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CHAPTER – IV

ANALYSIS AND INTERPRETATION - I

IV.1 INTRODUCTION

The significance of Law towards Trade Mark Registration, Assignment

and Transmission etc, gives new dimension to the businessmen and public at large.

Great attempts have been made from time to time by persons to expand the

boundaries of Intellectual Property acquired by them and to convert this protective

law into a source of monopoly. But courts have resisted this from time to time. As

such , the Act contains lengthy sections, many cross references and plenty of

provisions and exceptions. The more important provisions have been clarified by

judicial interpretation. But some sections still remain under judicial scrutiny and

analysis.

The purpose of the law of Trade mark to provide for registration and

better protection of trade marks for goods and services and to prevent the use of

fraudulent marks. It is evident from the following judgements of the court, that the

loop - holes in this Act can be removed by court verdicts as the court is the authority

for the interpretation of law. Thus, the present Trade Marks Act 1999 has introduced

better reforms in the law, when a trade mark is presented for registration in order to

protect the interest of the consumers and the traders.

Hence, the detailed analysis of the important case laws relating to the

Assignment and Transmission of Trade mark issues were presented to understand

the intricacies of selected court judgements and its implications. They are,

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IV.2 INTERPRETATION OF SPECIFIC CASE JUDGEMENTS

1. Parties: Supriya Prabhu–Plaintiff–Vs – Janus Remedies – Defendant

Issue: Supriya Prabhu – was the prior user of the trade mark – Colivan D,

Pharmaceutical preparation. There was an assignment of the mark to her from her

predecessor. She changes the packing, which is similar to that of defendants.

Janus Remedies registered their trade mark Colivan D in green packing.

The new company formed came into operation after winding up of the old one. They

could not show a valid deed of assignment of trade mark in their favour. There was

no validity in the deed of assignment issued by the company which was liquidated

consequent to the winding up. The defendants could not claim to the prior user of

the mark.

Supriya Prabhu filed a case against Janus Remedies to bring an action for

trade mark infringement and passing off for using a mark – Colivan D.

Though the defendant did not have a valid deed of assignment, the act of

the Plaintiff in changing the packing similar to that of defendants to be tainted. She

was an imitator of another person’s design.

Judgement: The court refused to grant the remedy.

Implication: She had lost the right of remedy due to her misconduct, eventhough

there was a valid assignment.

2. Parties: Doctor Morepen Ltd. – Plaintiff - Vs - Yash Pharma

Laboratories Ltd. Defendant.

Issue: The Plaintiff “Doctor Morepen” had purchased “LEMOLATE” brand

from the defendant, Yash Pharma Laboratories Ltd. along with the trademark and

entered into an agreement and thus transferring all the rights vested in the defendant

in respect of “Lemolate” and also gave an undertaking that it shall not use or create

any trademark similar to the brand LEMOLATE. But the defendant launched

products under the trademark `LEMOTAB’ Tablet.

The Plaintiff filed a case against the defendant sought for permanent

injunction restraining them from infringement and passing off of a trademark.

Judgement: Held the Plaintiff was entitled to an interim injunction against

defendant as there was a clear evidence of infringement of trademark.

Implication: By a valid assignment the plaintiff stepped into the shoes of the

defendant to take advantages of trademark. When there is a valid assignment, the

aggrieved party will get remedy.

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3. Parties: Brakes International – Petitioner-Vs – Tilak Raj Bagga and

another – Respondent

Issue: M/s. Forward Auto Industries was a firm comprising of two partners namely

Tilak Raj Bagga and Trilok Chand. They had got registered a trademark called

`FINEX’. The firm was dissolved in the year 1985.

On 15.06.1987 Trilok Chand and others trading as M/s. Brakes

International moved a Petition U/s 44 of the Trade and Merchandise Marks Act

1958 alleging assignment of “FINEX” trademark in their favour. The Registrar of

Trademarks registered the assignment in favour of the Petitioner without giving

notice to Tilak Raj Bagga and it was violation of the Principles of Natural Justice.

Judgement : Held ordered for the removal of entry made in favour of Trilok Chand

and others and restoration of the position as it existed prior to 15.06.1987. Direction

was given to both parties to appear before the Registrar and the Registrar will decide

the matter, after hearing both the parties in accordance with law.

Implication: Legal protection is given to the affected person by restoration to the

original position when natural justice is violated.

4. Parties: Akal Mechanical works– Appellant –Vs- Paras Special

Machine – Respondents Company and others.

Issue: Goal Singh (One of the Partners of the firm) and Gurcharan Singh (one

of the Partners of the respondent firm) were joint proprietors of the registered

trademark “Paras Special” trading as M/s. Akal Mechanical Works, Ludhiana.

The Appellant presented an application on Form TM 24, before the

Registrar, for the removal of the name of the Respondent, from the Certificate of

Registration, this application was allowed and the name of the respondents was

removed from the Certificate of registration without any notice to him. The

respondent contented that the order of removal of his name from the register was

obtained on the basis of forged document and the order was made by the Registrar

without any notice was illegal and void.

Aggrieved by the order of the Registrar the appellant has filed an appeal

before Delhi High Court.

Judgement: Held Statusquo should be maintained till the disposal of the

rectification proceedings.

Implication: The order of the removal of the name of the respondent without

giving notice, seriously affects the proprietary right of the respondent and thereby

contravene of the principles of natural justice.

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5. Parties : Bawa Jagmohan Singh and others – Appellants - Vs -

The Registrar of Trademarks – Respondent

Issue: Petitioner, respondents 3 to 5 and their father Bawa Sardar were partners of

M/s Bawa Masala Company. Bawa Sardar Singh died in 1993. Form TM-24 was

filed for bringing on record their names as registered proprietors of the Trademark.

The application was pending. MOU was executed by them and petitioner, retired

partner was allowed to carry on business of Bawa Masala Co. Pvt. Ltd. but

territories were allotted to him. Respondents submitted an application before the

Registrar of Trademarks for registering the trademark in their name on the basis of

deed of dissolution. The Registrar of Trademarks without issuing notice to petitioner

passed an order in favour of respondents and removed the name of the petitioner

from the register of trademarks.

Judgement: Held. Petitioner name appeared in the register of the trademarks from

1982. His name was removed without giving notice. MOU was not placed before the

Registrar. Stay is granted in favour of the petitioner and direction is given to follow

the terms of MOU.

Implications: Rule of Audi-Altrum-Partem has been violated by the Registrar.

There is a violation of natural justice. Without hearing or without issuing notice to

the affected party, the registrar of trademarks should not pass an order.

6. Parties : Radhakishan Khandelwal – Appellant -Vs -Assistant

Registrar of trade marks & others – Respondents

Issue: The appellant claims to be a joint proprietor along with Shri Jai Madho

Avasthi and Shri Rama Shankar Avasthi, impleaded as respondents 3 and 4

respectively, of a registered trade mark “USHA” in respect of fountain pens”. The

trademark “USHA” was duly registered in the names of the appellant and

respondents 3 and 4 trading as “Asia pen Co”. Respondents 3 & 4 made two

applications on from T.M. 24 (for assignment) and T.M. 16 (for amendment &

correction) in order to correct the names of the registered proprietors by substituting

the names of respondent.The appellant contends that the removal of his name from

the certificate of registration is the result of a conspiracy and the impugned orders

have been made by respondents without any notice to him. Hence he prefers an

appeal before this High Court.

Judgement : FORM T.M. 24 relates to a request to register a subsequent proprietor

of a trademark as assignee upon the same devolution of title. Registrar at the time of

discharging his duties he performs “Quasi Judicial functions”.The registrar’s orders

in this case have got to be set aside on the ground that the appellant has not been

given opportunity to shown cause against the action. Appeals are allowed and the

orders removing the name of the appellant from the register of trademarks are set

aside.

Implication: Person adversely affected should have a notice of proceedings and

would be entitled to a copy of the order of the registrar. Notice is essential even if

the order is considered as to be administrative.

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7. Parties: Sun Pharmaceuticals Industries Ltd. – Plaintiff -Vs-

Cipla Limited Defendant

Issue: The Trademark “THEOBID” was assigned to the Plaintiff along with the

goodwill by deed of assignment Form TM 24 was submitted to register the name of

the Plaintiff as the subsequent proprietor of Trade Mark – “THEOBID” the

defendant – Cipla Ltd. used the Trademark “THEOBID - D, deceptively similar to

the Plaintiff. The Plaintiff Sun Pharmaceutical Industires Ltd. had instituted the suit

for Permanent injunction against defendant.

Judgement: Held, the Plaintiff, whose registration of assignment is pending before

the registrar (not registered) is entitled to exercise right as the Registered Proprietors

of Trade Mark THOEBID. Plaintiff entitled to interim order. The defendant co. was

restrained from manufacturing, selling or dealing in medical preparations under the

trademark “THEOBID”.

Implication: If title in registered trademark vests in assignee, after assignment

before registration, he is entitled to have the right of the registered proprietor.

