Delhi High Court
V.R. Holdings vs Hero Investcorp Limited And Anr. on 6 March, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
Neutral Citation Number : 2023/DHC/001633
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 22thDecember 2022
Pronounced on: 6th March, 2023
+ C.O. (COMM.IPD-TM) 163/2021 and I.A. 20341/2022
V.R. HOLDINGS ..... Petitioner
Through: Mr. Akhil Sibal, Sr. Adv. with
Mr. Ankur Sangal, Ms. Pragya Mishra,
Mr.Shashwat Rakshit, Ms. Trisha Nag,
Mr.Nikhil Chawla, Ms. Asavari Jain and
Ms.Sanya Kumar, Advs.
versus
HERO INVESTCORP LIMITED AND ANR. ..... Respondents
Through: Mr. Rajiv Nayar and
Mr.Sandeep Sethi, Sr. Advs. with Mr. Rishi
Agrawal, Mr. Karan Luthra, Mr. Ankit
Banati, Mr. Saurabh Seth, Ms. Manavi
Agarwal, Mr. Siddharth, Mr. Kanishk
Kumar and Mr. Vikram Singh Dalal, Advs.
for R-1
Mr.Harish Vaidyanathan Shankar, CGSC
with Mr.Srish Kumar Mishra, Mr,Sagar
Mehlawat, Mr.Alexander Mathai Paikaday,
Advs. for R-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
% JUDGMENT
06.03.2023
1. Originally filed as an application under Section 571 of the Trade
Marks Act, 1999 (as it then read) before the learned Intellectual
1
57. Power to cancel or vary registration and to rectify the register -
(1) On application made in the prescribed manner to the High Court or to the Registrar by
any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
Property Appellate Board (IPAB), this petition was, consequent to the
abolition of the learned IPAB by the Tribunals Amendment Act, 2015,
transferred to this Court is an Original Petition.
2. The petitioner V. R. Holdings seeks, by means of the present
petition, removal, from the Register of Trade Marks, the mark ‗HERO
GROUP' registered in favour of Defendant 1 Hero InvestCorp Ltd
under Class 10, for ―Surgical, Medical, Dental and Veterinary
Instruments and Apparatus including Artificial limbs, eyes and teeth,
Components Fitting Accessories and Peripherals thereof Orthopedic
Defence Articles Stretchers Suture Materials Inhalers‖.
3. The petitioner is a partnership firm, established on 1st May
2010, comprising Vijay Munjal, Rekha Munjal, Naveen Munjal and
Gaurav Munjal. The petitioner claims to be the ―trademark holding
entity‖ of the petitioner's ―group of companies‖, according to the
petition, which includes Hero Ecotech Ltd, Hero Eco Med Pvt. Ltd.,
Mediva Healthcare Pvt. Ltd., Hero Electric Vehicles Pvt. Ltd. and
Hero Exports. The petitioner's group of companies, according to the
petition, belonged to the Munjal Group, which, in 1956, began to use
the trademark ‗HERO' for bicycles and bicycle parts and,
subsequently, expanded its business considerably.
4. Admittedly, on 20th May 2010, a Family Settlement Agreement
(FSA) and a Trade Mark and Name Agreement (TMNA) were
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 the High
Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such
order for making, expunging or varying the entry as it may think fit.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
executed, whereunder the businesses of the Munjal Group were
divided among four Family Groups, designated F-1, F-2, F-3 and F-4.
The TMNA, with which we are particularly concerned, assigned,
among the four Family Groups, the various trademarks which they
were entitled to use, as well as the goods or services in respect of
which they were entitled to do so. The relevant clauses of the FSA and
TMNA may be reproduced as under:
Relevant Clauses of the FSA
―22.5 No waiver of rights
No failure or delay of any Party or Family Group in
exercising any claim, power, right or privilege hereunder
shall operate as a waiver, nor shall any single or partial
exercise of any such power, right or privilege preclude any
further exercise thereto or any other power, right or
privilege. A remedy or right conferred on the Party for
breach of this Family Settlement Agreement shall be in
addition to and without prejudice to all other rights and
remedies available to it under applicable law. Any waiver
in exercising any claim, power, right or privilege hereunder
by a Party to this Family Settlement Agreement shall only
be in writing.‖
―22.6 Entire Settlement; Amendment; Supremacy; Board
approval
*****
(b) No amendment to this Family Settlement
Agreement or the agreements related hereto shall be
effective unless it is in writing and executed by the Parties
hereto or thereto, as the case may be and consented to by
all the Parties hereto.‖
Relevant Clauses of the TMNA
―1.1 Definitions
*****
1.1.6 ―F1 Family Group Product and Services‖ means:
a. existing trading business for exports;
b. import in India of two wheeler electric vehicles &
parts thereof and bicycle parts;
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Signing Date:06.03.2023
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c. electric/environment friendly vehicles (i.e. non fuel
land vehicles) and their components, and their related
infrastructure;
d. projects, plants & equipment, components in the
field of Solar Energy, Wind Energy and other Renewable
Energy;
e. Medical Products & Lifestyle Care equipment for
Hospitals, Rehabilitation and Homes.
1.1.7 ―F1 Family Group Trade Marks‖ means:
a. the trademark HERO EXPORTS, registered or
unregistered, owned and/or used upon or in relation to or in
connection with the trading business of M/s Hero Exports
for exports relating to sale, marketing of its trading items,
other than those items covered in clause 1.1.7(d) below,
and import in India of two wheeler electric vehicles & parts
thereof and bicycle parts;
b. the trademark HERO ELECTRIC, registered or
unregistered, owned and/or used upon or in relation to or in
connection with the electric/environment friendly vehicles
(i.e. non fuel land vehicles) and components, and related
infrastructure;
c. the trademark HERO ECO, registered or
unregistered, owned and/or used upon or in relation to or in
connection with the business relating to projects, plants &
equipment, components in the field of Solar Energy, Wind
Energy and other Renewable Energy, and Medical
Products & Lifestyle Care equipment for Hospitals,
Rehabilitation & Homes; and
d. the trademark HERO registered or unregistered and
used for export of Bicycles and Bicycle parts by F1 Family
Group for all territories, other than USA, Russia, Australia,
New Zealand, Japan and European Union (except UK,
Germany & Turkey), which exclusively are retained by F4
Family Group.
1.1.8 ―Other Products and Services‖ means all types of goods
and services currently manufactured, sold/marketed, distributed,
offered and rendered by the Parties and/or its Affiliates, group
companies, joint venture companies and subsidiary companies
except for the Bicycle/Automotive Products and Services and F 1
Family Group Products and Services as defined hereinabove;
1.1.9 ―Other Products and Services Trade Marks‖ means the
trade mark and name HERO, with or without suffixes, registered or
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By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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unregistered, owned and/or used upon or in relation to, or in
connection with the Other Products and Services as defined
hereinabove.
1.1.10 ―Future Products and Services‖ means all goods and/or
services which are not currently manufactured, sold/marketed,
distributed, offered and rendered by the Parties and/or their
Affiliates, group companies, joint venture companies and
subsidiary companies.
1.1.11 ―Future Products and Services Trade Marks‖ means the
trade mark and name HERO with or without suffixes, registered or
unregistered, to be owned and/or used upon or in relation to or in
connection with Future Products and Services as defined
hereinabove.
1.2 In this Agreement:
(a) Headings and bold typeface are only for
convenience and shall be ignored for the purpose of
interpretation.
*****
2. UNDERSTANDING BETWEEN THE PARTIES
The parties fully understand and agree that the ownership and use
of the trade mark and the name HERO heretofore shall be in
accordance with the following terms:
(i) F4 Family Group shall have the exclusive right of
ownership and use over Bicycle/Automotive Trademarks;
(ii) F1 Family Group shall have the exclusive right of
ownership and use over F1 Family Group Trade Marks;
(iii) F3 Family Group shall have the exclusive right of
ownership and use over Other Products and Services Trade
Marks and Future Products and Services Trade Marks;
*****
(v) Notwithstanding anything to the contrary contained
in this Agreement, F3 Family Group shall have the
exclusive and perpetual right to own and use the legend
‗HERO GROUP' with or devices upon or in relation to all
Other Products and Services and Future Products and
Services;
*****
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
(ix) All residuary rights relating to or in connection with
the trade mark and name HERO either registered or
pending registration or otherwise shall, except as stated
hereinabove, exclusively vest with F3 Family Group for
perpetuity, including but not limited to electronic media,
internet, email server, domain names etc.‖
The dispute in the present case meanders amongst these clauses of the
TMNA, and the Court is confronted with the task of steering it to its
rightful destination.
5. On 1st November 2010, Puja Investments Pvt Ltd, as
Respondent 1 Hero InvestCorp was then called, applied to the Trade
Mark Registry under Section 18(1)2 of the Trade Marks Act for
registration of the HERO GROUP mark in its favour, for surgical,
medical, dental and veterinary instruments and apparatus (including
artificial limbs, eyes and teeth) components, fittings, accessories and
peripherals thereof, orthopedic articles, stretchers, suture materials,
inhalers (collectively referred to, hereinafter, as ―medical products‖).
Respondent 1 claimed, in the application, to be the proprietor of the
HERO GROUP trade mark, and to have been continuously using the
said mark since 20th May 2010 in respect of medical products.
6. On 22nd February 2016, the application of Respondent 1 was
accepted and advertised in the Trade Marks Journal, inviting
objections. No objections were received, whereupon the application
proceeded to registration. The mark HERO GROUP, in respect of
medical products was, therefore, registered in favour of Respondent 1
on 30th August 2016, with effect from 1st November 2010. It
2
18. Application for registration. -
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by
him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed
manner for the registration of his trade mark.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
continues to be valid and subsisting, and is due to expire on 1 st
November 2030.
