Intellectual Property Appellate Board
Chateau De Cognac S.A. vs Shaw Wallace And Co. Ltd. And Ors. on 27 October, 2004
Equivalent citations: 2005(30)PTC321(IPAB)
JUDGMENT
Raghbir Singh, Vice-Chairman
1. CM(M) 146/1995 has been transferred from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/109/2003/TM/DEL.
2. The hearing was held on 16.9.2004 at New Delhi and Shri Sanjay Jain, the learned counsel appeared for the appellant and Shri N.K. Anand, the learned counsel appeared for the first respondent.
3. An application No. 352301 for registration of the trade mark in class 33 in the name of M/s. Cognac Exshaw S.A., was filed on 10.8.1979. In due course, the mark was advertised in the Trade Marks Journal No. 898 on 1.11.1986 at page 648. The first respondent filed their opposition on 21.1.1987. The applicant filed their counter statement on 6.11.1987. In due course the applicant and the opponents filed their evidences.
4. During the pendency of the proceedings before the Trade Marks Registry, the original applicant, viz., M/s Cognac Exshaw S.A., was merged with its parent company viz., Cognac Otard S.A. with effect from 10.6.1987. Cognac Otard S.A. changed its name to Chateau de Cognac S.A. with effect from 12.11.1992. Attorneys of the appellant filed an interlocutory petition with the Registrar of Trade Marks, Delhi, on 19.4.1994 on behalf of Cognac Otard S.A. and the appellant alongwith Forms TM 16 for both of them.
5. The Deputy Registrar of Trade Marks, through his Order dated 11.7.1994, disallowed the interlocutory petition. The only relevant thing in the said Order for us to arrive at a decision is that the Deputy Registrar has considered the request under the interlocutory petition along with the request in Form TM 16 for substitution of the names to be a case of transmission of an unregistered trade mark and thus he concluded that the provisions of Section 44 of the Act are applicable. There are other observations in the Order of the Deputy Registrar which have no material affect in the instant matter.
6. It is very clear from the language of the Order itself and the recital thereof in the first paragraph of the Order itself that this is an application, being No. 352301, for registration of a trade mark in class 33 in the name of M/s. Cognac Exshaw S.A. This clearly implies that there is no case of an existing registered or unregistered trade mark involved. The substantive provisions of the Trade and Merchandise Marks Act, 1958, more particularly, Section 22 of the Act and the relevant Rules analogous thereto under the Trade Marks Rules 1959 are clear that at any stage of consideration of the application, the Registrar can permit an amendment to the application, notice of opposition or a counter statement. Instant is a case where, consequent upon the original applicant company getting merged with another company and that too its principal company and later on the company into which the original applicant got merged having changed its name, the amendments which are of purely consequential nature were required to be made. 'A' got merged into 'B' and 'B' later on has changed its name to 'C'. The proposition is as simple as that. Rights and obligations of 'A' are available to and against 'C. This could have been the position even without there being a formal legislative provision in the nature of Section 22 of the Trade and Merchandise Marks Act. However, the law in this regard under the Trade and Merchandise Marks Act, 1958, is specific and clear. The Deputy Registrar was patently in error in rejecting the interlocutory petition. He should have allowed the substitution of the parties as requested for.
7. Having rejected the interlocutory petition, the Deputy Registrar heard the main application on 9.8.1994 and by his Order dated 15.9.1994 accepted the opposition and refused the application for registration without hearing the opposition on merits. The only ground on which he rejected the application is that since the applicant party is non existent, TM 6 filed by them on 6.11.1987 is void-ab-initio. Since his conclusion so arrived at is consequent upon his rejecting the interlocutory petition dated 19.4.1994, which decision we have held to be wrong the matter needs a fresh examination.
8. Accordingly, we are not in agreement with the Order of the Deputy Registrar dated 15.9.1994 and the same is set aside. Appeal is allowed. We remit the matter back to the Registrar of Trade Marks for consideration of the application afresh for disposal in accordance with law. No Order as to costs.