8. Parties: Waman - Appellant/Defendant –Vs-Ramesh – Respondent /

Plaintiff

Issue: The Plaintiff had purchased the trademark “Hebare” from Dayalal & Co. and

accordingly, deed of assignment was executed and thus Ramesh became the owner

of the Trade Mark from the date of Assignment. The Plaintiff and the Defendant are

brothers. Both have surname “Hebare”. Waman, the appellant transferred the

property name, goodwill of the business to his brother Ramesh.The Plaintiff Ramesh

is the proprietor of the trade mark “HEBARE” for the last 20 years for sewing

machine.Waman – Appellant using the word Hebare in large font while other words

“Ajnit” and Ajinkya used in small letters.The Plaintiff sought temporary injunction

restraining Waman from using the trademark.

Judgement : The High Court of Bombay has come to conclusion that Ramesh, the

Assignee immediately on assignment i.e. by writing acquires title to the registered

Trademark, Waman could not be allowed to make use of the Trade Mark in order to

get themselves illegally enriched Appeal was dismissed.

Implication: u/s 45(1) Registration is “on proof of title”. The title exists in

assignee even before registration.

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9. Parties: Wipro Cyprus Private Ltd.-Plaintiff -Vs- Zeetel Electronics–

Defendant

Issue: Lornameded Group Ltd. got its trademark registered in India under the Trade

Marks Act 1999. The Plaintiff – Wipro Cyprus Private Limited purchased the

registered trademark “Yardley” from Lornameded Group Ltd., U.K. After getting

the assignment from the original owner of the Trademark YARDLEY the plaintiff

filed an application for getting the registration transferred in its name for the Talcum

powder. The defendant Zeetel Electronics is attempting to bring into India from

Singapore the products bearing the plaintiff’s trademark - `YARDLEY’, so as to sell

them in India and thereby, trying to infringe the right of the plaintiff. The plaintiff

prays for injunction.

Judgement: Once the assignee, Wipro Cyprus Private Ltd., has got the assignment

of the trademark from the original registered owner (Assignor) then he has got

exclusive right to use it in India. If the defendant, Zeetel Electronics, is permitted to

bring YARDLEY product by importing from Singapore in Violation for the purpose

of sales in India comes within the definition of infringement. The intention of law is

to see that such assignees are protected and if no injunction is granted then certainly

the plaintiff would be prejudiced. Injunction granted against defendant from

importing such goods into India from Singapore.

Implication: When the assignee is having valid assignment, he has got the right u/s

28 i.e., rights conferred by registration and u/s 29 protection against infringement.

10. Parties: Shaw Wallace & Co. Ltd. and another – Plaintiff –Vs-

Superior Industries Ltd. – Defendants.

Issue: The Plaintiff NO. 1 who is the proprietor of the various trade marks,

including subject Trade mark “HAYWARDS 5000 SUPER STRONG BEER” – has

assigned this trademark to the SKOL Brewaries Ltd. Bangalore by virtue of deed of

assignment dated 27.05.2005. The assignor – Shaw Wallace Co. and the assignee

Skol Brewaries Ltd. have filed TM-23 & TM-24 before the Registrar of Trade Mark

on 27.05.2005 itself in compliance with the provisions of Sec. 45 of the Trade

Marks Act. 1999.

No objections have been filed before the Registrar. The Registrar of trade

mark is yet to register the assignment in favour of Skol Brewaries Ltd.

Judgement: The assignee is impleaded as a party to the suit eventhough the

registrar is yet to register the assignment in favour of the assignee. The present

application is allowed. The Plaintiff No. 3 (assignee) is permitted to impleade as a

party to the suit.

Implication: Application for impleadment of the assignee, as plaintiff to the suit, is

accepted.

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11. Parties: Sigrune Marlene Chapman – vs - Mill Valley Cotton

Issue : An application to register the mark “MILL VALLEY COTTON” for

clothing namely pants, tops, dresses, skirts & jumpsuits was filed in the name of

Mill Valley Cotton, an entity described as a Joint Venture organized under the law

of California, Composed of Jeffery Vinokur and Sigrune M. Chapman. Registration

was opposed by Signune M. Chapman. Opposer Sigrune, M. Chapman and Jeffrey

Vinoker entered into an oral agreement for the manufacture and sale of garments.

The trademark Mill Valley Cotton belonged to the opposer. The mark sought to be

registered was not owned by the alleged Joint Venture and that Jefferey Vinokour

was not authorized to execute. The oral agreement between the opposer and Jeffrey

Vinokar was terminated by Jeffrey in November 1988 and has expressly abandoned

whatever rights he may have claimed in Mill Valley cotton and that the opposer is

the sole owner of “Mill Valley Cotton”.

Judgement : Jaffrey filed a copy of an assignment of the Mark Mill Valley cotton to

the opposer. The Board had not accepted and decided that the oppose is the owner of

the mark and the person entitled to register it. The Board ordered that the application

should be amended to show sigure M. Chapman as an applicant (and the owner of

the trade mark Mill Valley cotton) and the registration of the mark should be in the

name of Sigrune M. Chapman).

Implication: The person who abandoned the rights in the assignment cannot claim

rights over the trademark.

12. Parties: Performs Nautee Ltd. Incorporated–Petitioner–vs-American

International Industries – Respondents

Issue: Performs Nautee Ltd. Inc. filed a Petition to Cancel a registration, owned by

American International Industries, of the mark “NAUGHTY” for perfumes. As

grounds for cancellation, petitioner asserts that respondent has discontinued the use

of the registered mark with intent not to resume use, thus resulting in an

abandonment of the mark. Respondent had denied the allegations of the Petitioner.

This case now comes up on petitioner’s motion for summary judgement. Petitioner

asserts that the registered mark was abandoned by its previous owner Neslemur,

Nestle-Lemur company owner. Therefore the mark was not capable of assignment to

the present owner, respondent. Petitioner further asserts that, following this

assignment, respondent itself made no actual commercial use of the mark for 3

years.

Judgement: Respondent has objected to the entry of summary judgement. The

purpose of summary judgement is one of the judicial economy, that is, to save the

time and expense. The assignor/predecessor has abandoned the registered mark

“NAUGHTY” for perfumes. This abandonment resulted in a invalid assignment (i.e.

an assignment in gross). Abandoned trademark is not capable of assignment.

Petitioner’s motion for summary judgement is granted. The petition for cancellation

is granted.

Implication: Abandonment of a registered mark cannot be reversed by subsequent

re-adopting of a mark.

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13. Parties: B.S. Ramappa & Another – Petitioners –vs- B. Manoappa

and another – Respondents

Issue: B.S. Ramappa and his son applied for registration of the trade mark in 1961

in their favour.The elder son Monappa applied for the registration of trademark in

1963, he claimed registration of trademark in 1963, he claimed registration of

trademark as the owner of the trade mark by virtue of assignment on 17.01.1950. On

1965 the Assistant Registrar of trade mark passed an order registering a trade mark

in the name of B. Monappa.

Judgement: An appeal against this order of the Assistant Registrar was filed by

his brother B.S. Ramappa. Held, eventhough the father had expressly permitted

Monappa to use the trade mark it would not necessarily amount to assignment, the

person permitted to use would be user by the proprietor himself.Monappa was not

entitled to registration. The court directed the Registrar for the registration of altered

mark in favour of Monappa. Appeal was dismissed.

Implication: The permitted user is not entitled to register his name as owner of the

trademark. He is only the registered user not the registered proprietor.

14. Parties: Dulil Chand – Petitioner –vs- Registrar of trademarks and

Naushardar & Others – Respondents.

Issue: An application was made to the Registrar of trade marks by Shri Dwarka

Parshad Bindal & Others who were carrying on business under the name and style of

Naushardar Bar Assocation on 26.08.1956.The applicant registered a trademark

which consisted of a label containing the device of two half sun, the word sun and

letters B.C.I. in respect of ammonium chloride bars for use in Industry. The

appellant filed a notice of opposition to the registration of the said trade mark. The

joint Registrar of trademarks rejected the opposition filed on behalf of the appellant

and ordered for the registration of the mark. An appeal against the order of the Joint

Registrar of trade mark was filed by the appellant / petitioner. The respondents

argued that there was a valid assignment. In the partnership deed (dated 03.05.1961)

partners have decided by mutual consent to the assignment and transfer of trade

mark infavour of the partnership firm.

Judgement: The firm continued the business after the assignment. Besides several

documents filed as evidence, the two most important post cards which are placed on

record, written a number of years ago. These post cards refer to goods bearing the

Sun Brand, which bear the seal of the post office which cannot be fabricated.

Therefore the opposition of the appellant cannot succeed. The appeal is dismissed.

Implications: The respondent succeeded his case based on the strong evidence

produced in the appeal. No remedy for the false claim.

