Infosys Technologies Ltd.
Vs. Jupiter Infosys Ltd. & ANR.
R.M. LODHA, J.
three appeals by special leave are directed against the order dated September 9,
2004 passed by Intellectual Property Appellate Board (for short, `IPAB') whereby
it ordered the removal of appellant’s mark `Infosys' from the register of trade
marks in respect of computer stationery, computer manuals, printed matter for computer,
instructional and teaching materials, computer hardware and peripherals and machine
and machine tools.
appellant is Infosys Technologies Limited. It was incorporated and registered under
the Companies Act, 1956 on July2, 1981 in the name of Infosys Consultants Private
Limited. The appellant got the trade mark `Infosys' registered in 1987 in classes16
and 9 in connection with computer stationery, computer manuals, printed manual for
computer instruction and teaching materials; computer hard wares, computer interface,
computer peripherals, electronics telex interface and in 1988 in class 7 in connection
with machine and machine tools and motors (not for land vehicles). The particulars
with reference to the trade mark registered by the appellant are as follows :
Computer Manuals, Printed Manuals for Computer Instruction and teaching materials
Computer Interface, Computer Peripherals, Electronics Telex Interface and all
goods covered in class 09.
Machine and Machine
Tools and Motors (not for land vehicles) included in class 07.
April 21, 1992, the name of the company--Infosys Consultants Pvt. Limited--was changed
to Infosys Technologies Pvt. Ltd. and thereafter on June 2, 1992, the name was changed
to the present name, i.e. Infosys Technologies Limited.
first respondent is Jupiter Infosys Limited. The first respondent was incorporated
and registered in September 1978under the name of Jupiter Agencies Pvt. Limited.
The name of the first respondent was changed to Jupiter Infosys (P) Limited in August,1995
and now since July, 2003, the name is changed to Jupiter International Limited.
October 11, 1996, the appellant instituted a suit in the Calcutta High Court for
perpetual injunction, inter alia, restraining the first respondent from infringing
the appellant's mark `Infosys' by using the mark `Infosys' by itself or in combination
with other marks in course of its trade. The appellant also prayed for an interim
order in the suit. On November 22, 1996, the Calcutta High Court by an ad-interim
order restrained the first respondent from using the word` Infosys' in any manner
in relation to the goods for the time being. The ad-interim order was confirmed
on November 29, 1996.
appellant having come to know of several instances of misuse of mark `Infosys' also
filed a writ petition (being writ petition no. 14214 of 2000) before the Calcutta
High Court, inter alia, praying that the Registrar of Companies be restrained from
registering the companies bearing the name `Infosys'. On September 13, 2000, the
Calcutta High Court restrained the Department of Company Affairs and Registrar of
Companies from incorporating any company bearing the name `Infosys' without the
permission of the appellant.
January 2001, the appellant filed yet another suit before the High Court of Judicature
at Madras for permanent injunction restraining the first respondent from offering
shares to the public as claimed in the Initial Public Offer (IPO) using `Infosys'.
The Single Judge of the Madras High Court passed an interim restraint order on February
1, 2001 against the first respondent. The said order was confirmed on May 22, 2001
to remain operative till disposal of suit.
first respondent then filed three separate applications before the Madras High Court,
inter alia, under Sections 46 and 56of the Trade and Merchandise Marks Act, 1958
(`the 1958 Act'). In O.P. No. 764 of 2001, the first respondent prayed for the removal/rectification
of the entry in the register of trade mark in respect of trade mark No. 475269 in
Class 16 while in the other two applications being O.P. No. 765 of 2001 and O.P.
No. 766 of 2001,the first respondent prayed for removal/rectification of trade mark
No.475267 in Class 9 and trade mark No. 484837 in Class 7respectively.
appellant opposed these applications on diverse grounds by filing counter affidavits.
August 12, 2003, the Madras High Court framed the following issues:
a. Whether the mark applied
for registration was used in respect of the goods for which the mark was registered?
b. Whether the respondent
had a bonafide intention to use the mark applied for under section 18 of the Trade
and Merchandise Marks Act?
c. Whether the mark registered
in favour of the respondent is a service mark?
d. Whether there is a non
use of registered trade mark by the respondent for a period of over 5 years and
e. Whether the registered
trade marks is disentitled for protection in a Court of Law under Section 11
f. of the Trade and Merchandise
g. Whether the registered
trade mark has lost its distinctiveness and is liable to be removed under section
h. Whether the respondent
has committed fraud while obtaining registration of the mark? And
i. To what further relief?
