Delhi High Court
Kohinoor Paints Faridabad (P) Ltd. vs Paramveer Singh And Anr. on 19 September, 1995
Equivalent citations: 1995(35)DRJ151
Author: K. Ramamoorthy
Bench: K. Ramamoorthy
JUDGMENT K. Ramamoorthy, J.
(1) The point involved in the above Civil Original Petition is a very short one. It relates to the alleged assignment of trade mark in favor of the respondent. The plaintiff got that registration on 26th of March 1982. In 1989 the extension was granted. The respondent, according to the petitioner, was an employee of the petitioner Co. On 2nd of November 1992 Tirlok Singh, who was in the entire control of the Company died. On 13th of September 1994 the services of the respondent were terminated by the petitioner Co. It would appear that on the 15th of October 1994 the defendant filed a suit in the District Court for injunction on the basis of the assignment of trade mark in his Company. What is stated by the petitioner is that the alleged assignment letter dated 19th of June 1992 had been relied on by the respondent before the Registrar and made an application under T.M. 24, as provided in Rule 71 for recognition of the assignment and without any enquiry was a concocted one. It would appear on 26th of August 1994 the transfer was affected by the Registrar. The petitioner came to know about it only from the suit filed by the respondent before the District Court, Delhi. Hence this petition.
(2) The argument on behalf of the petitioner is that under Section 44 of the Trade Marks Act if there is a dispute relating to the title to the trade mark the Registrar has no power to order the transfer and the Registrar should have issued the notice to the petitioner before transfer and inasmuch as the Registrar violated the basic principles of natural justice the order is void. The learned counsel for the petitioner relied upon the judgment of the Supreme Court in 1954 S.C. 340 and Radha Kishan Khandelwal vs. Assistant Registrar of Trade Marks and others, . The learned counsel for the respondent contended per contra that no notice is required to be given to the petitioner and the only remedy, if any, of the petitioner is to file an appeal under Section 109 of the Trade Marks Act to the appropriate authority and there is no infirmity in the order passed by the Registrar. 3. Section 44 of the Trade & Merchandise Marks Act reads as follows :- "44.Registration of assignments and transmissions. (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission to be entered on the register: Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court. (2) Except for the purpose of a application before the Registrar under sub section (1) or an appeal from an order thereon, or an application under Section 56 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub section (1), shall not be admitted in evidence by the Registrar or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the court, as the case may be, otherwise directs."
(3) By virtue of the power conferred on the Government, Rules have been framed and Rule 71 of the Rules reads as follows :- "R.71. Application for entry of assignment or transmission.- An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on Form TM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor."
There are two Application Forms provided in the Act. One is TM-23 and the other is TM-24. The format of these two forms are as follows :-
Form TM-23 Trade And Merchandise Marks Act, 1958 Joint request by registered proprietor and transferee to register the transferee as subsequent proprietor of trade marks upon the same devolution of title, Section 44. Rule 71.
We .........................and............ hereby request, under rule 71, that the name of......... carrying on business as ..... at ........ may be entered in the Register of Trade Marks as proprietor of the trade mark(s) No...... in Class...... as from the .... by virtue of ........ of which the original and an attested copy are enclosed herewith. The assignment of the trade mark (not) made otherwise than in connection with the goodwill of the business in which the mark (had been) (was) used (and there is sent herewith copy of the Registrar's direction to advertise the assignment, a copy of each of the advertisements, complying therewith, and a statement of the dates of issue of any publications containing them).
We declare that the facts and matters stated herein are true to the best of our knowledge, information and belief. Dated this .... day of .... 19 To The Registrar of Trade Marks, The Office of the Trade Marks Registry at Form TM-24 Trade And Merchandise Marks Act, 1958 Request to register a subsequent proprietor of a trade mark or trade mark upon the same devolution of title. Section 44. Rule 71 I (or We).................... ............... .... ................... ... hereby request that my (or our) name may be entered in the Register of Trade Marks as proprietor of trade mark (s) No.(s).... in Class....... as from the .....
I am (or We are) entitled to the trade mark(s) by virtue of ............ ... .................... of which the original and an attested copy are enclosed herewith.
The assignment of the trade mark was (not) made otherwise than in connection with the goodwill of the business in which the mark (had been) (was) used (and there is sent herewith a copy of the Registrar's direction to advertise the assignment, a copy of each of the advertisement complying therewith, and a statement of the dates of the issue of any publication containing them.
I (or We) declare that the facts and matters stated herein are true to the best of my (or our) knowledge, information and belief. Dated this .... day of .... 19 To The Registrar of Trade Marks, The Office of the Trade Marks Registry at.