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15. Parties: M/s. Thermofriz Insulations - Petitioners-vs-Vijay Udayog-

Defendant

Issue: The Plaintiff M/s. Thermofriz Insulations Private Limited instituted a suit for

injunction rendition of accounts and damages etc., on the allegations that they were

registered proprietors of the trademark “THERMOFRIZ” in respect of non metallic

fiber boards for use as building materials for ceiling and paneling. The defendants –

Shri Mohan Rai trading as Vijay Udyog fraudulently and dishonestly adopted the

trade mark “THERMOFRIZ” in order to gain undue advantage of the reputation of

the plaintiff and started passing off his inferior goods as that of the plaintiff. During

the pendency of the suit, one Vinod Kumar Bhuwalka, sole proprietor of firm styled

M/s. Vijay Chemical moved an application for substitution in the place of the

original plaintiff , stating that by deed of assignment, the plaintiff assigned all

proprietory rights in the registered marks “THERMOFRIZ” to him. The defendants

have raised objections that the present plaintiff has no right to continue with this

suit.

Judgement: There is an assignment of registered trademark by the original plaintiff

infavour of the present plaintiff along with its goodwill and he can continue the suit.

Implication: Where during the pendency of a suit for infringement and passing off,

the plaintiff assigns the trademark to a third party, the assignee can continue the suit

so-far as the relief of injunction is concerned but not for rendition of accounts and

damages.

16. Parties: Sharda Machinery Corporation – Appellants - vs -

R.S. Sewing Machine Co., – Respondents.

Issue: The Trade Mark “EVEREST” was originally used in India by centre sewing

Machine manufacturing Company of Japan. It was exporting its sewing machine

under the trademark “EVEREST” since 1948. In 1955, the applicants were assigned

the said trademark along with the goodwill of the business. The deed of assignment

was executed and they had become the proprietors of the said trademark. This was

the contention of the appellants. The respondents had been dealing in the

manufacture of Sewing Machines under the trade mark “EVEREST”. The

respondents did not come to know of the Everest Sewing Machines being sold by

centre Sewing Machines manufacturing company of Tokyo, Japan (i.e. Japanese

firm). The respondents claimed proprietorship of this mark. Both the respondent and

the appellant filed the applications for the registration of the trademark

“EVEREST”. The assistant registrar of trademarks ordered the registration of

respondent’s trademark. The appellants preferred an appeal before the High Court

against the order of the Assistant Registrar of Trade mark.

Judgement: The respondents were widely advertising their Everest Sewing

Machines in various newspapers and Journals. No action was taken against them

either by the Japanese firm or by any of their agents in India. There was

misrepresentation that the trademark had been assigned with the goodwill in India.

The alleged letter of assignment is not a genuine one. Appeal is dismissed with cost.

Implication: The claimant has lost remedy due to misrepresentation, as the

assignment deed is not a bonafide transaction and is colourable.

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17. Parties: Raji Tirathdas Rupchand & Co – Appellant / Plaintiff -Vs –

Laxman Bhai Vansimal Rajali – Respondent / Defendant.

Issue: The defendant was the agent of the plaintiff in the bidi business. A

partnership agreement was entered between the plaintiff and the defendant.

Registered trade mark was dealt with by the defendant as owner through assignment

of trade mark. The suit was filed in connection with registered trade mark by the

Appellant / Plaintiff. Application for interim injunction to restrain respondent from

using the trade mark was filed by the Appellant. His contention was that there was

fraud and misrepresentation in the assignment of trade mark in favour of Respondent

/ Defendant.

Judgement: Documents of assignment was duly attested by Advocates and Notary

Public. So assignment was genuine. Stay order was not given for the Appellant /

Plaintiff. No interim injunction can be issued unless the plaintiff has a prima facie

case in his favour. The appeal is dismissed.

Implication: The genuineness of the assignment is the strong base for the success

of the case.

18. Parties: Tata Oil Mills Co., Ltd. – Plaintiff -Vs - M/s. Wipro Ltd.,

and another – Defendants.

Issue: The plaintiff was the registered proprietor of the trademark “Dubble” the

Defendants was the registered proprietor of the trademark “Bubbles”.In the year

1977, the plaintiff, Tata Oil Mills Co., Ltd. adopted a distinctive trade mark

“Dubble” for washing soaps. Defendant No. 1 M/s. Wipro Ltd., is engaged in the

manufacture and sale of toilet soaps and has adopted the trade mark “Bubble” .The

defendant’s predecessor M/s. Utility Home Product were using the trade mark

“Bubbles” since 1977. By an agreement dated 06.09.1985, this mark was assigned

by M/s. Utility Home Products to M/s. Wipro Ltd., Defendant No. 1.The Registrar

has accepted the assignment and has entered the name of M/s. Wipro Ltd, as

subsequent proprietor of the trade mark “Bubbles”.

Judgement: The plaintiff filed the present suit claiming injunction against

defendants and interim injunction was granted in favour of the plaintiff. The

defendant No. 1 came into existence only on 2.8.1977, which is subsequent to the

date of registration of plaintiffs trade mark “Dubble” i.e. 22.2.1977.Defendant No. 1

made a crude attempt to defeat the claim of the plaintiff by creating bogus

assignment. Even otherwise the mere pendency of the trade mark application confers

no legal rights in favour of the defendant No. 1.The Exparte Injunction order already

granted by this court is confirmed.

Implication: No legal remedy is available, if there is bogus assignment submitted

to defeat the claim of other person.

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19. Parties: Hardie Trading Limited, Melbourne, Australia and other

Appellants-Vs Addisons Paints and chemicals Ltd., Madras and

Another – Respondents

Issue: M/s. Hardie Trading Limited is a foreign company having its registered

office at Melbourne, Australia. Hardie is the registered owner of the trademark

SPARTAN and warrior device and SPARTAV VELOX. M/s. Addisons paints and

Chemicals Limited, Madras was the Selling agent of Hardie in India and the

registered user. The registration of Addison as registered user of the trade mark was

cancelled by Hardie. The Registration was allowed for Addison to adopt the device

of ancient warrior– “Super Fine Products” as trademark. Hardie had entered into a

trademark licence agreement with Hansa Paints and assigned Hansa the registered

trademarks, SPARTAN and SPARTAN VELOX. The joint Registrar of Trade

Marks removed the three marks of Hardie from the Registrar, pursuant to the

rectification proceedings initiated by Addison. Appeal was filed by the Hardie

against this removal of trade mark.

Judgement: Held the device of bust of warrior said to have been registered as a

trademark in Australia by Hardie had not been registered in India and he could not

have used the device of bust of warrior. Hansa cannot claim to be the assignee with

respect to the unregistered trademark of the assignor (Hardie) either on Law or on

facts.

Implication: The person who is having neither business nor goodwill cannot assign

the trademark.

20. Parties: M/s. Modi Threads Limited – Petitioner- Vs - M/s. Som &

Soot Gola Factory and another – Respondents.

Issue: The plaintiff’s predecessor M/s. Modi Thread Mills had been engaged in the

business of manufacturing exporting and selling cotton, synthetic threads and yarns.

In the year 1966, it adopted the trade mark “Cock Brand”. In 1983 the plaintiff took

over the business of M/s. Modi Thread Mills, predecessor. The defendants have

dishonestly adopted the impugned trademark similar to that of the plaintiff. The

plaintiff filed a suit against defendent for infringement of trade mark. The

defendants contested that the plaintiff is not the proprietor of the Registered Trade

Mark. He has no locus standi to file the present suit.

Judgement: The plaintiff has placed on record the copy of the assignment deed

showing that the proprietor of the M/s. Modi Thread Mills transferred all their rights

in the mill including the rights in the trade mark infavour of the plaintiff during

1984. The cause of action is the infringement of the trademark. Held, the plaintiff

has become owner of the registered trade mark, he is entitled to have temporary

injunction till the disposal of the suit.

Implication: The plaintiff, the legal representative of the deceased proprietor,

already inherits the legal title. So he has locus Standi to file the suit seeking

injunction.

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21. Parties: M. Ramaswami Chettiar – Appellant / Defendant - Vs -

T.M. Ramaswamy Chettiar & Co. - Respondent

Issue: T.M. Ramaswami Chettiar and Co. is a partnership firm carrying on business

in gingelly oil under the name “Shri Kannan Brand Pure Gingelly oil” from 1975

onwards. M. Ramaswami Chettiar is one of the partners of his firm, retired from the

parnership firm and severed all his connection from the firm. The firm was

reconstituted on 27.2.1979. The firm filed for the relief of permanent injunction,

restraining him from interfering with the user of the trade mark. After contest, the

suit was decreed. M. Ramaswami Chettiar has filed an application before the

Registrar of Trademarks in Form TM-24 to bring on record his name. Assignment of

trade mark is made in the name of defendant. The order has been passed without

giving an opportunity to the other persons.

Judgement: In the absence of any notice to other partners, the order of registrar of

trademarks is not valid. The defendant who claims registration as an assignee should

file an application before the expiry of 6 months from the date on which the

assignment is made and the Registrar has got a discretion for extending the period

by another 3 months and in all, the application should have been filed within 9

months. The application filed by appellant is beyond the period of 9 months.