1958 Act was repealed by the Trade Marks Act, 1999(for short, `the 1999 Act'). In
terms of Section 100 of the 1999 Act, the three petitions filed by the first respondent
before the Madras High Court for rectification/removal of registered trade mark
Nos. 475269,475267 and 484837 were transferred to the IPAB.
more facts may be noticed. The appellant filed yet another suit (being suit no.
2115 of 2002) before Delhi High Court for infringement of trade mark and passing
off against the first respondent. In that suit, the appellant also made an application
for grant of temporary injunction. The vacation Judge of the Delhi High Court, on
December 27, 2002 passed an order of temporary injunction against the first respondent
"Notice for 24th
March, 2003 before the Joint Registrar. Heard. Perused the averments made in the
suit and application which are duly supported by documents on record. I am of the
opinion that in case ex-parte ad-interim orders are not granted, the relief claimed
itself may be rendered infructuous. Accordingly it is directed that pending further
consideration of the matter after notice for the next date of hearing, the defendants
are restrained by themselves, their directors, employees, agents and/or others acting
on its behalf, from using the trade mark/corporate name INFOSYS or any other mark/name
deceptively similar trade mark or colourable imitation thereof as a mark and/or
corporate name or as part of a mark and/or business name, in respect of goods and/or
services, for publicity on propaganda, on websites and or in domain names, in any
way, whatsoever, thereby causing infringement of the registered trade mark INFOSYS
of the plaintiff in isolation or in combination with words/letters/numbers their
advertisements as part of their corporate name either in isolation or in goods and
services, or in or by way of any advertisement/publicity campaigns etc. Compliance
of Order XXXIX Rule 3 CPC within three days."
The said suit was transferred
to the Court of the Additional District Judge, Tis Hazari Court, Delhi. In that
suit, an affidavit came to be filed by the first respondent wherein it was stated
that the name of the company has been changed from Jupiter Infosys Limited to Jupiter
International Limited and a certificate to that effect has been issued by the Registrar
of Companies, Kolkata under the Companies Act, 1956 and no dispute remains between
the parties under the trade mark. The relevant statement made in the affidavit dated
July14, 2003 (we were informed that the date of the affidavit is July 14,2004) reads
as follows: "4. That in the meantime the defendant has already changed the
Trade Mark namely "Jupiter International Ltd." in place of "Jupiter
Infosys Ltd." The copy of the incorporation on change of name which was issued
by the registrar of the Companies are being marked and annexed herewith as Annexure
A. 5. That now there is no dispute between the plaintiff and defendant under the
Trade Mark."Based on this affidavit, the suit was partially decreed in favour
of the appellant on November 10, 2004.
2007, however, the first respondent filed a suit in the Court of Additional District
Judge, Delhi for setting aside the decree dated November 10, 2004. That suit is
said to be pending.
IPAB proceeded with the matter in light of the issues that were already framed by
the High Court and heard the parties. The IPAB in the impugned order while dealing
with the plea of limitation raised by the appellant held that the first respondent
was the appropriate aggrieved party in the matter in view of the fresh cause of
action having arisen to the first respondent on filing of Civil Suit No. 71 of 2001
by the appellant before the Madras High Court. The IPAB in the impugned order held
that the trade mark Nos. 475269, 475267 and 484837 have not been used by the appellant
for more than a period of five years and one month and the appellant also failed
to make out that it had been in manufacturing or trading of the goods for which
it had taken Registration Nos. 475269, 475267 and 484837. Consequently, the IPAB
allowed the applications made by the first respondent purportedly under Section
46(1)(b) of the 1958 Act and directed the Registrar to remove these registrations
from the register.
heard Mr. Akhil Sibal, learned counsel for the appellant and Mr. Vaibhav Gaggar,
learned counsel for the first respondent at quite some length.