7. History of Proceedings till date
7.1 The present petition was filed as a fresh rectification petition
under Section 57 of the Trade Marks Act before this Court,
consequent to abolition of the Intellectual Property Appellate Board
(IPAB) by the Tribunals Reforms Act, 2021.
7.2 Notice was issued in the present petition by order dated 18 th
April 2022, which read thus:
―1. This hearing has been done through hybrid mode.
2. This is a fresh cancellation petition seeking cancellation of
trademark registration No.2047366 in Class 10 for the trademark
‗HERO GROUP' registered in favour of Respondent No.1. The
Petitioner is the trade mark holding entity of the Petitioner's group
of companies which includes entities such as Hero Ecotech
Limited, Hero Eco Med Private Limited, Hero Electric Vehicles
Private Limited, and Hero Exports. The Petitioner relies upon the
Family Settlement Agreement dated 20th May, 2010 for seeking
rectification. Issue notice.
3. Mr. Luthra accepts notice on behalf of the Respondent
No.1. Let a reply along with any documents relied upon, be filed
within four weeks. Rejoinder be filed within four weeks thereafter.
4. Both parties agree that the matter can be decided on the
basis of the pleadings and documents which will be filed by the
parties.
5. Let a fresh paper book be served upon the ld. Counsel for
the Respondent No.1 by the ld. Counsel for the Petitioner within
three days.
6. On behalf Respondent No.2, let a copy of the paper book be
served upon Mr. Harish V. Shankar, ld. CGSC.
7. List for hearing on 18th July, 2022.‖
(Emphasis supplied)
Signature Not Verified
C.O. (COMM.IPD-TM) 163/2021 Page 7 of 57
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
It was agreed between the parties, therefore, that the present petition
could be decided on the basis of pleadings and documents filed by the
parties. Impliedly, therefore, the parties did not seek to subject the
present proceedings to the rigour of recording of evidence,
examination, cross examination, etc.
7.3 By subsequent order dated 4th August 2022, this Court noted
that pleadings stood complete in the present petition, which was to be
finally heard. The order read thus:
―1. This hearing has been done through hybrid mode.
2. The present petition has been received on transfer.
3. Pleadings are complete in the cancellation petition. The
matter is to be finally heard.
4. List for final hearing on 13th October, 2022.‖
7.4 Subsequently, this case was argued in detail, by Mr. Akhil
Sibal, learned Senior Counsel for the petitioner and by Mr. Rajiv
Nayar, learned Senior Counsel for Respondent 1.
7.5 During the course of proceedings, certain additional documents
were sought to be brought on record, by the petitioner vide I.A.
20294/2022. Though Mr. Rajiv Nayar objected to the said documents
being taken on record and submitted that, if the court was inclined to
allow the said documents to be filed at that stage, the respondent
would have the right to lead evidence to controvert the said
documents, I am of the opinion that the submission cannot be
accepted. The order dated 18th April 2022 clearly recorded the
agreement, of both sides, that the matter could be decided on the basis
of the pleadings and the documents which will be filed by the parties.
Signature Not Verified
C.O. (COMM.IPD-TM) 163/2021 Page 8 of 57
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
The right of the parties to file documents was, therefore, reserved by
the order dated 18th April 2022, with consent of both sides. It is not
open, therefore, to Mr. Nayar to object to the filing of additional
documents by the petitioner under I.A. 20294/2022.
7.6 In view of the order dated 18th April 2022, this Court allows the
said application. The documents filed with the application are taken
on record.
7.7 The respondent also filed I.A. 20341/2022 during the course of
present proceedings, praying that the petition be summarily dismissed
in view of certain admissions allegedly made by the petitioner in its
pleadings. Inasmuch as the court is finally deciding the present
petition after hearing both sides, this application has been rendered
infructuous and is disposed of as such.
Rival Contentions
8. Contentions of Mr. Akhil Sibal, learned Senior Counsel for the
petitioner
8.1 Mr. Akhil Sibal points out that Section 18 of the Trade Marks
Act specifically allows the proprietor of a trademark to apply for its
registration. None other than a proprietor can, therefore, seek
registration of a trademark. Mr. Sibal's contention is that the F-3
Group, represented by Respondent 1, was not entitled, under the FSA
and TMNA, to regard itself as the lawful proprietor of the HERO
GROUP trademark in respect of medical equipment. The F-3 group
could not, therefore, seek registration of the mark HERO GROUP in
its favour for medical equipment. The impugned registration is,
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
therefore, according to Mr. Sibal, violative of Section 18 of the Trade
Marks Act.
8.2 This position is sought to be explained from the various Clauses
of the TMNA thus:
(i) Clause 2 of the TMNA specifies the manner in which the
various trademarks would be owned and used by the four
Family Groups. According to the said Clause,
(i) the F-1 Family Group (represented by the
petitioner) would have exclusive right of ownership and
use over the F-1 Family Group Trade Marks, and
(ii) the F-3 Family Group would have exclusive right
of ownership and use over
(a) Other Products and Services Trade Marks
and
(b) Future Products and Services Trade Marks.
(ii) Clause 2(v) further stipulated that, notwithstanding
anything to the contrary contained in the TMNA, the F-3
Family Group would have exclusive right of ownership and use
of the HERO GROUP trade mark in relation to all Other
Products and Services and Future Products and Services.
(iii) ―Other Products and Services Trademarks‖ was defined
in Clause 1.1.9 of the TMNA as the trademark HERO with or
without suffixes, in relation to or in connection with, ―Other
Products and Services‖.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
(iv) ―Other Products and Services‖, as defined in Clause 1.1.8
of the TMNA meant all goods and services currently
manufactured or provided and excluded, inter alia¸ the F-1
Family Group Products and Services.
(v) ―F-1 Family Group Products and Services‖, as defined in
Clause 1.1.6 included, in sub-clause (e), medical products. As
such, medical products stood expressly excluded from the ambit
of ―Other Products and Services‖ under Clause 1.1.8 of the
TMNA.
(vi) ―Future Products and Services Trade Marks‖ was
defined, in Clause 1.1.11 of the TMNA as the trademark
―HERO‖, with or without suffixes, used in relation to or in
connection with Future Products and Services.
(vii) ―Future Products and Services‖ were defined in Clause
1.1.10 as all goods or services not currently manufactured or
provided.
(viii) The right of the F-3 Group to use HERO GROUP in
respect of medical products would, therefore, depend on
whether medical products could be treated as ―currently
manufactured and provided‖, i.e. manufactured and/or provided
on the date of execution of the FSA and TMNA. If they were,
they would stand excluded from the ambit of the expression
―Future Products and Services‖ as defined in Clause 1.1.10;
else, they would be included within the said expression.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
(ix) Medical products had to be regarded as ―currently
manufactured‖ for the following reasons:
(a) Medical Products were contractually deemed to be
currently manufactured or provided. This was sought to
be explained thus:
(i) Clause 1.1.8 defined ―Other Products and
Services‖ to mean all types of goods and services
currently manufactured or produced and excepted,
from its ambit, F-1 Family Group Products and
Services. This itself indicated that F-1 Family
Group Products and Services were, but for the
exception, currently manufactured or provided.
Else, there was no need for the exception.
(ii) Clause 1.1.6, which defined ―F-1 Family
Group Products and Services‖, included, in sub-
Clause (e), medical products.
(iii) Read in juxtaposition, therefore, Clause
1.1.8 and 1.1.6(e) together, therefore, deemed
medical products to be ―currently manufactured‖
on the date of execution of the FSA/TMNA.
(iv) As there was a contractual presumption that
medial goods were ―currently manufactured and
produced‖ on the date of execution of the
Signature Not Verified
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Digitally Signed
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Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
FSA/TMNA, it was not open to the respondent to
urge otherwise.
(b) The invoices placed on record with I.A.
20294/2022 also indicated that medical products were
―currently manufactured‖ on the date of execution of the
FSA/TMNA.
(c) The following recitals, in Business Realignment
Agreement (BRA) dated 31st January 2011, executed
between the F-1 and F-4 groups, confirmed that the New
Cycles Division of Hero Cycles Ltd (HCL), which was
realigned in favour of the F-1 group under the FSA (as
per Schedule 7 in part D of the FSA, which enlisted the
undertakings which were to be realigned in favour of the
F-1 Group), was manufacturing medical products:
―1. HCL is a closely held public limited company,
primarily engaged in the business of manufacturing,
marketing, distribution and sales of bicycles and bicycle
components, auto components, hospital equipments,
assembly of electric vehicles by way of job work and is
also engaged in the business of production and sale of cold
rolled steel.
2. The aforementioned business of manufacturing and
sale of bicycles, bicycle components apart from being
carried out in other division/units/facilities is also being
carried out by HCL in a separate independent division
namely ―New Cycle Division‖ along with manufacturing of
hospital equipments and assembly of electric vehicles by
way of job work with manufacturing facility at Focal point,
Phase-VIII, Chandigarh Road, Ludhiana, operation of
which are independently managed by Vijay Munjal ji.
*****
5. HCL agrees to effectuate the realignment of
ownership of the New Cycle Division/undertaking as a
going concern, pursuant to the FSA, together with the
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
Business, Assets and Liabilities (both existing and
contingent) thereof as more particularly described
hereinafter, on the terms, conditions and provisions set
forth therein;‖
(x) As the definition of ―Future Products and Services‖, in
Clause 1.1.10, covered only goods and services which were not
currently manufactured and produced, medical products did not
fall within the ambit of the definition.