Therefore, the application is barred by limitation. Appeal is without merits and liable

to be dismissed. Set aside the order of Joint Registrar of Trademarks.

Implications: Application by the assignee for the registration of assignment must be

filed within the stipulated period 9months.

22. Parties: Cluett Peabody & Co. Inc. – Plaintiffs / Appellants - Vs -

Arrow Apparels – Defendants / Respondents

Issue: Plaintiff No. 1 is a corporation organized under the laws of the State of

Deleware, USA carrying on an international business of goods and marketing

readymade garments. Plaintiff No. 2 is the licensed user of the trade mark.

Defendant No. 1 is a firm, carrying on a business of manufacturing and dealing in

readymade shirts. The Plaintiff’s trade mark is “ARROW.” These trademarks were

assigned to the second plaintiff. The Registrar brought the plaintiff’s name on record

as the proprietor of the Trade Mark: ARROW. The suit is filed by the Plaintiffs to

restrain infringement of registered trademark of plaintiff No. 1 “ARROW”. The suit

is filed by the plaintiff to restrain the defendant from using the “ARROW” as part of

the defendant’s trade name.

Judgement: Assignment of trade mark of plaintiff 1 infavour of plaintiff 2 was

effected. The goods were manufactured in India and exported to Canada, there were

import restrictions. They were not able to use the mark ARROW in India for 30

years. The prayer for injunction sought by the plaintiff is rejected.

Implication: The object of the Trade Marks Act is to protect the proprietary right of

registered trade mark holder. However, if the mark is registered and not used for 30

years, it becomes a source of monopoly which is not the object of the Act.

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23. Parties: Hirubhai Bimabhai patel and others – Appellants - Vs -

V.H. Patel and Company and others – Respondents

Issue: The firm M/s. V.H. Patel and Co is a registered partnership firm. The

business of the firm is manufacturing and selling chewing tobacco. There were three

trademarks registered in the name of the partnership firm. A firm M/s. V.H. Patel &

Co. was constituted with Hirubai Patel and Co and his two sons as partners. Hirubai

was also a partner in V.H. Patel & Co. Hirubai was given right to use the trademarks

separately only in the territories. Hirubai executed document i.e deed of retirement.

Respondents filed a suit against Hirubai in order to restrain him from using the

Trade Marks. The respondents, by deed of assignment had assigned 3 registered

Trademarks with goodwill to defeat the interest of the petitioner (Hirubai).

Judgement: The litigation reached the Supreme Court by way of Special Leave

petition. The Supreme Court decided to refer the dispute to the arbitration of Sole

Arbitrator. Hirubai argued by counter claim for the dissolution of the partnership

firm. Arbitrator “refused to award for dissolution of firm for the reason that he

(Arbitrator) has no jurisdiction. It is clear that the Supreme Court has held that the

Arbitrator had to consider the counter claim.

Implications: According to the Supreme Court an Arbitrator has jurisdiction to

consider all questions before him in case of dispute. Driving a party to a separate

litigation for the relief would not be proper and valid.

24. Parties: Auto Pex Motor Co.–Plaintiff -Vs- Deepak Sethi and

another - Defendants

Issue: M/s. Auto Pex Sales India was the predecessor of the plaintiff. The plaintiff

– Auto Pex Sales Motor Co is a partnership firm consisting of two partners Ramesh

Chand Sethi and Kapil Sethi. It is engaged in the business of manufacturing and

marketing of gaskets with the trademark of “Master Label”. The plaintiff also started

using the trademark, Super Master and Gold Master.

The trademark was assigned to the plaintiff by deed of Assignment by

the predecessor. An application was filed for recording the said assignment of

trademark. Defendant No.1 Deepak Sethi engaged in the business of manufacturing

and marketing the gasket and has adopted the trademark “Super Master Label”. The

defendant argued that the said trademark was a family trademark, ancestral property.

Plaintiff claim is that the deed of assignment had been assigned and the partners of

M/s. Auto Pex Motor Co are having the right to use the trademark along with the

goodwill. The deed of assignment is signed by Sethi brothers to which defendant

No.1. Deepak Sethi witnessed the assignment deed.

Judgement: The trademark had been assigned to the plaintiff and it was witnessed

by defendant No. 1. The plaintiff has primafacie case. The plaintiff is prior user of

the trademark. The defendant, his representatives are restrained from manufacturing

and selling or advertising the gaskets bearing the trademark super market label.

Implication: A person, who is a witness to the valid deed of assignment, cannot

question the assignment in a court of law.

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25. Parties: Soundarapandian Match Works – Appellant- Vs-

M. Jayarama Chetty and Others - Respondents

Issue: The plaintiff is the appellant before the Madras High Court. The plaintiff

contended that they are manufactures of safety matches and seller for the past 23

years. One of the trademarks of the goods marketed by the plaintiff is the label

trademark “BULB” with the device of the bulb. The first defendant under the name

of “The Andhra Pradesh Co.The first and second defendant were not using the

registered “Bulb” for the past 20 years. Their trademark met its natural death as a

result of continuous non user. This argument was placed before the court. The third

defendant was carrying on business at Rajapalayam. Without the knowledge of the

plaintiff the 3rd

defendant had negotiated with the second defendant for the purchase

of abandoned and unused Trademark which stood registered in the name of the first

defendant.

Judgement: The allegation by the plaintiff that the first defendant had abandoned

the user of goods had not been disclosed before the court. The truth and validity of

the assignment deed appears to have been challenged before the trial court by the

plaintiff. Application for the Registration of the assignment was pending for disposal

of the Deputy Registrar of Trade Marks, Mumbai. It is held that the third defendant

is not entitled to use the impugned packing without proper approval of the alteration

by the Registrar. The plaintiff is entitled to the consequential reliefs. The appeal is

allowed.

Implications: As long as the registration of assignment had not been completed, the

assignee cannot claim to have stepped into the shoes of the assignor/ registered

proprietor.

26. Parties: Harmohan Singh–Plaintiff - Vs - Gurbax Singh – Defendant

Issue: The plaintiff and the defendant are brothers carrying on business of

manufacturing of motor parts, engine parts for use in automobiles in partnership

under the name of Guaranteed parts manufacturing company. During the course of

the business, the trademark GP was adopted in respect of pipes, its application for

registration is pending. By mutual consent the partnership was dissolved by virtue of

Deed of Dissolution. The defendant retired from partnership. The defendant

thereafter started using the trademark GPI in relation to pipes. The trademark GPI is

deceptively similar to the trademark G.P. Hence, the defendant is guilty of

infringement of copy right and also passing off their goods.

Judgement: The Court granted an exparte and interim injunction order, restraining

the defendant from using the trademark GPI. Held. As per the Dissolution deed, the

defendant had surrendered all his rights infavour of the plaintiffs. The defendant was

restrained from using the same trademark. Interim order is made absolute till the

disposal of the suit.

Implications: Once the dissolution deed lays down the rights and obligation of the

erstwhile partner, there is no necessity to execute a separate assignment deed. In

fact, the dissolution deed itself would become an assignment under the law.

116

27. Parties: Agromore (P) Ltd. & Another Plaintiff - Vs - Chembond

Chemicals Ltd & Another – Defendants

Issue: The plaintiff has filed a suit claiming that it is a company carrying on

business of the manufacture and sale of Industrial and Agrochemical products and in

export market for 4 decades. “RODINE”, the trademark for the Industrial chemical

products is used in the form of Acid inhibitor for Industrial cleaning. The plaintiff

made an application for registration of the trademark RODINE in their name.

Defendant No. 1 was selling an identical product as that of the plaintiff product

RODINE under the trademark “RODINE-58”. The plaintiff filed a suit for infringing

the trade mark of the plaintiff.

Judgement: Amchem Products Incorporated Company has assigned its trade mark

to the plaintiff with a right to obtain reassignment on 15.05.1963. The plaintiff had

reassigned the trade mark to the Amchem Corporation on 16.08.1973. On the same

date i.e. 16.08.1973 by an agreement, the said company granted the plaintiff

permissive right to use the trade mark RODINE. The plaintiff has not been able to

establish the case of abandonment of the trade mark by the Amchem Corporation or

its successors. Plaintiff is not entitled to temporary injunction.

Implications: The plaintiff is not entitled to temporary injunction in the capacity as

a registered user, after reassignment to the assignor.

28. Parties: Three N. Products (P) Ltd., - Petitioner-Vs - Jocil Ltd., and

another – Respondents

Issue: The applicant is the registered proprietor of the trademark “Ayur in respect

of cosmetics. The applicant filed a petition seeking for cancellation of the

Registration of the trademark “Ayush” and seeking for an interim injunction

restraining the 3rd

respondent – registrar from registering the 2nd

respondent, Jocil

Ltd., as Subsequent proprietor of the Trademark “Ayush”. The 1st respondent is the

original owner of the trademark “Ayush”. The 2nd

respondent is the assignee of the

trademark “Ayush” and a valid assignment was made in its favour . By reason of the

non-renewal and non payment of the renewal fee, on the date of the deed of

assignment of the “Ayush” trademark, there was no property in the hands of the

assignor to assign infavour of the second respondent.