Akhil Sibal, learned counsel for the appellant argued that an application for rectification,
whether under Section 46 or Section 56 of the 1958 Act, can only be preferred by
a `person aggrieved'; the applicant must not only be a person aggrieved on the date
of the application but must continue to remain a person aggrieved until such time
as the rectification application is finally decided. He contended that the first
respondent is not shown to have ever traded or intended to trade in any goods covered
by the appellant’s registrations under Classes 7 and 16 and as such the first respondent
is not a `person aggrieved' with regard to the appellant’s registrations under these
two classes. As regards Class 9 he would submit that in view of the affidavit filed
by the first respondent on July14, 2004 in the Court of Additional District Judge,
Delhi the first respondent ceases to be an aggrieved person on the date of consideration
of the rectification application. Learned counsel heavily relied upon two decisions
of this Court: (1) Hardie Trading Ltd. &Anr. v. Addisons Paint & Chemicals
Ltd.1 and (2) Kabushiki Kaisha Toshiba v. Tosiba Appliances Company & Ors.2.
the finding of the IPAB as regards non-use by the appellant during the relevant
period, learned counsel for the appellant argued that the said finding was erroneous
on legal as well as factual premise. He contended that the IPAB erred in holding
that software was a `service' and the subject registrations were in relation to
goods without considering the wide definition of `goods' provided under Section
2(g) of the 1958 Act. Mr. Akhil Sibal argued that the IPAB committed grave error
in relying upon the provisions of the 1999 Act and the Trade Marks Rules, 2002 when
these provisions were not applicable as the applications were filed under the 1958
Act. According to him, the IPAB sought to rely upon `computer programming' which
is a `service' enumerated in Class 42, without considering the distinction between
a `computer programme' and `computer programming' and without noticing entry `computer'
under Class 9 which falls within `goods'. Learned counsel would submit that in examining
the question of non-use under Section 46(1)(b), the IPAB failed to consider that
the requisite use must be `in relation to goods' under registration, which is extensively
defined under Section 2(2)(b) of the 1958 Act.
Akhil Sibal, learned counsel also argued that the IPAB failed to have regard to
the proviso to Section 46(1), in terms of which it is open to the registered proprietor
to rely upon use of the registered trade mark during the relevant period in relation
to `goods of the same description', in order to resist an application for rectification.
He contended that the IPAB failed to apply proper legal tests for determining `goods
of the same description' and had that been done it would be evident that `computer
software' amounts to `goods of the same description' as `computer hardware'. In
this regard, he relied upon M/s. Eagle Potteries Private Ltd. v. M/s. Eagle Flask
Industries Pvt. Ltd.3; Lever Brothers, Port Sunlight Ld. v. Sunniwite Products Ld.4;
The Ritz Hotel v. Charles of the Ritz5 and Australian Wine Importers' Trade Mark
counsel for the appellant also submitted that in any view of the matter, the IPAB
erred in exercising its discretion under Section 46 of the 1958 Act without taking
into consideration the aspect of public interest. He argued that the IPAB ought
to have considered whether use of mark `Infosys' by the first respondent on computer
hardware would create confusion in the mind of the consumers that they might be
led to believe that the said hardware is manufactured by the appellant. Learned
counsel, thus, submitted that the impugned order is unsustainable and liable to
be set aside.
the other hand, an objection is raised in the written submissions on behalf of the
first respondent -- and reference was made in support of the objection to seven
Judge Bench decision of this Court in L. Chandrakumar v. Union of India & Ors.7
-- that challenge to the order of IPAB directly in the appeal before this Court
under Article 136 of the Constitution is barred.
reply to the arguments of learned counsel for the appellant, Mr. Vaibhav Gaggar,
learned counsel for the first respondent strenuously urged that the plea of `aggrieved
person' is anew plea and raised substantially for the first time before this Court.
