Commnr., Central
Excise, Bangalore Vs. M/S. Meyer Health Care Pvt. Ltd. & Ors.
O R D E R
These appeals are
directed against the judgment and order of the Custom, Excise and Gold (Control)
Appellate Tribunal (CEGAT), South Zone Bench allowing the appeal filed by the Appellant
before the Tribunal and holding that since there is an Assignment Deed in
favour of the respondent in the present case, therefore, the respondent shall
be entitled to the benefit of the Exemption Notification. The aforesaid findings
of the Tribunal are under challenge in this appeal on which we have heard the learned
counsel appearing for the parties. Counsel appearing for the appellant has
submitted that on the date when the case was registered against the respondent,
there was no Assignment Deed executed in favour of the respondent and, therefore,
the respondent is not entitled to take benefit of the aforesaid Assignment Deed
to avail benefit under the exemption notification.
The counsel appearing
for the respondent, however, refutes the aforesaid submission contending, inter
alia, that so far the brand name is concerned, the owner of the brand name has assigned
the trade mark in favour of the respondent and, therefore, in view of the
decision of the Supreme Court in CCE, Ahmedabad Vs. Vikshara Trading &
Invest P. Ltd. & Anr. Reported in 2003(58) RLT 604(SC) the respondent is entitled
to avail the benefit of the Exemption Notification. However, our attention is drawn
to another decision of this Court by the counsel appearing for the appellant in
Meghraj Biscuits Industries Ltd. Vs. Commissioner of C. Ex., U.P. Reported in
2007 (210) ELT 161 (SC) wherein almost a similar issue came to be considered by
this Court and while dealing with the same, this Court observed thus: "On reading
the above quoted paragraphs from the above judgment, with which we agree, it is
clear that the effect of making the registration certificate applicable from retrospective
date is based on the principle of deemed equivalence to public user of such mark.
This deeming fiction cannot be extended to the Excise Law.
It is confined to the
provisions of the Trade Marks Act. In a given case like the present case where there
is evidence with the Department of the trade mark being owned by M/s. Kay Aar
Biscuits (P) Ltd. and where there is evidence of the appellants trading on the
reputation of M/s. Kay Aar Biscuits (P) Ltd. which is not rebutted by the appellants
(assessee), issuance of registration certificate with retrospective effect cannot
confer the benefit of exemption notification to the assessee. In the present case,
issuance of registration certificate with retrospective effect from 30-9-91 will
not tantamount to conferment of exemption benefit under the Excise Law once it is
found that the appellants had wrongly used the trade mark of M/s. Kay Aar
Biscuits (P) Ltd.
"According to the
provisions of the Trade Marks Act, for getting registration of a trade mark, an
application is required to be filed in accordance with the provisions
incorporated in the said Act. Such an application is required to be advertised
and a detailed procedure is required to be followed before grant of a registration
in favour of a claimant. Since a variety of procedural steps are required to be
taken like issuing an advertisement, hearing objections, if any filed, it becomes
a lengthy procedure and, therefore, time consuming for grant of a registration
in matters of trade mark. But once registration is granted in respect of a particular
trade mark in terms of the application according to the provisions of the Trade
Marks Act, the registration dates and relates back to the date of application.
However, the position
appears to be different as has been held by this Court so far excise law is concerned.
This Court has already held in the aforementioned decision that effect of making
the registration certificate applicable from retrospective date under the trade
mark law is based on the principle of deemed equivalence to public user of such
mark whereas such deeming fiction cannot be extended to the excise law and that
the same is only confined to the provisions of the Trade Marks Act. Admittedly,
in the present case, the assignment of the trade mark in question granted in
terms of the agreement entered into between the parties was on 6.10.1998, which
is subsequent to the date of registration of the case by the Department, which
was done on 19.9.1998.
As to whether or not
the effect and in fact, the aforesaid Assignment Deed which is granted in
favour of the respondent would relate back prior to a date of 19.9.1998 and consequence
thereof is a matter which is not decided by the Tribunal. Since the same is an issue
which is relevant and relates to determination of the factual aspects, it would
be appropriate to have a decision of the Tribunal on the said issue. We
consider that it may not be proper for us to decide such a disputed question of
fact by ourselves.
We, therefore, remit back
this matter to the Tribunal for consideration of the aforesaid issue as to
whether or not the Assignment Deed which was entered into between the respondent
and the owner of the trade mark on 6.10.1998 would also be applicable to the
case in hand and would date back prior to a period of 1998 to be considered and
decided by the Tribunal by recording an effective and reasoned decision. Therefore,
we set aside the order of the Tribunal to the aforesaid extent and remit back
the matter to the Tribunal for de novo consideration of the aforesaid issue as
expeditiously as possible, preferably within a period of six months. The appeal
is allowed to the aforesaid extent. In view of the aforesaid order, as are
also disposed of. We make it clear that this order is confined only to the
aforesaid issue and nothing more at this stage.
.......................J.
(Dr. MUKUNDAKAM SHARMA)
......................J.
(ANIL R. DAVE)
NEW
DELHI,
APRIL
07, 2011
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