Judgement: Registrar without application of mind has allowed the registration of

the trademark infavour of the second respondent. When the renewal of a trademark

becomes due, even a registered owner of the said trade mark, who has not renewed

the same as required by law, cannot make any claim Interim injunction is granted

against respondents. Application by the petitioner is allowed.

Implications: On the date of execution of assignment deed, there was no property in

the hands of assignor to assign infavour of the assignee. At this stage, even a

registered owner cannot make any claim over his registered trademark.

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29. Parties: Casio India Co Limited. – Plaintiff - Vs - Ashita Telesystem

Pvt. Limited – Defendants

Issue: Plaintiff is Casio India Ltd, Defendant No. 1 is M/s. Ashita Telesystem Pvt.

Ltd., Mumbai Defendant No. 2 is the Registrar. Plaintiff is aggrieved by the

Registration of domain name www.casioindia.com by the defendant No. 1 .Plaintiff

claims to be a 100% subsidiary of Casio computer Ltd., Japan (Casio Japan) which

is registered owner of the trademark “Casio” in India used for a large number of

electronic products, watches and calculators. Plaintiff was the sole selling agent of

Casio Japan in India. Plaintiff claims to have been given exclusive right to use the

trademark in India and has filed a suit claiming that the impugned registration of

domain name by defendant No. 1. The defendant has no authorization or right to use

the name “CASIO” in its domain name. The defendant opposes the injunctions

claimed by the plaintiff.

Judgement: Held. The distribution agreement between the defendant and the

plaintiff has expired and has not been renewed. The Plaintiff has made out prima

facie case for the grant of an injunction. There was an agreement between Casio

Japan and the plaintiff. It records that the plaintiff is authorized to use the brand

name “CASIO” in India. The agreement was inforce at the time of institution of the

suit and it has been extended. No specific assignment of Trademark or authority is

required for instituting the suit. Therefore, the plaintiff has locus standi to institute

the suit and the objection of the defendant is without merit.

Implication: When the agreement is in force, the authorised user has inherent right

to file a suit. No specific assignment of trademark is required for that purpose.

30. Parties: Vinod Kumar Jain – Plaintiff - Vs - Blumac Electricals India

- Defendant

Issue: Classic Equipments Pvt. ltd. had become the proprietor of the trademark

“Johnson” on its acquisition of M/s. Johnson Sales (India) by an agreement during

1992. A registered user Agreement (License) between classic equipments Pvt. Ltd.

and the defendant, Blumac Electricals India was entered for a period of 51 years

subject to the payment of royalty by the defendant. He already used the mark for 20

years. The deed of Assignment of the trademark is executed between Classic

Equipments and the plaintiff, Vinod Kumar Jain as a consequence of a family

settlement. In the meantime Classic Equipments revoked the assignment made in

favour of the plaintiff, Vinod Kumar Jain. The plaintiff has filed a case and prayed

for an interim injunction restraining the defendant from using the trademark

“Johnson”. The defendant opposed the registration of the trademark.

Judgement: The plaintiff has failed to disclose the existence of a primafacie case in

his favour. The Plaintiff application is dismissed and the defendants application for

vacating the stay is allowed.

Implication: Law provides legal sanction to the trade mark by its registration and

not necessary to the holder of the trademark

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31. Parties: M/s. Wonderfield electrodes Pvt. Ltd., Gujarat – Appellant /

Defendant - Vs - Ahura welding electrodes manufacturing Limited

Coimbatore – Respondent / Plaintiff.

Issue: The Respondents / Plaintiff – Ahura welding Electrodes Manufacturing Ltd.,

is a public Limited Company, engaged in the manufacturing and supply of welding

electrodes. The first defendant engaged in the production and supply of electrode

and is the registered owner of the trademark SUN-ARC. It was a partnership firm till

1988 and became a private company. The trade name SUN–ARC is the property of

the first defendant and the plaintiff acquired the right to sell from the defendant for

10years. The Plaintiff has got the right to use the trade name and emblem. The

Plaintiff came to know that the first defendant has assigned the trade name SUN-

ARC to the second defendant. The defendants 1 and 2 have suppressed the material

facts before the Registration authorities and obtained an illegal registration and filed

a suit for injunction.

Judgement: The first defendant is the proprietor of the trade mark SUN-ARC.

The plaintiff is a licensee to use the trademark SUN-ARC. The plaintiff has failed to

make out a prime facie case. After assignment of trademark in favour of defendant

the licensee cannot seek an order to restrain the statutory rights vested in the

registered proprietor of the trademark and the licensee cannot prevent the use of the

mark by any other licensee.

Implication: One cannot question the statutory right vested in assignor to assign

the mark in favour of the assignee or any one.

32. Parties: New Nandi Seeds Corporation – Application - Vs -

M.V. Subbiah & Others – Respondents

Issue: The Applicant – New Nandi seeds Corporation is engaged in the business of

Production and marketing of seeds i.e.,Hybrid Bajra, Hybrid Cotton

Seeds,etc.“Nandi” was registered by the predecessor and the trade mark was

assigned to the applicant “New Nandi Seeds Corporation”. The assignment was

approved by the Registrar of Trademarks and the applicant is the registered

proprietor of the said trademark “Nandi”. The first respondent was trading under the

name of M/s. Nandi seeds and claiming to be the prior user and the registered

proprietor of trademark “Nandi”.

Judgement: The applicant filed a suit in the District court against respondent for

infringement of applicant’s trademark and obtained interim exparte injunction. The

respondent preferred an appeal before the High Court. The High Court confirmed

the order of injunction granted in favour of the applicant. There is no material placed

before the Registrar of Trade Mark or before IPAB. Registration of impugned

Trademark in the respondents names to be removed from the Register. Application

for rectification allowed.

Implication: The person who is claiming as the prior user must prove with

bonafide evidence.

119

33. Parties: Cott Beverage Inc., A Georgia Corporation – Petitioner-Vs -

Silvassa Bottling Company – Respondents

Issue: The appellants are the successors of Royal Crown Company Inc., a company

incorporated in U.S.A. The Royal Crown Company applied for registration of the

trademark containing the letters “RC” in respect of non-alcoholic, beverages and

syrups. The Royal crown company by deed of assignment assigned trademark in

favour of the appellant. In the year 1995, Royal Crown Company made an

application for registration “RC Cola”. The respondents also have made an

application for registration of “RC Cola” Mark. Both these applications for

Registration of “RC Cola” are thus pending registration. The assignee (Appellant)

fails to apply to the Registrar for Direction with respect to advertisement of

assignment within the period (nine months) as prescribed by the Registrar.

Mandatory condition U/s 41 not complied with Assignment had not taken effect.

The District Court has vacated the order of exparte injunction given earlier. The

appellants have preferred an appeal against this order.

Judgement: The appellants have been assigned the trade mark but failed to take

steps for advertisement within a period of 9 months. The case of respondents is that

of prior use. The Plaintiff – appellants have started marketing its goods in Andhra

Pradesh and Bangalore. Both the parties have invested huge amount. The trial court

is directed to decide the suit as expeditiously as possible to decide the matter.

Implication: Mandatory condition i.e., advertisement of assignment within the

period of 9months in the case of assignment without goodwill not complied with.

Assignment had not taken effect.

34. Parties: Gopal Dass Arora-Applicant - Vs – Takkar (India) Tea Co.

Kaithal Opponent

Issue: Shri Gopal Dass Arora – Applicants trading as M/s. Gopal Dass & Sons filed

an application for registration of a Trade Mark “Gopal” in respect of Tea. The

trademark was in use since 1981, adopted from the personal name of the proprietor.

The application was examined and was allowed to be advertised in the Trade Mark

journal. M/s. Takkar (India) Tea Company gave a notice of their intention to oppose

the registration of the Trademarks advertised. It was argued that the opponents

become the proprietors of the Trademarks “Gopal” in relation to tea by virtue of use

by their predecessors since 1992 and assignment was executed in favour of the

opponents.

Judgement: There was prior use of the impugned trademark “Gopal” by the

applicants since 1981 and have established the user of the trademark with substantial

documentary evidence. The opponents neither proved any use of the Mark prior to

the applicants nor proved any assignment as alleged to have been executed. The

applicants are very much entitled for registration of the impugned trade mark. In the

result, the mark applied for should proceed to registration and the notice of

opposition deserves to be dismissed.

Implication: The person, who has neither proved any prior use of the mark nor any

assignment executed in his favour, is not entitled to object registration.

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35. Parties: Heinz Italia can another – Appellants -Vs- Dabur India Ltd.