He argued that the appellant has not taken the plea of the first respondent not
being a `person aggrieved' with respect to filing of the applications for rectification
before the IPAB; merely urging the plea that the first respondent has no locus standi
in the written submissions before the IPAB is not sufficient. Learned counsel would
submit that the appellant has, for the first time, argued before this Court that
the first respondent is not a person aggrieved and/or not capable of maintaining
the rectification proceedings with respect to each and every good for which the
appellant has been registered since the first respondent has not been registered
for all the goods. Mr. Vaibhav Gaggar rather asserted that the first respondent
is a person aggrieved in view of the fact that various suits for infringement have
been filed by the appellant against the first respondent and on the date of the
applications for rectification/removal of the subject registrations from the register,
the suits were pending. With reference to the affidavit dated July 14,2004 filed
by the first respondent before the Court of Additional District Judge, he submitted
that the said affidavit has no relevance inconsideration as to whether the first
respondent is an aggrieved person as Section 46 (1) of the 1958 Act relates only
to the period up to the date of the filing of the rectification application and
the rights of the parties crystallized at that stage itself. In this regard, he
relied upon a decision of the Madras High Court in Agha Hyder Hussain &Anr.
v. Omar Khayyam Wineries (Pvt.) Ltd. & Anr.8 He also placed reliance upon some
more decisions viz; Ritz Hotel Ltd.5, Philosophy Di Alberta Ferretti9 ; Keystone
Knitting Mills Trade Mark10 and Motor Terms Company Pty. Limited. v. Liberty Insurance
Ltd.11. Learned counsel for the first respondent further submitted that the affidavit
dated July 14, 2004 was not placed by the appellant before the IPAB nor any reference
of the said affidavit has been made in the written submissions before the IPAB and
the appellant also did not make any effort to amend the pleadings that the first
respondent was not an aggrieved person. It was contended by Mr. Vaibhav Gaggar thateven
otherwise in view of the fraud perpetrated by the appellant qua the registrations
in question, the issue as to whether the first respondent had a dispute with the
trade mark or not pales in to in significance as the primary duty of the court is
to maintain the `purity of the register'. He argued that in a case such as the present
one since the allegations against the appellant relate to trafficking, squatting
and non-user, the scope of `person aggrieved' has to be enlarged. Learned counsel
submitted that the fact that the appellant continues to allege - and that stance
has not changed in the pleadings in SLP as well--that the first respondent is an
infringer, pilfriger, defrauder, someone who wants to ride on the goodwill of the
appellant or someone who wants to mislead the public at large, there is no question
of the first respondent ceasing to be a person aggrieved at any stage.
Vaibhav Gaggar, learned counsel for the first respondent contended that the appellant
is registered as a ‘manufacturer and trader' under Classes 7, 9 and 16 even though,
it is a company engaged in software only. Moreover, there is nothing on record to
indicate linkage with the manufacturing or marketing of the goods for which the
appellant is holding registration of subject trademarks. He vehemently contended
that goods in Classes 7, 9 and 16for which the appellant obtained registration were
never used in the manner contemplated by the 1958 Act for almost 30 years and thatwould
show the mala fide intention of the appellant in having the same registered for
the purpose of squatting and trafficking.
counsel for the first respondent further argued that `Infosys' is not an invented
or a coined word; the said word is an abbreviation and combination of the words
`information system'; the word `Infosys' has been used by various companies abroad
as well as within India prior to incorporation of the appellant itself and hence
cannot be called an invented word. In this regard, he relied upon a decision of
the Madras High Court in Nestle's Products (India) Ltd. v. P. Thankaraja & Anr.12.
He submitted that appellant is primarily in-service industry which is un-registrable
under the 1958 Act and since the appellant is not trading in the goods in respect
of which it is registered, it cannot be said that the mark of the appellant is distinctive
of its goods. In any case, learned counsel would submit that the expression `Infosys'
is not descriptive expression.
as discretion exercised by IPAB in ordering removal of the appellant's registrations
from the register under Section 46(1)(b) of the 1958 Act is concerned, learned counsel
for the first respondent submitted that this Court should not overturn the discretion
so exercised by the IPAB keeping in view the dishonest and fraudulent conduct of
the appellant. Lastly, he submitted that although no cross objections or cross appeal
has been filed, the first respondent has some grievance with regard to the order
of the IPA Bin not considering the case set up in the rectification/removal applications
particularly with regard to Section 56 of the 1958 Act.
regard to the order that we intend to make, we are not persuaded to accept the objection
raised on behalf of the first respondent that present appeal preferred directly
before this Court from the impugned order passed by the IPAB is not maintainable
and must be dismissed as such. Pertinently, the notice was issued in the petitions
for special leave to appeal to the respondents on November1, 2004. In response to
the said notice the first respondent filed counter affidavit before this Court on
March 11, 2005 wherein no specific objection about invocation of jurisdiction of
this Court directly has been taken. In the counter affidavit a very vague objection
in the following terms was raised: "that the present petition apart from being
false and misconceived lacks the necessary jurisdiction hence deserves outright
rejection."We are afraid, this is hardly an objection about maintainability.