(xi) Mr. Sibal advances the following further submissions to
justify his contention that medical products could not be
brought within Clause 1.1.10 or, therefore, Clause 1.1.11 of the
TMNA:
(a) Including medical products within the ambit of
―Future Products and Services‖ as defined in Clause
1.1.10 would result in conflict between the manner in
which Clause 1.1.10, on the one hand and Clauses
1.1.6(e) and 1.1.8, on the other, apply. Where, read with
Clause 1.1.6(e), Clause 1.1.8 expressly excluded, from
the ambit of ―Other Products and Services‖, medical
products, it would run contrary to the intent of the
contract to include medical products within the
entitlement of the F-3 Group by regarding them as
―Future Products and Services‖ in Clause 1.1.10. In
other words, the contention is that where the right of the
F-3 Group to use ―HERO‖, with or without suffixes, for
medical products, stood expressly excluded by Clause
1.1.8, that right could not be conferred by Clause 1.1.10.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
It would amount, in other words, to giving by one hand
what the other hand was taking away.
(b) Including medical products within ―Future
Products and Services‖ in Clause 1.1.10 would also result
in conflict between Clause 1.1.10 and Clause 1.1.7(c).
Clause 1.1.7(c) granted exclusive right of use and
ownership, to the F-1 Group, of the HERO ECO mark for
medical goods. If medical goods were to be treated as
―Future Products and Services‖ under Clause 1.1.10, that
would mean that the F-3 Group could use HERO or other
suffixes for medical goods. In other words, the F-3
Group would then have the right to use even HERO ECO
for medical goods. That would infract the exclusive right
to use HERO ECO for medical goods, granted to the F-1
Group by Clause 1.1.7(c).
(xii) Resultantly, medical products did not fall within the
ambit either of the expression ―Other Products and Services‖ or
of the expression ―Future Products and Services‖. Neither
Clause 2(iii), nor Clause 2(v) of the TMNA could, therefore,
entitle the F-3 group to use the HERO GROUP mark for
medical products.
(xiii) Mr. Sibal further submits that without prejudice to his
contention that, in view of Clause 1.1.8 read with Clause
1.1.6(e), there was a contractual presumption that medical
goods were ―currently manufactured‖ on the date of the
FSA/TMNA, against which the F-3 Group, being bound by the
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
FSA/TMNA could not seem to contend, even if it were to be
assumed, arguendo, that, in fact, medical goods were not
manufactured prior to or on the date of the FSA/TMNA, the
remedy with the respondent F-3 Group would be to apply for
rectification of the contract under Section 26 of the Specific
Relief Act, 1963. That, however, was never done.
8.3 Mr. Sibal submits that, comparing the interpretations accorded
to the Clauses of the FSA and TMNA by the petitioner F-1 Group and
the respondent F-3 Group, it became clear that the petitioner's
interpretation was more in accordance with the contractual intent. It
was clear that the FSA and TMNA intended to compartmentalise
ownership and usage, by the various groups, of the various Trade
Marks as well as the goods and services in respect of which they
could be owned or used. Overlap of Trade Marks in respect of the
same goods within one territory was, therefore, contrary to the
contractual intent. Any interpretation which would result in one
Family Group becoming entitled to use the HERO formative
Trademarks for the same goods within the same territory was,
therefore, required to be eschewed. The FSA and TMNA, therefore,
conferred exclusivity on
(i) the F-4 Group in respect of bicycle/automotive
Trademarks;
(ii) the F-1 Group in respect of the F-1 Family Group Trade
Marks HERO EXPORTS, HERO ELECTRIC, HERO ECO and
HERO, in respect of specific goods and services and
(iii) the F-3 Family Group in respect of Other Products and
Services Trade Marks, and Future Products and Services
Trademarks, being the trademarks relating to the residual goods
Signature Not Verified
C.O. (COMM.IPD-TM) 163/2021 Page 16 of 57
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
and services after excluding the goods and services which fell
to the lot of the F-1 and F-4 Family Groups. For this purpose,
Mr. Sibal has placed reliance on:
(i) para 64 of the report in Ramdev Food Products
(P) Ltd. v. Arvindbhai Rambhai Patel & Ors.3,
(ii) para 16 of the report in Bangalore Electricity
Supply Company Limited (BESCOM) v. E.S. Solar
Power Private Limited & Ors.4,
(iii) page 912 of the report in Investors Compensation
Scheme Ltd v West Bromwich Building Society5,
(iv) page 296 of the report in Jumbo King Ltd v
Faithful Properties & Ors.6, and
(v) para 176 of the report in Phoenix Commercial
Enterprises Pty Ltd v City of Canada Bay Council7.
8.4 Citing, for the purpose,
(i) paras 10 and 18-19 of Riverdale School Society v.
Riverdale High School & Ors.8,
(ii) paras 22, 25 and 28 of Donaldson Filtration
Deutschland GmbH v. Ultrafilter (India) Pvt. Ltd.9 and
(iii) B.S. Ramappa v. B. Monappa10,
Mr. Sibal contends that the Trade Mark Register is liable to be
rectified by deleting, therefrom, the registration of the impugned
HERO GROUP mark in favour of the Respondent F-3 Group in Class
10 in respect of medical equipment.
3
(2006) 8 SCC 726
4
(2021) 6 SCC 718
5
[1998] 1 WLR 896
6
(1999) 2 HKCFAR 279
7
[2010] NSWCA 64
8
(2008) 36 PTC 131
9
(2009) 40 PTC 287
10
1956 SCC OnLine Mad 188
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
9. Contentions of Mr. Rajiv Nayar, learned Senior Counsel for
Respondent 1
9.1 Mr. Rajiv Nayar, submits, at the very outset, that the petitioner
has no locus standi to maintain the present petition, as it is not a
―person aggrieved‖ within the meaning of Section 57 of the Trade
Marks Act. The petitioner, he points out, is not a party to the TMNA.
He invokes, for the said purpose, Section 69(2)11 of the Indian
Partnership Act, 1932.
9.2 Mr. Nayar further submits that the petition is bad for non-
impleadment of necessary parties. Inasmuch as the rights canvassed
by the petitioner are predicated on the FSA and TMNA, Mr. Nayar
submits that all parties to the FSA and TMNA were required to be
impleaded in the petition. As this has not been done, Mr. Nayar
submits that the petition is liable to be dismissed even on that ground.
9.3 Mr. Nayar further submits that Clause 12.1 of the FSA, by
providing that there would be no non-compete restrictions among the
businesses of the four family groups, clearly entitled all family groups
to compete with each other for any business. He submits that the F-1
Family Group had received ₹ 850 crores from the F-3 Family Group
for limiting its rights under the FSA and TMNA, which fact the
petition conceals. Having received the said payment, Mr. Nayar
submits that the F-1 group could not even maintain a petition
challenging the registration of the HERO GROUP mark in favour of
the F-3 group.
11
69. Effect of non-registration. -
*****
(2) No suits to enforce a right arising from a contract shall be instituted in any Court by or on
behalf of a firm against any third party unless the firm is registered and the persons suing are or
have been shown in the Register of Firms as partners in the firm.
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Digitally Signed
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Signing Date:06.03.2023
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9.4 The right of the F-1 Family Group under the TMNA, submits
Mr. Nayar, is restricted to Clause 1.1.7. Under the said clause, the F-1
Family Group was entitled only to use four specific marks, in respect
of specified goods. The four marks which the F-1 Family Group
could use were HERO EXPORTS, HERO ELECTRIC, HERO ECO
and HERO. In each case, the right of ownership and usage applied to
the marks as such. In other words, the rights of F-1 Family Group did
not expand to the use of the said marks with any prefixes or suffixes.
This, he submits, is in stark contradistinction to the right of usage
conferred on the F-3 Family Group by other clauses of the TMNA,
which extended to the use of the mark ―HERO‖ with or without
suffixes or prefixes.
9.5 Insofar as medical products and equipments are concerned, the
right of the F-1 Family Group was restricted to Clause 1.1.7(c), which
was limited to the HERO ECO mark. The petitioner did not, therefore,
enjoy any right of ownership or usage for the HERO GROUP mark, as
the HERO GROUP mark was not one of the four marks which
devolved on the petitioner under Clause 1.1.7 of the TMNA.
9.6 The petitioner could not, therefore, claimed to be ―aggrieved‖
by the impugned registration of the HERO GROUP mark in favour of
the F-3 Group in respect of medical products. Not being, thus, a
―person aggrieved‖, Mr. Nayar submits that the present petition was
not maintainable at the instance of the petitioner under Section 57 of
the Trade Marks Act.
9.7 Even the right to use the mark ―HERO‖, per se, without any
suffixes or prefixes, was vested in the F-1 Family Group, by Clause
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1.1.7 (d), only for export of bicycles and bicycles parts to certain
select countries. Though ―medical products & lifestyle care
equipment for hospitals, rehabilitation and homes‖ was included
within the definition of ―F-1 Family Group products and services‖ in
Clause 1.1.6 (e) of the TMNA, the right conferred on the F-1 Group,
by Clause 2(ii), was in respect of the ―F-1 Family Group Trade
Mark‖, and the definition of ―F-1 Family Group Trade Mark‖, in
Clause 1.1.7, did not make reference to the definition of ―F-1 Family
Group products and services‖ in Clause 1.1.6.
9.8 As such, the inclusion of medical products in ―F-1 Family
Group products and services‖ by clause 1.1.6 (e) did not affect,
positively or negatively, the scope and ambit of the expression ―F-1
Family Group Trade Marks‖ as defined in Clause 1.1.7. Insofar as
medical products were concerned, the ambit of ―F-1 Family Group
Trade Marks‖ in Clause 1.1.7 extended only to the use of the HERO
ECO mark. In this context, Mr. Nayar also placed reliance on Clause
1.2(a) of the TMNA, which provided that headings and bold
typefaces, as used in the TMNA, were to be ignored while interpreting
its provisions.