– Respondent

Issue: The plaintiffs – appellants M/s. Heinz Italia SRL is the proprietor of the trade

mark “Glucon – D” which has been registered in India. This trade mark had earlier

been registered in the name of Glaxo on 21.5.1975 and subsequently assigned to the

Appellant during 1994. The respondent Dabur India had launched a similar product

under the name “Glucose – D” by using packaging which was deceptively similar to

the packaging used for “Glucon-D”. The appellant filed a suit for permanent

injunction for infringement of the trademark. The trial judge, in his order heid that

the word “Glucose was a generic word and no similarities between these two

trademarks. The application was dismissed.This matter has come to the Supreme

Court.

Judgement: The word “Glucon-D” and its packaging has been used by Glaxo since

1940 and the appellant acquired proprietary right by virtue of assignment whereas

the word “Glucose-D” had been used for the first time in the year 1989. Appellants

are the prior user of the trademark Glucon-D”. There is a primafacie case. It has to

be shown that there was dishonest intention on the part of the Defendant in passing

off goods. The Supreme Court set aside the order of the Trial Court and the order of

the High Court. Ad interim injunction order is given in favour of the appellant and

against the respondent.

Implication: Prior user of the product with valid assignment can secure injunction

in his favour.

36. Parties: M/s. Ajanta India Ltd. – Petitioner / Plaintiff-Vs-Ajanta Ltd.

and others – Respondents / Defendants

Issue: In 1971, Mr. Odhavji Bhai R. Patel established a partnership firm “Ajanta

Transistor clock manufacturing company. The firm adopted the Mark AJANTA,

which was the origin of the products like wall clocks time pieces and wrist watches.

A “Deed of Assignment was executed between “Ajanta Transister Clock

manufacturing company as the assignor and Ajanta India Ltd. as the assignee. The

Mark Ajanta was assigned by the registered proprietor to Ajanta India Ltd. along

with the good will. Ajanta India Ltd. has objected and restrains the Respondents,

Ajanta.Ltd from using the Word “Ajanta” as part of their corporate name. The

defendants should not describe themselves as Ajanta Group. They are at liberty to

call themselves, `OREVA/ORPAT Group.

Judgement: The Packaging of the defendants and the name of the manufacturing

company with the word “Ajanta” would have defeated the very purpose of exclusive

assignment of the mark Ajanta in favour of the Petitioner / Plaintiff for products

other than wall clocks and time pieces. General Public may not understand the

difference in two groups. By taking into this fact an interim order is being passed in

favour of Ajanta India Ltd.

Implications: Irreparable injury may be caused to the affected party in case if there

is confusion in the minds of the general public about the source of the goods

manufactured by the defendants.

121

37. Parties: Jain Inder Jain and others – Applicant -Vs - Arihant Jain

& Others – Respondents

Issue: Late Janki Das Jain, who was doing business in the name of M/s. Kangaro

Industries at its sole proprietor, adopted and started using the trade mark “Kangaro”

for stationery products. Late Janki Das Jain was the father of Arihant Jain

(Respondent) Jain Inder Jain (Appellant). Appellant and Respondents are partners in

Joint Family business. Appellants claim to have been assigned trademark Kangaro

with regards to stationery products vide a Family Settlement Agreement. Civil suits

were filed by both parties for the use of trade mark “Kangaro”. Respondents

challenged the validity of assignment of impugned trademark in favour of

Appellants on the ground that the trademark was assigned to them by only two of

the four partners without the consent of the other two partners who were their wives.

Single judge granted injunction to the Respondents restraining Appellants from

using the trade mark “Kangaro” during the pendency of suits.

Judgement: The Appellants have challenged the order passed by the single judge.

1. There is no restriction on the right of a partner to permit concurrent users of the

property of the firm by another person even if a partner in a firm assigns a property

of the firm without consent of the other partners.

2. Assignment of trademarks vide family arrangement would not require compulsory

registration. The order of the single judge is set aside and “status quo” ordered.

Implication: In order to avoid the confusion in the minds of customer, the court

directed to display the name of the manufacturer on the box.

38. Parties: Koxan India – Appellant / Petitioner-Vs - Ramesh Mardia

and others. – Respondents / Defendants

Issue: The trademark “MARDIA CABLES” has been assigned infavour of Kamlesh

Jain, Partner of Koxan India Firm and this assignment was registered. Trademark

“MARDIA CABLES” is in relation to electrical cables, wires. The defendant

RameshMardia alleged that there was a re-assignment by the plaintiff, and the trade

mark reverted back to the defendant. The defendant sought an ad interim injunction

restraining Plaintiff from using the trademark “MARDIA CABLES”.

Judgement: Judge finds that neither party has been able to set up clear prima facie

case in its favour. To decide as to whether the registration stands in favour of the

plaintiff even after reassignment deed of May 2005, would require the support of

evidence. In this case neither party is entitled to an ad interim injunction

consequently both the applications are dismissed.

Implications: Ad interim injunction cannot be granted if the party seeking

injunction is not able to set up a primafacie case in his favour in the matter related to

assignment and reassignment.

122

39. Parties: Thukral Mechanical Works - Appellant - vs - P.M. Diesel

Private Limited and another – Respondents

Issue: M/s. Jain Industries got the trademark “Field Marshal” registered for flour

mills’; coupling for machines, pulleys and the registration was renewed from 1972

to 1993. The first respondent is the registered proprietor of a trademark “Field

Marshal” for diesel engines since 1964. Respondent 1 filed a suit in the High Court

for permanent injunction alleging infringement of his trademark. A temporary

exparte injunction is issued against M/s. Jain Industries. By deed of assignment,

M/s. Jain Industries assigned the trademark along with its goodwill in favour of the

appellant and filed an application in TM-24 and registered his name as subsequent

proprietor.

Judgement: 1.In a suit for injunction a single judge of a High Court vacated the

interim order of injunction and permitted the appellant to use their registered

trademark. 2. The respondent filed the second rectification application. It was

transferred to the Intellectual Property Appellate Board and dismissed the

rectification application as not maintainable. This case was finally brought to the

Supreme Court. The Supreme Court set aside the order of the High Court. The

Board shall proceed to determine a fresh application filed by the first respondent in

the light of the legal principles, the Appeal is allowed with costs.

Implication: An assignor can transfer only right which he possesses. The right of a

registered trade mark is not lost automatically on the expiry of 5 years and one

month.

40. Parties: Hindustan Lever Ltd. – Plaintiff / Appellants-Vs - Bombay

Soda Factory by K.K. & Others – Defendants / Respondents

Issue: Lever Brothers (India) Pvt. ltd., has been a leading soap manufacturing

company in India. The said company had registered its distinctive label of the

"Sunlight Soap" under the Trademarks Act 1940 for its product “Sunlight Soap”.

Lever Brothers (India) Private Limited was converted into a public company, the

company changed its name to Hindustan Lever Limited. A suit was filed by

Hindustan Lever Ltd. against the defendants for Injunctions restraining them from

infringing the trademark. Lever Brothers (India) Ltd. applied to the Registrar of

trademarks, Bombay to enter the change in the name of the registered proprietor of

the trade mark. The change in the name was effected during the pendency of the

suit.

Judgement: The appellant, Hindustan Lever Ltd. prefers an appeal

before the High court against the order of District court i.e., the appellant was not

entitled to the trademark on the date of suit. Held The trial court came to the

conclusion the Hindustan Lever Ltd. is a different legal entity from Lever Brother

(India) Private Ltd. The court below has taken an erroneous view of the Law. The

High Court allowed the appeal. Set aside the order of the Lower court.

Implications: The conversion of a private company into a public company does not

affect the legal personality. This does not affect maintainability of the suit.

123

41. Parties: R.G. Oswal Hosiery Industries – Petitioner- Vs -

Union of India & Others. – Respondents

Issue: M/s. R.G. Oswal Hosiery Industries is a partnership firm, conducting

business, manufacturing and marketing of socks, hosiery articles. The petitioner

claims that it is the proprietor of the trade mark “Dollor” adopted from 1966.The

Petitioner has been keeping the registration renewed from time to time either by

itself or through it licensee M/s. Kedia Knitwear, Delhi (a licence user). After 1996,

the renewal applications were filed by M/s. Kedia Knitwear, for renewal of the

registration upto 2010.M/s. Kedia Knit Wear was claiming itself to be the proprietor

of mark in the public notices, there was conflicting proprietary claims in respect of

M/s. Kedia Knit Wear.

Judgement: The Intellectual property Appellate Board (IPAB) passed an order

allowing the rectification application filed by the Respondent No. 2 in respect of the

registration granted to the Petitioner for trademark DOLLAR. According to the High

Court, the subsequent renewals made on the basis of applications filed by the

Petitioner itself, cannot cure the illegality of the earlier renewals. The Court finds no

reason to interfere with the order of IPAB. The Writ Petition held by the Petitioner

was dismissed.

Implication: An application for renewal of a registered trademark could only be

made by the registered proprietor of the trade mark and not by the licensee of the

registered proprietor. Licensee of a registered proprietor is not permitted to apply for

renewal. Licensee is not an agent.