Apart from it, on September 12, 2005 after hearing both parties, special leave was
granted by this Court. In the backdrop of these peculiar facts, in our view, it
is not appropriate to relegate the appellant at this distance of time to challenge
the impugned order passed by the IPAB in writ petition before the High Court. The
objection about maintainability of the appeals is, accordingly, overruled.
moot question which has been debated before us is whether or not, the first respondent
is an aggrieved person. That the first respondent filed composite applications under
Sections 46 and56 of the 1958 Act for rectification/removal of the trade mark `Infosys
‘registered in Classes 7, 9 and 16 is not in dispute. Sections 46 and56 read as
"S. 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) that the trade mark
was registered without any bona fide intention on the part of the applicant for
registration that it should be used in relation to those goods by him or, in a case
to which the provisions of section 45 apply, by the company concerned, and that
there has, in fact, been no bona fide use of the trade mark in relation to those
goods by any proprietor thereof for the time being up to a date one month before
the date of the application; or
(b) that up to a date
one month before the date of the application, a continuous period of five years
or longer had elapsed during which the trade mark was registered and during which
there was no bona fide use thereof in relation to those goods by any 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 relevant date or during the relevant
period, as the case may be, bona fide use of the trade mark by any proprietor thereof
for the time being in relation to goods of the same description, being goods in
respect of which the trademark is registered. (2) Where in relation to any goods
in respect of which a trade mark is registered-- (a) the circumstances referred
to in clause (1) of sub- section (1) are shown to exist so far as regards non- use
of the trade mark in relation to goods to be sold, or otherwise traded in, in a
particular place in India (otherwise than for export from India), or in relation
to goods to be exported to a particular market outside India; and (b) a person has
been permitted under sub- section (3) of section 12 to register an identical or
nearly resembling trade mark in respect of those goods under a registration extending
to use in relation to goods to be so sold, or otherwise traded in, or in relation
to goods to be so exported, or the tribunal is of opinion that he might properly
be permitted so to register such a trade mark, on application by that person in
the prescribed manner to a High Court or to the Registrar, the tribunal may impose
on the registration of the first-mentioned trade mark such limitations as it thinks
proper for securing that that registration shall cease to extend to such use. (3)
An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section
(1) or for the purposes of sub-section (2) on any non-use of a trade mark which
is shown to have been due to special circumstances in the trade and not to any intention
to abandon or not to use the trademark in relation to the goods to which the application
relates.""S. 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 or 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 register."
position that emerges from the above provisions is this. Whether the application
is under Section 46 or under Section 56or a composite application under both Sections,
it is a pre-requisite that the applicant must be a person aggrieved. Section 46(1)
of the1958 Act enables any person aggrieved to apply for removal of registered trade
mark from the register on the ground of non use as stated in Clause (a) and/or Clause
(b). To be an aggrieved person under Section 46, he must be one whose interest is
affected in some possible way; it must not be a fanciful suggestion of grievance.
Alikeli hood of some injury or damage to the applicant by such trademark remaining
on the register may meet the test of locus standi. InKerly's Law of Trade Marks
and Trade Names (11th edition) at page166, the legal position with regard to `person
aggrieved' has been summarized thus : The persons who are aggrieved are all persons
who are in some way or the other substantially interested in having the mark removed
- where it is a question of removal - from the register; including all persons who
would be substantially damaged if the mark remained, and all trade rivals over whom
an advantage was gained by a trader who was getting the benefit of a registered
trade mark to which he was not entitled. We accept the above statement oflaw.
as Section 56 is concerned, it provides for varying situations in which the person
aggrieved may apply for rectification of the registered trade mark from the register.