(4) The respondent for reasons best known to him filed an application in Form No. TM-24.
(5) It is well settled that once an order is passed in violation of the principles of natural justice e order is void in law and if that order is relied on for any purpose it can be challenged whenever and wherever it is produced. The decision of the Supreme Court in Kiran Singh and others vs. Chaman Paswan and others, is clear on that point. In an innumerable decisions the Supreme Court and other High Courts have followed the above case and I need not refer to all the cases.
(6) I am of the view that the Registrar ought to have given notice to the petitioner and without calling upon the petitioner to ascertain whether any assignment had been given by the petitioner Co. to the respondent the Registrar ought not have ordered the petition for assignment. The proviso to Section 44 in unmistakable terms provides that if there is a dispute relating to the right to the trade mark competent Court should adjudicate on the matter and Registrar should have ascertained on a prima facie consideration whether there was any dispute at all. In , though the question decided was slightly different one, this Court held as under:- "IT appears to me to be implicit in these rules that when an application for registration of assignment or transmission is made by some persons in respect of a trade mark in which the names of certain other persons are shown as registered proprietors, before any action is taken on that application, the persons whose names are already on the register must have a notice of that application. If the requirement of Section 44 is that the applicant should prove his title to the trade mark and the title set up by him is pitched against the title of someone else whose name is already borne on the register the inquiry must be conducted in the presence of both the parties."
(7) In State Bank of India vs. Rajendra Kumar Singh, the Supreme Court had approved of the decision in Cooper v. Wandsworth Board of Works, (1863) 14 Cbns 180 relied on by this Court in Radha Kishan Khandelwal vs. Asst. Registrar, Trade Marks and others, .
(8) In Syed Abdur Rahman vs. Tripura Modern Bank Ltd., the question arose in the same form in which it has arisen in this case. This Court expressed the view that the Registrar ought to have issued notice to the concerned party. The same view had been taken by the High Court of Andhra Pradesh in 1968 (I) Andhra Pradesh Weekly Report 393. In 79 (1977) Bombay Law Report 61 the Bombay High Court had stated that the Court should consider not only the conduct of the parties but also the point of view of purity of registration in public interest. 9. In view of the provisions in Section 44, I am of the view that the petition has to be allowed and the order of Registrar dated 26th August 1994 should be set aside. Sections 46, 56, 57, 107 of the Trade & Merchandise Marks Act, 1958, which are relevant and they read as follows:- "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 is 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 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 trade mark 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 (b) 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 sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is opinion that he might properly be permitted so to register such a trade mark; on application by that person to 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 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 trade mark in relation to the goods to which the application relates. 56. Power to cancel or vary registration and to rectify the register.1 (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 it. (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 rectifying 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. 57. (1) Correction of register.- The Registrar may, on application made in the prescribed manner by the registered proprietor.- (a) correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark (b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark; (c) cancel the entry of a trade mark on the register; (d) strike out any goods or classes of goods from those in respect of which a trade mark is registered; (e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark; and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him. (2) The Registrar may, on application made in the prescribed manner by a registered user of a trade mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, address or description of the registered user. 107. Application for rectification of register to be made to High Court in certain cases : (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defense under clause (d) of sub- section (I) of Section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in Section 46, sub-section (4) of Section 47 or Section 56, such application shall be made to the High Court and not to the Registrar. (2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under Section 46 or sub-section (4) of Section 47 or 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court." 10. The first respondent has filed the suit No. 266/94 on the file of Shri R.C. Jain, Addl. District Judge, Delhi. Therefore, it is clear that there is a dispute between the parties as the alleged assignment is challenged by the petitioner herein. I don't feel it proper to make a remittal order to the Registrar (second respondent) for the purposes of coming to a prima facie view about the existence of the dispute within the meaning of proviso to Section 45. 11. In the light of the mandatory provisions in the Trade & Merchandise Marks Act, 1958, the Registrar ought to have issued notice to the petitioner before ordering the assignment relied upon by the respondent. Accordingly, the Co. 19/94 is allowed, the order of Registrar of Trade Marks, second respondent, dated 26th of August 1994 is set aside and the name of the petitioner Kohinoor Paints Faridabad (P) Ltd. shall be in the Register as the proprietor of Trade Mark No. 388107, the petition filed by the first respondent in Form TM-24 dated 17.8.94 stands dismissed and the first respondent shall be entitled to apply, in the event of his being successful in suit No. 266/94 on the file of Shri R.C. Jain, Addl. District Judge, Delhi. There is no order as to costs.