42. Parties: SKOL Breweries Ltd. – Petitioner - Vs - Som Distilleries and

Breweries Ltd. & another – Respondents

Issue: The Plaintiff is the owner of the trade mark, “HAYWARDAS 5000” having

acquired the same by a deed of Assignment from Defendant

No. 2 Shaw Wallace & Co. Ltd. Defendant No. 2 is therefore only a formal party to

the suit. By a deed of assignment Defendant No. 2 assigned to the Plaintiff several

registered trademarks including the trademark “HAYWARDS 5000”. The second

defendant and the plaintiff made a request in Form TM24 to the Registrar of Trade

Marks to enter the name of the Plaintiff as the subsequent proprietor of the said

trademarks. The suit was filed. In 2007, on the date of the suit the registration of

assignment is pending before the Registrar. The Registrar granted the registration of

the said mark in favour of the plaintiff in 2008.

Judgement: The Registration granted by the Registrar U/s 45 of the Trade Marks

Act 1999 is proof of title to the trade mark of the assignee. Suit was filed against the

respondents for the cause of action for passing off and infringement of a Plaintiff’s

trade mark “HAYWARDS 5000”. Prayer made absolute.

Implication: An assignee is entitled to file an action for infringement during the

pendency of the application before the Registrar to register him as the subsequent

proprietor.

124

43. Parties: Hindustan Unilever Limited (HUL) - Petitioner - Vs -

Three N Products (P) Ltd. – Respondent

Issue: Hindustan Unilever Limited (HUL) Launched its line of Ayurvedic health

and beauty care products under the trademark “Lever Ayush” in 2002. The Registrar

had granted registration of the Mark “Ayur” for products of Three-N-Products (P)

Ltd. HUL sought rectification of the mark “Ayur” contending that it is a commonly

used word and a derivative of the word Ayurveda, a 5000 year old system of

medicine. Three-N-Products had filed a suit in 2003 in the district court of

Ernakulam wherein it was contended that “Lever Ayush” of HUL was deceptively

similar to its own products. Following this, HUL approached the IPAB with

applications to remove “Ayur” from the trademark registry.

Judgement: IPAB had allowed the applications filed by HUL, rejected the

contention of Three-N-Products that “Ayur” is an invented word and pointed out

that the word was associated in the public consciousness with “Ayurveda” and

healthy life and no one could appropriate it to oneself.

Implication: In the public interest, the word “Ayur” shall not remain in register.

Registrar should not have allowed the registration. Public interest would be harmed

if this mark remains in the register thereby preventing other persons in our country

access to a common Indian word denoting an ancient system of medicine.

44. Parties: Shree Ganesha Enterprises – Plaintiff -Vs-Sandeep Gullah –

Defendant

Issue: Shree Ganesha Enterprises, the plaintiff firm is engaged in a business of

catering and banquets hall (referred as business and services). A partnership deed

was constituted between Shri Shyam Sundar Suri, the Managing Partner of the

Plaintiff firm and Shri Sandeep Gullah, the defendant. After the retirement of the

defendant, the plaintiff firm was reconstituted and the trademark “CITY

BANQUET” was adopted. The defendant upon his retirement assigned all his rights

in goodwill and other assets of the business in favour of the reconstituted firm by

way of the Reconstitution deed. After retirement, the defendant has started the same

business and services and has adopted an identical deceptively similar trademark

“CITY BANQUETS’. The contention of the plaintiff is that the defendant has no

right to use the impugned trademark after assigning the same in favour of the

reconstituted firm.

Judgement: The defendant was directed to produce the originals by order dated

11.1.2011. The originals were not produced by the defendant. There are sufficient

documents produced on record by the plaintiff pertaining to the admitted case.

Held. It is clear that the plaintiff has been able to make out a strong case for grant

of interim injunction.

Implication: The person has no right to use the trademark, after assigning the same

infavour of the reconstituted firm

125

45. Parties: M/s. Kisan Industries - Appellant-Vs - M/s. Punjab Food

Corporation another - Respondents

Issue: The trademarks “KISAN” and “SOHNA” were being used by Sant Ram,

proprietor of M/s. Sant Ram & Sons since 1976. Sant Ram assigned the trade marks

along with the goodwill of the business to Vivender Kumar. Vivender Kumar and

others entered into Partnership to carry on business of manufacture and re-sale of

cattle poultry feed under the name of KISAN INDUSTRIES. M/s. Punjab Food

Corporation, a partnership firm instituted a suit for passing off cattle poultry feed

under the trade name “KISAN” and “SOHNA”. It was alleged that they had been

carrying on business since 1977 and using trademarks “KISAN” and “SOHNA”

since 1978. They had filed an application for registration of their trademarks. The

respondent filed a case for infringement of trademarks and copy right of “KISAN”

and “SOHNA”.

Judgement: In the trial court the Additional District Judge ordered, restraining M/s.

Kisan Industries from selling the product under the trademarks “KISAN” and

“SOHNA” which were deceptively similar that of respondent and amounting to

infringement. An appeal was filed before the single judge of High Court by the

appellant. The respondent argued that the document of the appellant’s assignment

was not property stamped. This objection has no force. The single Judge of Delhi

High Court is of the opinion that the appellants are prior user of the trade mark. The

appeal of Kisan Industries is allowed. The order of Trial Court is set aside.

Implications: An instrument which is not properly stamped is admissible in

evidence on payment of the necessary stamp duty and penalty.

46. Parties: Cruickshank & Co. Ltd. – Plaintiff / Appellants –Vs-

BDA Breweries & Distilleries Ltd. – Defendants / Respondents

Issue: The business of manufacturing and sale of Indian made foreign liquor

products namely “Officer’s choice “1000 guineas” and Calypso Rum together with

goodwill of the business were assigned by C&C in favour of BDA and claims the

right to use the said trademarks and to get them registered in its favour. By

executing the deed of Assignment in 1991, C & C assigned in favour of BDA all the

proprietary rights along with goodwill. In 1993 C&C filed a suit against BDA for

declaration that C&C is the rightful owner of the said three trademarks. C&C sought

for an injunction as well as decree for specific performance against BDA for

directing BDA to reassign the three trademarks in favour of C&C. According to

BDA the deed of assignment is valid.

Judgement: The genuineness of deed of assignment and reassignment are disputed.

The document admitted by both parties are not favouring grant of injunction. This

facts should be decided by the trial court, injunction is refused by this Division

Bench and both the appeals are dismissed.

Implication: When there is a dispute in the genuineness of the document related to

assignment and reassignment, that should be decided by the trial court only.

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47. Parties: Dhariwal Industries Limited and Another – Petitioner /

Defendant - Vs – M/s. M.S.S. Food Products – Respondents /

Plaintiff

Issue: The respondent – M/s. M.S.S. Food Products and its predecessors were using

the trademark "Malik chand" in its packets containing Pan Masala, Gurkha, Supari

Mix. The defendants - Dhariwal Industries Ltd., are marketing the same products

under the name "Malikchand". The products are marketed in pouches that are

deceptively similar to the ones used by the respondent. The respondent, being the

prior user of the mark "Malikchand is entitled to prevent the defendant from

marketing their products under the name "Malikchand". The defendant challenged

the claim of respondent as prior user and filed a suit against him.

Judgement: The trial court held that the plaintiff / respondent has established prior

user of the mark "Malikchand” and the assignment relied on from its predecessors

by the respondent were genuine. The defendants filed an appeal before the High

Court. The Highcourt dismissed the appeal and uphold the view of the trial court.

The defendants have challenged this order before the Supreme Court. The apex

court held the fact that neither party has a registered trademark on the date of suit.

The court has granted the plaintiff an injunction.

Implication: The genuineness of the unregistered trademark is proved on the basis

of the prior user of the mark.

48. Parties: Lekha Ram Sharma – Petitioner - Vs - Balar Marketing Pvt.

Ltd. & Others – Respondents

Issue: The trade mark KUNDAN / KUNDAN CAB is registered in the name of

the respondent No.1 is in respect of electrical accessories. The petitioner claims that

it has also been using the trademark KUNDAN/KUNDAN CAB/KUNDAN

CABLES INDIA in respect of these goods since 1980. Petitioner filed a petition for

rectification in Delhi and prayer is made to cancel the trade mark of the respondent

from the Register of trademarks. The applications for registration and for assigning

the trademark in favour of respondent no 1 were filed in Chennai. The certificate of

registration was granted on 1994 to the respondent No.1 in Chennai. The question of

territorial jurisdiction arises.

Judgement: Assignment was allowed and registration certificate was issued at

Chennai Registry. Only the Madras High Court has jurisdiction to entertain

rectification petition. Petition in Delhi High Court is not maintainable. The

registered proprietor gets confined to one jurisdiction wherein the validity / removal

of his mark can be determined. Application filed by the Petitioner for rectification is

not maintainable in Delhi High Court and ought to have been instituted in the High

Court of Madras.