Although both Sections, namely, Sections 46 and 56 require `person aggrieved' to
apply for removal of the registered trade mark from the register or rectification
of a trade mark in the register, the expression `person aggrieved' for the purposes
of these two Sections has different connotations.
interpretation of the expression `person aggrieved' occurring in Sections 46 and
56 has come up for consideration before this Court on more than one occasion. In
Hardie Trading Ltd.1, this Court state das follows: "
phrase "person aggrieved" is a common enough statutory precondition for
a valid complaint or appeal. The phrase has been variously construed depending on
the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the
Act contain the phrase. Section 46 deals with the removal of a registered trade
mark from the Register on the ground of non-use. This section presupposes that the
registration which was validly made is liable to be taken off by subsequent non-user.
Section 56 on the other hand deals with situations where the initial registration
should not have been or was incorrectly made. The situations covered by this section
include: (a) the contravention or failure to observe a condition for registration;
(b) the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong
entry; and (e) any error or defect in the entry. Such type of actions is commenced
for the "purity of the Register" which it is in public interest to maintain.
Applications under Sections 46 and 56 may be made to the Registrar who is competent
to grant the relief."Persons aggrieved" may also apply for cancellation
or varying an entry in the Register relating to a certification trade mark to the
Central Government in certain circumstances. Since we are not concerned with a certification
trade mark, the process for registration of which is entirely different, we may
exclude the interpretation of the phrase "person aggrieved" occurring
in Section 69 from consideration for the purposes of this judgment.
our opinion the phrase "person aggrieved" for the purposes of removal
on the ground of non-use under Section46 has a different connotation from the phrase
used in Section56 for cancelling or expunging or varying an entry wrongly made or
remaining in the Register.
the latter case the locus standi would be as curtained liberally, since it would
not only be against the interest of other persons carrying on the same trade but
also in the interest of the public to have such wrongful entry removed. It was in
this sense that the House of Lords defined "person aggrieved" in the matter
of Powell's Trade Mark: "... although they were no doubt inserted to prevent
officious interference by those who had no interest at all in the register being
correct, and to exclude a mere common informer, it is undoubtedly of public interest
that they should not be unduly limited, inasmuch as it is a public mischief that
there should remain upon the register a mark which ought not to be there, and by
which many persons may be affected, who, nevertheless, would not be willing to enter
upon the risk and expense of litigation. Whenever it can be shown, as here, that
the applicant is in the same trade as the person who has registered the trademark,
and wherever the trade mark, if remaining on the register, would, or might, limit
the legal rights of the applicant, so that by reason of the existence of the entry
on the register he could not lawfully do that which, but for the existence of the
mark upon the register, he could lawfully do, it appears to mehe has a locus standi
to be heard as a person aggrieved."
if the ground for rectification is merely based on non- user i.e. under Section
46 of the Act, that is not really on account of any public mischief by way of an
incorrect entry. The non-user does not by itself render the entry incorrect but
it gives a right to a person whose interest is affected to apply for its removal.
An applicant must therefore show that "in some possible way he may be damaged
or injured if the trade mark is allowed to stand; and by `possible' I mean possible
in a practical sense and not merely in a fantastic view.... All cases of this kind,
where the original registration is not illegal or improper, ought to be considered
as questions of common sense, to a certain extent, at any rate; and I think the
applicants ought to show something approaching a sufficient or proper reason for
applying to have the trade mark expunged. It certainly is not sufficient reason
that they are at loggerheads with the respondents or desire in some way to injure
application was one under Section 46 and the test to determine whether the applicant
was a "person aggrieved" within the meaning of that section should have
been the one laid down by Romer, J. in Wright case and not the one propounded by
the House of Lords in the matter of Powell's Trade Mark. The High Court and the
Joint Registrar fell into error in not drawing this distinction. However, it is
not necessary to dilate on this aspect of the matter as the appellant has really
argued on the second and third aspects of Section 46 viz. the alleged non-use of
the trade marks by Hardie and special circumstances".29. In the case of Hardie
Trading Ltd.1, this Court approved the test applied by Romer, J. in The Royal Baking
Powder Company. Wright, Crossly, and Co.13, which has been reproduced in para33
of the report. We respectfully agree.
