticed hereinbefore are findings
on question of law and in that view of the matter the contention of Mr. Sudhir
Chandra that the merit of the matter is yet to be gone into by the Board cannot
be a ground for ignoring the submissions made at the bar.
attention has again been drawn to a passage from `Law of Trade marks &
Geographical Indications' by Shri K.C. Kailasam, wherein the judgment of the
Tribunal has been criticized in the following terms :
"From the above
legislative intent, it would seem that the period of non-use of the trade mark
is to be reckoned continuously from the date of its registration. In the case
of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. Rendered
under the 1958 Act, it was held by the Supreme Court that "the person
seeking to have the trade mark removed from the register has only to prove such
It would appear that
neither the U.K. Act, nor the Indian Act, at any time envisaged that the
commencement of 5 year period of non-use is to be delinked from the date of
registration of the mark, so as to give a fresh lease of life to the
registration, every-time there is change in the ownership of the mark. If that
be so, any registered proprietor could easily defeat an application for
rectification by assigning the mark to some other person to have a fresh period
of 5 years from the date of assignment and thus effectively frustrate the very
object of the provision in section 47(1)(a) and (b). Further, it is to be noted
that an assignment is subject to "the provisions of the Act and any rights
vested in any other person"--See section 37. The assignor cannot obviously
transfer more rights than he himself has to the assignee under the Act."
do not think that the approach of the learned author is entirely correct.
An assigner can
transfer only such right which he possesses. If his title is not extinguished
by reason of a provision of a statute for non-user of the trade mark for a
period of five years, any assignment made shall be valid subject to such
situation which we have noticed in paragraph 25 supra.
the views we have taken, we are of the opinion that the impugned judgment
cannot be sustained. It is set aside accordingly. The Board shall, however
proceed to determine afresh the application filed by the first in the light of
the legal principles explained above.
appeal is allowed with costs. Counsel's fee assessed at Rs.1,00,000/-.