9.9 Even otherwise, Mr. Nayar submits that the petitioner V.R.
Holdings is not a party either to the FSA or the TMNA. It cannot,
therefore, claim to be a ―person aggrieved‖, under Section 57 of the
Trade Marks Act. The petitioner VR Holdings enjoys no proprietorial
rights over the ―HERO GROUP‖ mark, either under the FSA or the
TMNA.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
9.10 The invoices which the petitioner had placed on record, too,
points out Mr. Nayar, indicate use of the mark ―HERO ECO‖ by Hero
EcoTech Ltd. and not by V.R. Holdings. The petitioner V.R.
Holdings, even as per the recitals in the petition, he points out, is
stated to be engaged in the business of automotive components. As
such, it is not even manufacturing or dealing in medical products.
9.11 Mr. Nayar contests the claim of the petitioner that it was the
―Trade Mark holding entity‖ for the purposes of the FSA and TMNA.
He points out that, against column (ix) in the rectification petition
filed by the petitioner, the entry which required the Trade Mark
holding entity to be defined, the form was left blank.
9.12 Mr. Nayar further submits that the present petition suffers from
serious delay and laches. He points out that Respondent 1 applied for
registration of the HERO GROUP mark in its favour on 1st November
2010, and the mark was registered in favour of Respondent 1 on 30 th
August 2016. Relying on the judgment of the Supreme Court in
Khoday Distilleries Ltd. v. Scotch Whisky Association12, Mr. Nayar
submits that a rectification petition which is so belated cannot be
entertained on merits.
9.13 Mr. Nayar further relies on certain collateral documents which,
according to him, evince recognition, by the petitioner, of the right of
Respondent 1 to use of the mark HERO GROUP in respect of medical
equipment. He refers to e-mail dated 4th June 2013 from Ashok Goyal
of HERO ECO to Amit Aggarwal of Respondent 1, in which it was
specifically stated that all references to ―HERO GROUP‖ had been
12
(2008) 10 SCC 723
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Signing Date:06.03.2023
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removed from the websites of the F-1 Group. He further referred to
power of attorney dated 13th June 2013 by Vijay Kumar Munjal,
which recognises the right of the F-3 Group, under the FSA and
TMNA, to obtain registration of any HERO mark, with prefix or
suffix, except the four marks specifically allocated to the F-1 Group
under Clause 1.1.7, i.e., HERO EXPORTS, HERO ELECTRIC,
HERO ECO and HERO.
9.14 Insofar as the rights of the F-3 Group to use of the mark HERO
GROUP in respect of medical equipment was concerned, Mr. Nayar
submits that the rights of the F-3 Group flow both from Clauses 1.1.8
and 1.1.9 (which dealt with other products and services) and Clauses
1.1.10 and 1.1.11 (which dealt with future products and services), read
with Clause 2 (v) of the TMNA.
9.15 He explains this position thus:
(i) Clause 2 (v) granted exclusive right and ownership, to the
F-3 Group, to use the mark HERO GROUP in respect of Other
Products and Services and Future Products and Services.
(ii) The expression ―future products and services‖ was
defined in Clause 1.1.10. It included all goods and services not
currently manufactured or rendered by the parties, their
affiliates, group companies, joint venture companies and
subsidiary companies.
(iii) Medical products and equipments were not currently
manufactured or produced or any member of the HERO
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Signing Date:06.03.2023
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GROUP of companies on the date of execution of the TMNA.
For this purpose, Mr. Nayar points out that
(a) in para 7 of the present petition, the petitioner has
admitted use, by the petitioner, of the mark HERO ECO
for medical products and equipments since November
2011,
(b) the application dated 1st November 2020,
submitted by the petitioner for registration of the HERO
ECO mark also claimed use since 29th November 2011
and
(c) the affidavit of use filed by the petitioner
accompanying the said application also claimed user of
the HERO ECO mark, for medical equipments and
products only since November 2011.
9.16 As such, Mr. Nayar submits that there was no manufacture or
production of medical products or equipments by any of the HERO
GROUP of companies prior to 29th November 2011 and, in any case,
medical products and equipments could not be stated to be among the
goods which were ―currently manufactured‖ on the date of execution
of the TMNA. In that view of the matter, Mr. Nayar submits that the
F-1 Group was entitled, by virtue of Clause 1.1.10 read with Clause
2(v), to use the HERO GROUP mark for medical products.
9.17 Mr. Nayar also claims that his right to use the HERO GROUP
mark for medical products and services cannot be said to fall within
the exclusionary part of Clause 1.1.8 of the TMNA. For this purpose,
he has relied on Clause 2(ix) of the TMNA, to contend that the
omnibus right to use the mark ―HERO‖ with or without suffixes, for
Signature Not Verified
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Digitally Signed
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all categories of goods, vests in the F-3 Family Group, except for the
specific carves out in favour of the F-1 Family Group and the F-4
Family Group by Clause 1.1.7 and 2(i)13 of the TMNA.
9.18 Insofar as medical products and equipments is concerned, he
submits that the only specific carve out is in favour of the F-1 Group,
for use of the mark HERO ECO. As such, the exclusionary part of
Clause 1.1.8, in Mr. Nayar's submission, has to be restricted to use of
the mark HERO ECO in respect of medical goods and products. It
cannot be extended to cover areas where no right has been conferred
for use of the mark on any other family group.
9.19 As such, Mr. Nayar submits that the petitioner's right cannot be
curtailed by reference to the exclusionary part of Clause 1.1.8 of the
TMNA.
9.20 Mr. Nayar further submits that the rectification of the register or
removal of a mark therefrom under Section 57 of the Trade Mark
cannot be sought on the basis of a private contract. It is only where the
registration of the mark is prohibited by some provision in the Trade
Marks Act that rectification of the register and removal of the mark
can be sought. He points out that Section 57(2) permits rectification,
by removal of a mark from the register, either where the entry is made
without sufficient cause, or is wrongly remaining on the register. An
entry is made without sufficient cause when the entry is contrary to
the statutory provisions on the day it is made, whereas and entry
wrongly remains on the register when, owing the circumstances which
were not existing on the day when the entry was made, its continuance
13
(i) F4 Family Group shall have the exclusive right of ownership and use over Bicycle/Automotive
Signature Not Verified
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Digitally Signed
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Signing Date:06.03.2023
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on the register has become illegal. In either case, the registration of
the mark has to be shown to be contrary to Section 9, 11 or 12.
Section 57(2), submits Mr. Nayar, cannot be used to determine serious
and disputed contractual issues. What the petitioner seeks, according
to him, is a declaration that the petitioner is entitled to own and use
the HERO mark for goods in Class 10 under the TMNA. Such a
declaration could only be given by a Civil Court under the Specific
Relief Act, and not by the Court, or any other forum, examining an
application for rectification under Section 57.
9.21 For this purpose, Mr. Nayar also relies on Section 45(3)14 of the
Trade Marks Act which, too, according to him, provides that where
the validity of an assignment is in dispute, a Civil Court would first
have to adjudicate thereon. Mutatis mutandis, he would submit,
where the rival rights of the petitioner and Respondent 1 under the
TMNA are in dispute, a Civil Court has first to adjudicate thereon. He
also submits that, for an adjudication on the rival rights to the use and
ownership of the HERO mark, the petitioner has already instituted an
arbitration, which is in seisin before a learned three Member arbitral
tribunal. To support these submissions, Mr. Nayar relies on Janinder
Jain v Registrar of Trade Marks15 and The Financial Times Ltd v.
The Times Publishing House Ltd16. He has also cited some foreign
decisions, to which I do not deem it appropriate to refer, as the Court
has not been informed of the statutory regime in place in the
jurisdictions where the said decisions were rendered, so that their
Trademarks;
14
45. Registration of assignments and transmissions.-- *****
(3) 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 and in all other cases the Registrar shall dispose of the
application within the prescribed period.
15
2003 SCC OnLine Del 550
16
2016 SCC OnLine Del 5510
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Signing Date:06.03.2023
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precedential significance and validity could be assessed in the context
of the Trade Marks Act.
9.22 The entire case of the petitioner being predicated on the private
contractual relationship constituting the FSA and TMNA, Mr. Nayar
submits that the petition has no legs to stand on. He submits that the
petitioner could not seek adjudication of private contractual rights
under Section 57 of the Trade Marks Act by invoking, for the purpose,
Section 18. He further submits that Respondent 1 did not claim
proprietorial rights to use the HERO GROUP mark for medicinal
products under the TMNA, and there was no material to otherwise
discountenance the claim of Respondent 1, within the four corners of
the Trade Marks Act.
9.23 In fine, Mr. Nayar has reiterated the contention that the
petitioner, not being the proprietor of the HERO GROUP mark even
under Section 18, has no locus standi to maintain the present petition.
Per contra, he submits, Respondent 1 is the registered proprietor of
the HERO GROUP mark in 39 classes. There was, therefore, in his
submission, no irregularity in the application, filed by Respondent 1
for registration of the HERO GROUP mark under Class 10 for
medical products proceeding to registration.
10. Submissions of Mr. Sibal in rejoinder
10.1 Apropos Mr. Nayar's objections to the maintainability of the
present petition, Mr. Sibal responds thus:
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Signing Date:06.03.2023
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(i) Any ―person aggrieved‖ could file a rectification petition
under Section 57 of the Trade Marks Act.