Trading Ltd.1 has been followed by this Court in are sent decision in the case of
Kabushiki Kaisha Toshiba2. This Court stated that Section 46 speaks for private
interest while Section 56speaks of a public interest.
is true that the appellant in opposition to the applications for removal/rectification
of trade mark did not specifically challenge in its counter affidavits the locus
standi of the first respondent to be heard as a person aggrieved. Obviously, in
the absence of any specific objection by the appellant to that effect, no specific
issue was framed by the High Court whether the applicant was an aggrieved person.
The applications having been transferred to the IPAB in terms of Section 100 of
the 1999 Act, the IPAB examined the matter in light of the issues that were framed
by the High Court although in the written submissions before it, the objection was
raised that the first respondent has ceased to have locus stand in view of the subsequent
events, particularly change of the name of the first respondent from Jupiter Infosys
Ltd. to Jupiter International Ltd. The question is, whether in these circumstances
it was incumbent upon the IPAB to consider and satisfy itself about the locus standi
of the first respondent to be heard as a person aggrieved. In our considered view,
it was. In the first place, when the first respondent applied for rectification/removal
in respect of three registrations in Classes 7, 9 and 16, it must have shown in
respect of each of them that it is a `person aggrieved' and the IPAB must have separately
considered in respect of each registration the locus standi of the first respondent
as the considerations for each entry might not have been common. Secondly, and more
importantly, during the pendency of the applications, certain events had taken place
which had some bearing on the question of locus standi of the first respondent insofar
as invocation of Section 46 (1) of the 1958 Act is concerned. In the affidavit filed
by the first respondent on July 14,2004 before the Court of Additional District
Judge, Delhi an unequivocal and categorical statement has been made that now there
is no dispute between the plaintiff (appellant herein) and defendant(first respondent
herein) under the Trade Mark and that defendant has already changed the Trade Mark
namely "Jupiter International Ltd." in place of "Jupiter Infosys
terms of Section 46(1), not only that the applicant has to show that he is an aggrieved
person as his interest is being affected but the IPAB must also be satisfied, before
it directs the removal of registered trade mark, that the applicant is an aggrieved
person before it invokes the power in directing the removal of the registered trade
mark. This is so because the pre-requisite for exercise of power under Section 46(1)
is that the applicant is a person aggrieved.
The question then arises, whether it is sufficient for the applicant to show that
he is a person aggrieved when he makes his application or he must continue to remain
a person aggrieved until such time as the rectification/removal application is finally
decided. In our view, the grievance of the applicant when he invokes Section46(1)
must not only be taken to have existed on the date of making application but must
continue to exist when such application is decided. If during the pendency of such
application, the applicant's cause of complaint does not survive or his grievance
does not subsist due to his own action or the applicant has waived his right or
he has lost his interest for any other reason, there may not be any justification
for rectification as the registered trade mark cannot be said to operate prejudicially
to his interest. In re Apollinaire Company's Trade-Marks while dealing with this
aspect, Kekemich,J. stated : ".....because that is a remedy given to the person
aggrieved through the interposition of the Court for the benefit of the14 (1891)
2 Ch. 186 , and if at the date of the trial he has no cause of complaint it seems
to be monstrous to suppose that the Court will rectify the register at his instance
when it can do him no good to rectify, and when the retention on the register can
do him no harm merely because at the date of his application he may have had some
grievance."We concur with the above statement.
In the circumstances, we are satisfied that the applications made by the first respondent
for rectification/removal of the subject trade marks from the register need to be
considered afresh by the IPAB in accordance with law and the observations made above.
Since the first respondent has also grievance in connection with the impugned order
particularly with regard to non-consideration of its case under Section 56 of the
1958 Act, we refrain from going into the merits of the diverse contentions raised
before us and leave the parties to agitate these contentions before the IPAB.
view of the above, these appeals are allowed in part and the impugned order dated
September 9, 2004 is set aside. The applications being TRA Nos. 25 to 27 of 2003
(OP Nos. 764 to 766 of2001) are restored to the file of Intellectual Property Appellate
Board, Chennai for hearing and disposal afresh in accordance with law. The parties
shall bear their own costs.
J. (Aftab Alam)