(ii) The expression ―person aggrieved‖ in Section 57 had to
be interpreted liberally, as the aim of Section 57 was to preserve
the purity of the Trade Marks register and prevent public
mischief which would result if a wrong mark were allowed to
remain therein. He relies, for the purpose, on paras 28 to 33 of
Infosys Technologies Ltd v. Jupiter Infosys Ltd17 and paras 28
to 34 of Hardie Trading Ltd v. Addisons Paint & Chemicals
Ltd18.
(iii) Besides, the petitioner was a registered partnership firm
of Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav
Munjal, who were members of the F-1 group. Hence, they were
―aggrieved‖ by any prejudice caused to the rights of the F-1
group. Mr. Sibal submits, relying on para 3 of N Khadervali
Saheb v. N Gudu Sahib19, that a partnership firm is not an
independent entity, but is only a compendious name by which
to designate the partners for the sake of convenience.
Registration, too, does not convert the firm into a separate legal
entity, as held in para 11 of V. Subramanium v. Rajesh
Raghuvandra Rao20.
(iv) Besides, Respondent 1 admitted that the F-1 group could
use the HERO ECO mark for medical products. Hero Ecotech
Ltd, which was an F-1 group Company, had assigned the right
17
(2011) 1 SCC 125
18
(2003) 11 SCC 92
19
(2003) 3 SCC 229
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Digitally Signed
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Signing Date:06.03.2023
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Neutral Citation Number : 2023/DHC/001633
to use the HERO ECO mark, along with its goodwill, to the
petitioner. The petitioner had, thereafter, applied for
registration of the HERO ECO mark in its name for medical
products. In its capacity as such applicant, too, the petitioner
had the locus standi to maintain the present petition.
(v) Were the petitioner to secure registration of the HERO
ECO mark for medical products, it could sue Respondent 1 for
using a deceptively similar mark HERO GROUP for identical
goods. In such a situation, the impugned HERO GROUP
registration held by Respondent 1 would afford a complete
defence against the suit, in view of Section 28(3)21 of the Trade
Marks Act.
(vi) The Power of Attorney dated 13th June 2013, executed
between the F-1 and F-3 groups and relied upon by Respondent
1 was executed by Vijay Munjal as a partner of the petitioner
V.R. Holdings.
(vii) The F-1 group, through Sunil Kant Munjal, also executed
Special Power of Attorney dated 14th June 2013, in favour of
the petitioner, as a part/trade mark holding entity of the F-1
group.
20
(2009) 5 SCC 608
21
28. Rights conferred by registration.-- *****
(3) Where two or more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall
not (except so far as their respective rights are subject to any conditions or limitations entered on
the register) be deemed to have been acquired by any one of those persons as against any other of
those persons merely by registration of the trade marks but each of those persons has otherwise the
same rights as against other persons (not being registered users using by way of permitted use) as
he would have if he were the sole registered proprietor.
Signature Not Verified
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Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:06.03.2023
15:20:55
Neutral Citation Number : 2023/DHC/001633
10.2 Mr. Sibal further characterised Mr. Nayar's reliance on the
application filed by the petitioner for registration of the HERO ECO
mark for medical products claiming user since 2011 to contend that
medical products could not be treated as ―currently manufactured‖ on
20th May 2010, when the TMNA was executed, as misguided. The
issue in controversy, submits Mr. Sibal, is not the date of
commencement of use of the mark HERO ECO for medical goods, but
the date of commencement of manufacture of medical goods itself.
10.3 Mr. Nayar's plea that the petitioner had acquiesced to the
entitlement of the F-3 group to own and use the HERO GROUP mark
for medical products, submits Mr. Sibal, is unacceptable, being
contrary to the covenants of the FSA and TMNA. He cites, for the
purpose, Clauses 22.5 and 22.6(b) of the FSA (reproduced earlier).
10.4 The e-mails exchanged between the parties, submits Mr. Sibal,
do not amount to waiver/amendment in writing of Clause 2(v) of the
TMNA. Similarly, the removal, by the F-1 group, of the mark HERO
GROUP from its website did not result, ipso facto, in the creation of a
right, in favour of the F-3 group, to do so.
10.5 The Special Power of Attorney executed by the F-1 group in
favour of F-3 group, submits Mr. Sibal, does not extend the rights of
the F-3 group beyond those conferred by Clauses 2(iii) and (v) of the
TMNA. The SPA was merely intended to facilitate international
registrations.
10.6 Besides, submits Mr. Sibal, post-contractual correspondence
between the parties could aid interpretation of the contract only where
Signature Not Verified
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Signing Date:06.03.2023
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the terms of the contract were ambiguous, and not otherwise.
Reliance has been placed, in this context, on para 16 of The Godhra
Electricity Co. Ltd v. State of Gujarat22.
10.7 Apropos Mr. Nayar's contention that the petition was belated,
Mr. Sibal submits that the law does not stipulate any limitation for
filing of a rectification petition. Khoday Distilleries12 allowed delay
to be borne in mind as a consideration while examining a rectification
petition only where it led ―to acquiescence or waiver or
abandonment‖. No such delay could be attributed to the petitioner in
the present case, as the impugned registration of the HERO GROUP
mark in favour of Respondent 1 came to the notice of the petitioner in
September 2020, and the rectification petition was filed in December
2020. As the F-3 group was not engaged in any business in medical
products, the petitioner claims not to have noticed the advertising of
the application of the F-3 for registration of the impugned mark.
10.8 Acquiescence, submits Mr. Sibal, requires a positive act, and
not merely silence. He cites, for the proposition, para 26 of Power
Control Appliances v. Sumeet Machines Pvt Ltd23. The plea of
waiver was also contrary to Clause 22.5 of the FSA (reproduced
earlier).
10.9 Mr. Sibal further submits that the circumstances in which
rectification of the Trade Marks register by removal of a mark
therefrom can be sought under Section 57(2) are not restricted to those
adumbrated in Sections 9 and 11 of the Trade Marks Act. Section
57(3), in fact, empowers the Court to decide any question that may be
22
(1975) 1 SCC 199
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Digitally Signed
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Signing Date:06.03.2023
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necessary or expedient in connection with rectification of the register.
The fact that Respondent 1 was not the proprietor of the HERO
GROUP mark, therefore, he submits, was an issue which this Court
could decide, while deciding the prayer of the petitioner for
rectification.
10.10 Apropos Mr. Nayar's contention that the petitioner ought to be
relegated to the civil court to adjudicate on the issue of ownership and
entitlement to the HERO GROUP mark, Mr. Sibal relies on paras 29,
31 and 32 of Patel Field Marshal Agencies v. P.M. Diesels24 to
contend that the civil court is, in fact, bound by the decision in the
rectification proceeding. Section 45(3), on which Mr. Nayar relies,
deals, as Mr. Sibal points out, with validity of assignment or
transmission, and not with validity of a registration. Mr. Sibal further
submitted that, in view of para 77 of the judgement of the Supreme
Court in Vidya Drolia v. Durga Trading Corpn25, the present dispute
is not arbitrable.
11. From the facts and the rival submissions recorded hereinabove,
the following primary issues arise for consideration:
(i) Whether the present rectification petition is maintainable
at the instance of the petitioner V. R. Holdings?
(ii) Whether the application submitted by Respondent 1 for
registration of the Hero Group mark in respect of medical
23
(1994) 2 SCC 488
24
(2018) 2 SCC 112
25
(2021) 2 SCC 1
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products was violative of Section 18(1) of the Trade Marks
Act?
(iii) Whether the F 3 Group was entitled to registration of the
Hero Group mark in respect of medical products?
(iv) Whether the F1 Family Group was entitled to registration
of the Hero Group mark in respect of medical products?
(v) Whether the rectification petition is liable to be dismissed
on the ground of delay and latches?
(vi) Whether the rectification petition was liable to be
dismissed on the ground that rectification was sought on the
basis of a private contract and involved adjudication of
competing contractual rights which could only be decided by a
Civil Court?
12. I proceed to address them, although not seriatim.
13. Locus standi of petitioner
13.1 Mr. Nayar questions the locus standi of the petitioner V.R.
Holdings to maintain the present petition, on the following grounds:
(i) The petitioner was not a party either to the FSA or the
TMNA. It was acknowledged, in the petition, that the petitioner
was engaged in the business of automotive components. No
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document, indicating any involvement of the petitioner in the
business of medical products, was forthcoming.
(ii) The contention, of the petitioner, that it was the ―trade
mark holding entity‖ of the entire Hero group of companies was
not borne out by the documents. The contention was also belied
by the fact that column (ix) in the format preceding the present
petition was left blank.
(iii) The TMNA did not confer any proprietorial right, on the
petitioner, of the HERO GROUP mark, either for ownership or
for use. Clause 1.1.7 entitled the F-1 group - which the
petitioner claimed to represent - only to use of the HERO ECO
mark for medical products. Even the right to use the mark
HERO, conferred on the F-1 group by the said clause, was for
use of the mark per se, without prefixes or suffixes. Moreover,
the HERO mark, without prefixes or suffixes, too, was made
available to the F-1 group only for export of bicycles and
bicycle parts to selected countries. The proprietorial
dispensation of the marks, in favour of the F-1 group, was
entirely governed by Clause 1.1.7, and was unaffected by the
inclusion of medical products in Clause 1.1.6(e). The petitioner
could not, therefore, claim to be ―person aggrieved‖ by the
registration of the ―HERO GROUP‖ mark, for medical
products, in favour of Respondent 1.
13.2 Mr. Sibal submits, per contra, that the petitioner is a ―person
aggrieved‖ within the meaning of Section 57 of the Trade Marks Act.
He advocates a liberal construction of the expression. On facts, the
contention is predicated on the fact that
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(i) the partners of the petitioner firm are all members of the
F-1 group, and a firm is merely a compendious name for the
partners who constitute it,
(ii) the petitioner was an assignee of Hero Ecotech Ltd for
use of the HERO ECO mark for medical products, in which
capacity the petitioner had applied for registration of the HERO
ECO mark for medical products,
(iii) were the petitioner to secure the said registration, it
would have the right to sue Respondent 1 for using a
deceptively similar HERO GROUP mark for medical products,
(iv) in such action, the petitioner would also be entitled to
question the validity of the registration of the HERO GROUP
mark for medical products in favour of Respondent 1, and
(v) Vijay Munjal, in his capacity as partner of the petitioner,
had executed SPA dated 13th June 2013, on behalf of the F-1
group, with the F-3 group.
13.3 The present petition, in my opinion, cannot be thrown out on
the ground of want of locus standi of the petitioner to maintain it. The
challenge is, in fact, in my opinion, not so substantial as would justify
any detailed judicial analysis.
13.4 The partnership deed dated 1st May 2010, whereby the
petitioner was created as a partnership, identifies Vijay Munjal, Rekha
Munjal, Naveen Munjal and Gaurav Munjal as the partners. That
Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal are
four of the nineteen members of the F-1 group is also apparent from
Schedule I to the FSA. As a Family Settlement Agreement, which
divided the assets of the members of the HERO GROUP and the
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Munjal Family, and also divided the properties and the rights to use
the various trademarks, every members of the Munjal Family would,
to one extent or the other, have an interest in ensuring that the
covenants of the FSA and the TMNA were adhered to, and that no
person or group was permitted to arrogate, to itself, any right in excess
of that which was conferred by the FSA and the TMNA. Vijay
Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal could
have individually maintained the present suit against the respondents,
as members of the F-1 group. They chose to do so, not in their
individual names, but in their name of their partnership firm in which
they alone, and no one else, were a partner.
13.5 The issue in controversy involves ensuring that the terms of the
FSA and the TMNA are honoured. The Supreme Court has, in Hari
Shankar Singhania v. Gaur Hari Singhania26, underscored the
importance of family settlement and held that family settlements are
sacrosanct and are required to be strictly complied with. To reiterate,
every member of the family would have an interest in ensuring such
compliance.
13.6 Additionally, the dispute involves the question of the entity
would be entitled to use HERO group marks in respect of medical
products. As such, the court has to examine the devolution of the
intellectual property rights in respect of HERO Group mark for
medical products, as ordained by the FSA and the TMNA.
13.7 It is eminently in public interest to ensure that Intellectual
Property Rights are not infringed and that no person, who is not
26
(2006) 4 SCC 658
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legally entitled to be the proprietor of intellectual property, holds
himself out as such. Mr. Sibal is correct in his submission that the
purity of the register of Trade Marks hangs in the balance.
13.8 Indeed, the issue appears to be covered by the judgment of the
Supreme Court in Infosys Technologies Ltd17, on which Mr. Sibal
placed reliance. Section 57(1) uses the expression ―person
aggrieved‖. Sections 56(1) and (2) of the Trade Marks, Act 1958
(―the 1958 Act‖), were the pari materia parallel provisions to Section
57(1) and (2) of the present Trade Marks Act. In the context of the
1958 Act, the Supreme Court, in para 28 to 33 of the report, held thus:
―28. The position that emerges from the above provisions is this.
Whether the application is under Section 46 or under Section 56 or
a composite application under both sections, it is a prerequisite that
the applicant must be a person aggrieved. Section 46(1) of the 1958
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. A likelihood of some injury or damage to the applicant
by such trade mark remaining on the register may meet the test of
locus standi.
29. In Kerly's Law of Trade Marks and Trade Names (11th
Edn.) at p. 166, the legal position with regard to ―person
aggrieved‖ has been summarised 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 of law.
30. Insofar 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 the
―person aggrieved‖ to apply for removal of the registered trade
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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.
31. The 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
Ltd18 this Court stated as follows: (SCC pp. 105-06, paras 30-34)
―30. The 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 are
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.
31. 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 cancelling or expunging or varying an
entry wrongly made or remaining in the register.
32. In the latter case the locus standi would be
ascertained 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 Powell's Trade Mark, In
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re [Powell's Trade Mark, In re, Powell v. Birmingham
Vinegar Brewery Co.27: (AC p. 10)
...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 trade
mark, 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 me he has a locus standi to be heard as a
person aggrieved.
(emphasis added in Hardie Trading Ltd18 case )
33. But 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 them.'
34. Addisons' 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
27
1894 AC 8 (HL)
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Trade Mark27 . 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.‖
32. In Hardie Trading Ltd18 this Court approved the test applied
by Romer, J. in Royal Baking Powder Co. v. Wright, Crossley and
Co28. , which has been reproduced in para 33 of the Report. We
respectfully agree.
33. Hardie Trading Ltd18 has been followed by this Court in a
recent decision in Kabushiki Kaisha Toshiba29 . This Court stated
that Section 46 speaks for private interest while Section 56 speaks
of a public interest.
34. It 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 IPAB in terms of Section 100 of the 1999 Act, 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 standi 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 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.‖
To the same effect are paras 28 to 34 of the report in Hardie Trading
Ltd.18, which read thus:
―(a) Person aggrieved
28. On this issue the Joint Registrar held that Addisons was a
―person aggrieved‖. The principal ground for doing so was the fact
that Addisons carried on the same trade and its applications for
registration had been rejected on the ground of the existence of
Hardie's marks.
28
[(1898) 15 RPC 377
29
(2008) 10 SCC 766
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29. The learned Single Judge upheld the decision of the
Registrar on this issue because Addisons was in the same trade as
Hardie ―and may be able to use the said mark in relation to own
goods but for the existence of the registered marks in the name of
Hardie‖. The Division Bench affirmed this view.
30. The 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 are
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.
31. 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
cancelling or expunging or varying an entry wrongly made or
remaining in the Register.
32. In the latter case the locus standi would be ascertained
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 Mark27:
―... 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
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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 trade
mark, 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 me he has a locus standi to be heard as a
person aggrieved.‖
(emphasis added)‖
33. But 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 them‖.
34. Addison's' 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 Wright30 case and not the one propounded
by the House of Lords in the matter of Powell's Trade Mark27. 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.‖
13.9 Applying the law enunciated with respect to the expression
―person aggrieved‖ as used in Section 56 of the Trade Marks Act, I
30
(1898) 15 RPC 131
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am of the opinion that the petitioner satisfies the definition of the
expression ―person aggrieved‖, as explained in Infosys Technologies
Ltd17 and Hardie Trading Ltd.18.
13.10 The reliance, by Mr. Sibal, on the assignment, by HERO ECO
Tech, to the petitioner, of the right to use the HERO ECO mark in
respect of medical products, is also well taken. As an entity entitled,
by assignment, to own and use the HERO ECO mark for medical
product, the petitioner can also claim to have the prevailing interest in
ensuring that the competing HERO group mark, for identical medical
products, was not used by any other group or person without due
sanction in law. For that reason, too, the petitioner would be entitled
to maintain the present petition, challenging the registrations granted
to Respondent 1 of the HERO group for medical products.
13.11 As such, I reject the contentions of Mr. Nayar that the petitioner
did not possess the requisite locus standi to maintain the present
petition as a ―person aggrieved‖ under Section 57 of the Trade Marks
Act.
14 Non-impleadment of other Family Groups
14.1 Mr. Nayar sought to submit that, as the claim of the petitioner
was predicated on the FSA and TMNA, all parties to the FSA and
TMNA, which would include all Family Groups, were required to be
impleaded in the present case. I cannot agree.
14.2 The challenge in the petition is, plainly and simply, to the
registration of the mark HERO GROUP in favour of Respondent 1, as
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representing the F-3 Group, in respect of medical products. The only
question that the Court has to determine is, therefore, whether the F-3
Group was entitled to registration of the HERO GROUP mark in its
favour in respect of medical products. The petitioner, as representing
the F-1 Group, contended that the F-3 Group was not entitled to
register the HERO GROUP mark in its favour in respect of medical
products. The F-1 group does not itself claim any entitlement to
registration of the HERO GROUP mark, in respect of medical
products or any other goods. The petitioner's contention is that no
group is entitled to register any trade mark for medical products,
except the F-1 group which is entitled to register the HERO ECO
mark in respect thereof. The Court has, therefore, to determine the
entitlement, or otherwise, of the F-3, group, to registration, in its
favour, of the HERO GROUP mark for medical goods in the light of
these submissions.
14.3 As such, the rival rights involved were of the F-1 and F-3
Groups. It is nobody's case that any of the other Groups was entitled
to obtain registration in respect of medical products of the HERO
GROUP mark. There was, therefore, no requirement of impleading
any of the other Groups in the present litigation, which is essentially
between the F-1 and F-3 Groups.
15 Re: Clause 12.1 of FSA
15.1 Clause 12.1 of the FSA, to my mind, has no application in the
present case at all. We are not concerned, here, with any non-compete
restrictions. Nor does the petitioner invoke any such non-compete
restrictions to question the entitlement of Respondent 1 to use the
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HERO GROUP mark for medical products. The case of the petitioner
is predicated on the covenants of the FSA and the TMNA, particularly
the TMNA. If, under the TMNA, Respondent 1 is not entitled to use
the HERO GROUP mark for medical products, the registration of the
mark in favour of Respondent 1 would ex facie be illegal. There is no
occasion in so holding to seek recourse to Clause 12.1 of the FSA.
15.2 The reliance, by Mr. Nayar, on Clause 12.1 of the FSA is,
therefore, misguided.
16 Re: Plea of delay
16.1 Mr. Nayar sought to contend that the rectification petition could
not be examined on merits, as it was highly belated. Khoday
Distilleries12, in his submissions, holds that a belated rectification
petition cannot be entertained on merits. Mr. Sibal contends, per
contra, that Khoday Distilleries12 applies only where the delay on the
part of the petitioner has led to acquiescence, waiver or abandonment.
16.2 The answer to Mr. Nayar's contention is, in fact, to be found in
para 49 of Khoday Distilleries12 itself. In the said paragraph, the
Supreme Court holds that ―delay would be a valid defence where it
has caused a change in the subject matter and action or brought about
a situation in which justice cannot be done‖. The paragraphs that
precede para 42 in Khoday Distilleries12, as Mr. Sibal correctly points
out, essentially deal with the aspects of acquiescence and waiver.
16.3 In the present case, there is nothing to indicate that, prior to
September 2020, the registration of the HERO GROUP mark in
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respect of medical products in favour of Respondent 1 ever came to
the notice of the petitioner. The case of the petitioner is that the fact
the registration of the HERO GROUP mark in favour of Respondent 1
in respect of medical products came to its notice in September 2020.
The present rectification petition was filed in December 2020. It
cannot, therefore, be said that the rectification petition was belated in
any way.
16.4 The submission of delay, as advanced by Mr. Nayar, is also,
therefore, rejected.
17. Re: Section 45(3) and contention that rights emanating from
private contract cannot be examined in rectification petition under
Section 57
17.1 Mr. Nayar contends that Section 45(3) of the Trade Marks Act,
in conjunction with the principle on the rights arising from a civil
contract cannot be adjudicated in rectification proceedings, forbears
this Court to, in the present proceedings which have been instituted
under Section 57 of the Trade Marks Act, return findings regarding
the rival rights of the parties before the Court, as they arise from the
covenants of the FSA and the TMNA.
17.2 The submission, in my opinion, is devoid of substance.
17.3 Section 45 of the Trademarks Act deals with registrations of
assignments and transmissions. Sub-section (1) thereunder requires a
person, who becomes entitled to a registered trademark by assignment
or transmission, to apply to the Registrar to register him as the
proprietor of the trademark, providing, in the process, the particulars
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of such assignment or transmission. Sub-section (2) empowers the
Registrar, in such a case, to require the applicant to furnish evidence
of proof of title in the event of reasonable doubt about the veracity of
the statement and document furnished by him. Sub-section (3), which
Mr. Nayar invokes, provides that, where the validity of the assignment
or transmission is in dispute between the parties, the Registrar can
refuse to register the assignment or transmission till the rights of the
parties are determined by a competent court. This clause, therefore,
applies only where an application has been filed before the Registrar
for registering the applicant as the proprietor of a trademark which
already stands registered in favour of someone else, on the basis of
assignment or transmission of the said mark made by such other
person in his favour. In such a case, when the parties are already
locked in litigation with respect to the validity of the document of
assignment or transmission, Section 45(3) permits the Registrar to
refuse to register the applicant as the proprietor of the mark till such
dispute is decided by the competent civil court.
17.4 Here, the petitioner is not asserting its right, or questioning the
right of Respondent 1 to registration of the HERO GROUP mark in
respect of medical products, on the basis of any assignment or
transmission of the right to the said mark by an earlier holder thereof.
The FSA and TMNA cannot be regarded as documents of assignment
or transmission of marks. They divide, among the various Family
Groups, the right to use the different marks in respect of specified
goods. It is not, therefore, as though the HERO GROUP mark stood
earlier registered in favour of someone else, who assigned the right to
the mark either to the F-1 Group or to the F-3 Group or any other
family group.
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17.5 Secondly, Mr. Nayar has not drawn my attention to any
proceedings in which the validity of any such document of assignment
or transmission of the right to use the HERO GROUP mark in respect
of medical products was transferred by one party to another was under
challenge.
17.6 The prerequisites of Section 45 do not, therefore, apply in the
present case.
17.7 I am also not impressed with Mr. Nayar's submission that, in
rectification proceedings, the Court or the authority adjudicating the
matter cannot examine civil contractual rights. The submission is, in
my considered opinion, in the teeth of Section 18 of the Trademarks
Act. Section 18 requires any application for registration of a mark to
be made by the proprietor of the mark. The establishment of
proprietorial rights in respect of a mark is, therefore, a sine qua non,
before registration of the mark can be sought. Where, as in the
present case, the right of the registrant to registration of the mark is
questioned under Section 57 on the ground that the registrant does not
have proprietorial rights over the mark, the Section 57 Court would
necessarily have to examine the issue. Examination of the existence
or otherwise of proprietorial rights would, in most cases, involve
examination of contractual provisions.
17.8 Though Sections 9 and 11 of the Trademarks contain absolute
and relative grounds on which registration can be refused, they do not
detract from the requirement, engrafted in Section 18(1) of the
Trademarks Act, for the applicant seeking registration of a mark to be
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required to claim himself to be the proprietor of such mark. The
sequitur would, therefore, be that a person questioning the validity of
the registration of the mark in favour of another, can always base the
challenge on the lack of proprietorial rights of such other person to the
mark which stands registered in his favour.
17.9 Section 57 of the Trade Marks Act does not, in any manner,
fetter or restrict the scope of inquiry or investigation which the Court,
approached under the said provision, is empowered to undertake. As
such, I am unable to subscribe to Mr. Nayar's contention that civil
rights emanating from a contract cannot be adjudicated in a
rectification proceeding under Section 57 of the Trademarks Act. The
contention is, therefore, rejected.
18. The rival rights of the parties on merits
18.1 Coming, now, to the meat of the matter.
18.2 The F-3 Group claims its right to registration of the HERO
GROUP mark for medical products under Clause 2(iii) read with
Clauses 1.1.8 to 1.1.11 and Clause 2(ix) of the TMNA. The F-1
Group, as represented by the petitioner, does not claim any right to
ownership or use of the HERO GROUP mark for medical products.
The petitioner's case is, however, that by conjoint reading of Clauses
1.1.6(e) and 1.1.7(c), registration of any mark for medical products is
permissible only in favour of the F-1 Group, of the HERO ECO mark.
Clauses 1.1.6(e) and 1.1.7(c), therefore, read in conjunction, foreclose
the right of any other Group to seek registration of any mark in its
favour for medical products. This, therefore, would extend to the
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registration of the HERO GROUP mark in respect of medical products
in favour of the F-3 Group. Medical products, the F-1 group would
therefore urge, are its personal fiefdom.
18.3 A careful reading of the FSA and the TMNA persuades me to
accept the submission of Mr. Nayar and reject that of Mr. Sibal. To
understand why I so hold, one may view the matter, first, from the
point of view of the rights of the F-3 group under the TMNA and,
thereafter, the rights of the F-1 group under the TMNA, in respect of
registration of trade marks for medical products.
18.4 Re: Right of F-3 Group
18.4.1 Clause 2(iii) confers exclusive right of ownership and use
over ―Other Products and Services Trademarks‖ and ―Future Products
and Services Trademarks‖ on the F-3 Group.
18.4.2 ―Other Products and Services Trademarks‖ are defined as
the trade mark and name HERO with or without suffixes, used in
relation to Other Products and Services. The expression ―HERO with
or without suffixes‖ would, needless to say, include HERO GROUP.
18.4.3 The definition of ―Other Products and Services‖ in
Clause 1.1.8 specifically excludes ―F-1 Family Group Products and
Services‖.
18.4.4 Clauses 1.1.6 which defines ―F-1 Family Groups Product
and Services‖ specifically includes in sub clause (e), ―Medical
Products & Lifestyle Care equipment for Hospitals, Rehabilitation and
Homes‖.
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18.4.5 Medical products being thus included in the definition of
―F-1 Groups Products and Services‖ ipso facto stands excluded from
the definition of ―Other Products and Services‖ in Clause 1.1.8.
18.4.6 No right to use any mark in respect of medical products
can, therefore, enure in favour of the F-3 Group under Clause 1.1.8.
18.4.7 Clause 1.1.11 defines ―Future Products and Services
Trademarks‖ as the trademark and name HERO with or without
suffixes, in relation to or in connection with Future Products and
Services.
18.4.8 Clause 1.1.10 defines ―Future Products and Services‖ as
all goods and services which are not currently manufactured,
sold/marketed, distributed, offered or rendered by the parties, or their
affiliates, group companies etc.
18.4.9 The word ―currently‖ is not defined in the FSA or the
TMNA. P. Ramanatha Aiyar, in his Advanced Law Lexicon (5th
edition) defines ―current‖ as ―running; now passing or present in his
progress‖ and, alternately, as ―describing continuing state of affairs
that is occurring or relevant at the present time and is expected to
remain so and in the near future‖. Existence at the present time is,
therefore, essential for something to be treated as ―current‖. As the
challenger challenging the validity of the registration of the HERO
GROUP mark in favour of Respondent 1 in respect of medical
products, the onus was on the petitioner to prove, affirmatively, that
medical products were currently manufactured by the HERO GROUP
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of companies; in other words, that they were, on the date of execution
of the FSA and the TMNA, i.e. on 20th May 2010, being manufactured
by one of other member of the HERO GROUP of companies.
18.4.10 No such positive or affirmative evidence is forthcoming.
The last of the invoices produced by the petitioner is dated 24 th March
2006. The BRA, on which Mr. Sibal relies, is dated 30th November
2011. The BRA does not indicate, anywhere that, on the date of
execution of the TMNA, i.e. on 20th May 2010, medical products were
being manufactured by the HERO GROUP of companies.
18.4.11 Mr. Sibal also sought to contend that, apart from facts,
the covenants of the TMNA required medical products to be treated as
―currently manufactured‖. For this, he advances three contentions,
none of which, however, supports his submission.
18.4.12 Mr. Sibal submits, firstly, that Clauses 1.1.8 and 1.1.6(e)
of the TMNA, when juxtaposed, deem medical products to be
currently manufactured. The submission, on its face, is difficult to
accept. Whether an article is, or is not, currently manufactured, is a
question of fact, and a fairly simple one at that. Any concept of
―deemed current manufacture‖ is, therefore, on its face illogical. That
apart, the logic Mr. Sibal presses into service, to support his
submission, is also, in my view, inherently fallacious. Mr. Sibal seeks
to submit that, as the definition of ―Other Products and Services‖ in
Clause 1.1.8, which means all types of goods currently manufactured
excludes ―F-1 Family Group Products and Services‖, and ―F-1 Family
Group Products and Services‖ as defined in Clause 1.1.6 includes, in
clause (e), medical products, therefore, medical products would be
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deemed to stand included in all types of goods currently
manufactured.
18.4.13 I fail to see how.
18.4.14 The definition of ―Other Products and Services‖ in Clause
1.1.8 does mean all types of goods currently manufactured, and does
exclude F-1 Family Group Products and Services, but that does not
mean, by any principle known to logic, that all products enumerated in
the definition of ―F-1 Family Group Products and Services‖, as
contained in Clause 1.1.6, must necessarily be deemed, by the TMNA,
to be currently manufactured. The contention, in effect, interprets
Clause 1.1.8 effectively in reverse. All that the exclusionary part of
the Clause does is to exclude, from the ambit of the Clause, goods and
services covered by Clause 1.1.6. By no known principle of logic can
it be inferred, from this, that all goods and services enumerated in
Clause 1.1.6 are thereby deemed to be currently manufactured. The
argument is, therefore, fundamentally illogical.
18.4.15 If ―A‖ is defined as potatoes, cabbages, carrots and
apples, and ―B‖ is defined as all vegetables other than A, does it mean
that apples are deemed to be vegetables? The answer, to my mind, is
obviously ‗no'. It would, at best, only mean that potatoes, cabbages
and tomatoes would not be included in A. Apples would not be
affected by the definition of ‗A' precisely because apple is not a
vegetable. To read the two clauses as deeming apples to be vegetables
is, therefore, turning the definition of ‗A' on its head. Which is what,
with respect, Mr. Sibal's submission does to Clause 1.1.8 of the
TMNA.
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18.4.16 Mr. Sibal next submits that, if medical products were to
be included in the ―Future Products and Services‖ under Clause
1.1.10, it would create conflict between Clauses 1.1.6(e), read with
Clause 1.1.8, and Clause 1.1.10, as Clause 1.1.10 would then be
including medical products which Clause 1.1.8, read with Clause
1.1.6(e), specifically excludes. This submission, too, is ex facie
unacceptable. The reason is obvious. Clause 2(iii) independently
entitles the F-3 group to rights of ownership and use over Other
Products and Services Trade Marks and Future Products and Services
Trade Marks. Including, in one (Clause 1.1.10), what is not includible
in the other (Clause 1.1.8) does not, therefore, in any manner infract
the TMNA.
18.4.17 Mr. Sibal lastly submits, on this issue, that including
medical products within the definition of ―Future Products and
Services‖ in Clause 1.1.10 would violate Clause 1.1.7(c), as the F-3
group would, then, become entitled to use even the HERO ECO mark
for medical products. Again, the submission fails to impress. All that
is needed is a harmonious interpretation of Clause 1.1.7(c) and Clause
1.1.10, in the light of their parent clauses 2(ii) and 2(iii). Inasmuch as
Clauses 2(ii) and 2(iii) confer exclusive rights to the F-1 and F-3
groups over, in the former case, F-1 Family Group Trade Marks and,
in the latter, Other Products and Services Trade Marks and Future
Products and Services Trade Marks, it is obvious that the clauses have
to be harmoniously read, so as not to efface each other out. So read,
Clause 2(iii), read with Clause 1.1.10, would entitle the F-3 group to
exclusive use of the HERO GROUP mark for all goods not currently
manufactured - which would include medical products - and Clause
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2(ii), read with Clause 1.1.7(c) would entitle the F-1 group to
exclusive use of the HERO ECO mark for medical products. The
attempt of Mr. Sibal to invoke Clause 1.1.7(c) so as to deny, to Clause
1.1.10, its legitimate scope and ambit cannot, therefore, sustain.
18.4.18 Resultantly, it cannot be held that, even contractually,
medical products were ―currently manufactured‖.
18.4.19 The decisions in Ramdev Food Products3, Bangalore
Electricity Supply Co Ltd4, Investors Compensation Scheme5, Jumbo
King6 and Phoenix Commercial Enterprises7 do not further the case
that Mr. Sibal seeks to espouse. Mr. Sibal primarily relied on these
authorities to submit that the covenants of the FSA and TMNA had to
be construed in harmony with trade mark law, as contained in the
Trade Marks Act. There can be no gainsaying the proposition that
every contract has to be interpreted in accordance with extant law.
However, as the manner in which I have chosen to interpret the
various competing clauses of the TMNA does no insult to the Trade
Marks Act, I do not deem it necessary to advert to each of these
decisions.
18.4.20 Clause 1.1.10 cannot, therefore, be said to disentitle the
F-3 Group from registration of the HERO GROUP trademark in its
favour in respect of medical products; on the other hand, it permits
such registration.
18.4.21 In view thereof, it is not necessary to pronounce on
Clause 2(ix) but as Mr. Nayar has invoked the said provision, I deem
it appropriate to observe that Clause 2(ix) cannot enure in favour of
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the F-3 Group, as it deals only with the trademark and name HERO
per se, and not HERO with or without prefixes or suffixes. The right
to registration of the mark HERO GROUP cannot, therefore be
examined on the anvil of Section 2(ix).
18.4.22 The registration of the HERO GROUP mark, in respect of
medical products, in favour of the F-3 Group does not, therefore, fall
foul of Clause 1.1.10 read with Clause 2(iii) of the TMNA.
18.5 Re: Rights of F-1 Group
18.5.1 Mr. Sibal's contention that, as medical products are
covered by Clause 1.1.6(e) of the TMNA, no other Group could seek
to register any trade mark in its favour for medical products, cannot
sustain legal scrutiny. There is no clause, in the TMNA, which
proscribes registration of any mark other than HERO ECO, in respect
of medical products, in favour of any of the Family Groups.
18.5.2 In this context, it has to be borne in mind that
(a) the right of the F-1 Group to ownership and use of the
trademarks is covered by Clause 2(ii) of the TMNA,
(b) Clause 2(ii) gives the F-1 Group exclusive right of
ownership and use over F-1 Family Group Trademarks, and not
over all trademarks in respect of F-1 Family Group Products
and Services,
(c) the TMNA, therefore, confers exclusivity, on the F-1
group, only in respect of F-1 Family Group Trademarks
(defined in Clause 1.1.7), and not in respect of F-1 Family
Group Products and Services (defined in Clause 1.1.6),
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(d) ―F-1 Family Group Trademarks‖, in Clause 1.1.7, is not
defined in terms of the definition of ―F-1 Family Group
Products and Services‖ as contained in Clause 1.1.6,
(e) the definition of ―F-1 Family Group Products and
Services‖ in Clause 1.1.6 is, therefore, irrelevant to the issue of
the entitlement of the F-1 Group, under the TMNA, to use of
any of the marks,
(f) insofar as medical products are concerned, the only
trademark, in the ―F-1 Family Group Trade Marks‖ as defined
in Clause 1.1.7, is the trademark HERO ECO,
(g) though medical products are covered under Clause
1.1.6(e), which defines ―F-1 Family Group Products and
Services‖, the trademark entitlement of the F-1 Family Group is
not defined in terms of Clause 1.1.6 but in terms of Clause 1.1.7
and
(h) under Clause 1.1.7, the only right of the F-1 Family
Group, in respect of medical goods, is for registration of the
trademark HERO ECO.
19. Thus,
(i) the F-1 Family Group, therefore, does not possess any
right of registration of the HERO GROUP mark - or, for that
matter, of any other mark - in respect of medical products,
under the TMNA,
(ii) the only entitlement of the F-1 Group, in respect of
medical products, is to the registration of the HERO ECO mark,
(iii) there is no provision which prohibits any of the other
family groups from registering any mark, to which it is entitled
under the TMNA, in respect of medical products, and
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(iv) consequently, there is no restriction on the F-3 Group,
either, in having the HERO GROUP mark registered in its
favour for medical products.
20. Thus, the Court holds that the F-3 family group is entitled to
register the HERO GROUP mark in its favour under Clause 1.1.10 of
the TMNA and that the said registration does infract any proscription
contained either in the FSA or the TMNA.
Conclusion
21. In view of the aforesaid discussions, the challenge by the
petitioner, to the impugned registration of the HERO GROUP mark in
favour of Respondent 1 in respect of medical products is found to be
devoid of merit.
22. The petition is accordingly dismissed with no order as to costs.
23. Miscellaneous applications do not survive for consideration and
stands disposed of.
24. Let this order be uploaded on the website of this Court within
24 hours.
C. HARI SHANKAR, J.
MARCH 06, 2023 dsn/kr/ar/rb Signature Not Verified C.O. (COMM.IPD-TM) 163/2021 Page 57 of 57 Digitally Signed By:SUNIL SINGH NEGI Signing Date:06.03.2023 15:20:55