Implication: The purpose of confining the trade mark registration to one

jurisdiction / office for the purpose of its rectification is to facilitate rectification

proceedings, so that an aggrieved party does not have to run around the various

courts to know where the assignment is effected in the jurisdiction.

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49. Parties: Bloomfield Co. Ltd.–Plaintiff -Vs -Bagaria Business (P) Ltd.

– Defendants

Issue: The plaintiff became the owner of a "Bloomfield Tea Estate" and this

company was incorporated by him. The name of Tea Estate was changed to Orange

Valley Tea Estate in 1984. The plaintiff used the trade name "Bloomfield". In

1990, the plaintiff sold the Orange valley Tea Estate to one Longview Tea Co. Ltd.

and the defendant - Bagaria Business (P) Ltd. purchased the said Orange Valley Tea

Estate from Longview Tea Company Ltd. The plaintiff came to known that the

defendant had started selling in the name of "Bloomfield" in addition to the name

Orange Valley Tea Estate. The objection was raised by the plaintiff

Judgement: The plaintiff has transferred his interest in respect of the tea estate

situate at a place in the name of Bloomfield as a going concern and such state has

ultimately been acquired by the defendant as a going concern. If a particular-

property is transferred as a "going concern" the now settled position of law is that it

passes its title along with its goodwill. The plaintiff has filed an application for

injunction against defendant. The plaintiff is not entitled to get any order of

injunction against the defendant from using the mark "Bloomfield" till the disposal

of the suit. The application is dismissed.

Implication: If a particular property is transferred as a “going concern”, the settled

position of law is that it passes its title along with its goodwill.

50. Parties: Cycle Corporation of India Ltd. – Appellant -Vs -

T.I. Raleigh Industries Pvt. Ltd. and Others – Respondents

Issue: The Respondents – T.I. Raleigh Industries Pvt. Ltd. had registered trade mark

“Raleigh”. The respondent entered into an agreement with Sudhikumar Sen on 1948

to render technical knowhow to the Indian Company. A company called "Sen

Raleigh Ltd." came into existence which manufactured cycle with technical

Assistance of the Respondents. Sen Raleigh was recorded as permitted user of trade

mark. The Government - Appellant took over the Sen Raleigh Ltd. on 1975 under

the IDR Act, and took over the Management. In 1980, Sen Raleigh was nationalized

under Industrial (Development and Regulation) Act.

Judgement: Removal of the trade mark of the respondent from the register was the

demand of the appellant. Unregistered user coming to succeed registered user of

Trade Mark by operation of law i.e. nationalization of Industry.

The High Court refused to exercise the discretion to strike off the trade mark from

the register. It is seen that the registered user had not abandoned, at any point of

time. The Supreme Court accepted the view of the High Court and refused to rectify

and strike off the trade mark from the register of the trade mark. The appeal is

dismissed.

Implication: Unregistered user (government) is trying to succeed registered user of

the Trademark by nationalization of Industry. Removal of the trademark of

Registered user from the register of the trademark is not permitted.

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51. Parties: Ratansi Mulji – Petitioner - Vs - Vinod Ratilol Gandhi and

another – Respondents

Issue: In the year 1983, the government of India enacted the "Textile undertakings

(taking over of management) Act 1983 and took over management of Finlay Mills

Ltd. Finlay Mills Ltd. even after takeover, continue to function as a limited company.

It is only the management of the undertaking that has been taken over by the

National Textile Corporation which has been designated as "the custodian" under the

takeover Act. The, Finlay Mills Ltd. who are the registered owners filed a case

against the National Textile Corporation for unauthorized user of the trade marks

and filed a suit in the Bombay High Court on 1984, for the purpose of obtaining an

injunction restraining the National Textile Corporation from the trade mark of this

company.

Judgement: The single Judge dismissed the application. Finally Mills filed an

appeal to the Division Bench on 1986. The Bench dismissed the appeal and in the

course of the order observed that the National Textile Corporation was authorized to

use the trademarks of “Finlay Mills Ltd.” which was the registered owner of the

trademark. It was the contention of National Textile Corporation that by operation of

law they have become the registered proprietor of the trademarks. There is no

assignment or transmission of trade marks to the National Textiles Corporation by

the Finlay Mills Ltd. Finlay Mill Ltd., the registered owner of the trademark, in any

event cannot be prosecuted for the infringement of the trade mark.

Implication: Without registration of the assignment or transmission, no rights can

be pleaded on the ground that the trademarks have been assigned or transmitted.

52. Parties: T.I. Muhammed Zurnoon Sahib – Appellant/Defendant-Vs -

Fathimunnissa Alias Bibijan and others – Respondents / Plaintiff

Issue: Muhamed Yoonus Sahib was the person in whose name the trademark was

duly registered with the Registrar of Trademarks, the trade mark being "708 yoonus

Beedi". Yoonus died and it is not denied that the respondents are his legal heirs.

After the death of yoonus the respondents continued to run his business and to

manufacture and sell beedies under the said trademark. They found that the

defendant / Appellant was also manufacturing and- selling beedies under a similar

trademark. Sahib's legal heirs filed a suit for infringement of trademark against the

Appellant. On the date of the institution of the suit, respondent had not taken steps to

register the trademark.

Judgement: Both the District Judge and the single Judge of the High court took the

same views that the suit was maintainable even without the order of the Registrar

U/s 35 of the Trademark Act 1940. In this case, the cause of action is the

infringement of the trademark. The order of the Registrar U/S 35 itself does not give

a cause of action. All that it gives is recognition of the title which already inheres in

the legal representatives of the deceased proprietor. The appeal filed by the

respondent was dismissed.

Implication: Transfer of ownership right to legal heirs by the operation of law is

Transmission. The suit by the legal representatives was maintainable even without

an order of the registrar in the case of transmission.

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IV.3 The above Court verdicts lay down the following laws and guidelines

i. Assignment Validity

1. One who seeks justice must reveal the real facts for the claim. The

claimant had lost the right of remedy due to her misconduct, eventhough there was a

valid assignment.

2. When there is a valid Assignment in favour of the plaintiff, the court will

give verdict in his favour.

ii. Natural Justice

3. Pre decisional hearing is necessary. Notice must be served to the

aggrieved person before passing the order. It is well settled law that an order passed

without following the principles of natural justice is void.

4. When an application of assignment or transmission is pending, the

removal of the name of the existing proprietor of the trade mark without complying

with the elementary requirements of rules of natural justice is void. In the eye of

law, there is a necessary implication that the party adversely affected should be

heard.

5. Rule of Audi-Altrum-Partem means “Right to be heard”. The Registrar

should not pass an order without hearing or without issuing notice to the affected

party, otherwise it will amount to violation of natural justice.

iii. Interpretation of Law decided by the Court

6. Assignee acquires title to the registered trade mark on assignment and

not by registration. Registration is “on proof of title”. The title exists in assignee

even before registration.

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7. Registration u/s. 45 (1) is “on behalf of title and thus the title exists in

assignee after assignment but before registration.

8. When the assignee is having valid assignment, he has got the right u/s. 28

(Right conferred by Registration) and u/s. 29 Protection against infringement of

Trade mark under the Trade marks Act 1999.

9. The assignee is impleaded as a party to the suit even though the Registrar

is yet to register the assignment in favour of the assignee.

10. Abandoned trade mark is not capable of assignment. Abandonment of a

registered mark cannot be reversed by subsequent readopting of a mark.

11. Alteration in the certificate of registration by removing the name of the

person entered as proprietor and substituting the name of another person either by

assignment or transmission is not an administrative function. Registrar performs

“Quasi Judicial Function” at the time of discharging his duties.

12. Permission to use trade mark is not assignment of the mark u/s. 10 92)

for registration, the claimant should be the proprietor.

13. Assignment of trade mark during the pendency of suit of suit for

infringement and passing off is valid. During the pendency of a suit, the assignee

can continue the suit so far as the relief of injunction is concerned but not for

rendition of accounts and damages.

14. When the assignment deed is not a bonafide transaction, one cannot get

remedy before a court of law.

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15. The Registration, of a trade mark recognized only within the country in

which it registered.

16. If any fraud and misrepresentation in assignment of trade mark, it must

be proved by the aggrieved party.

17. Registration u/s. 45 does not give a cause of action. All that it gives is

recognition of the title.

18. Incase of assignment, the application for registration must be filed by the

assignee within stipulated period. If it is not filed within the stipulated period of six

months plus extension period of 3 months, then it is improper and invalid.

19. The object of the Trade marks Act is to protect the proprietary right of a

registered trade mark holder. Proprietary rights in a trade mark acquired by use are

superior to rights obtained by Registration under the Act.

20. According to the Supreme Court, Arbitration has jurisdiction to consider

all questions raised before him by the parties which related to dispute referred to the

Arbitrator. Driving a party to a separate legal litigation for the relief by the

Arbitrator would not be proper and valid.

21. Non - registration of Assignment will not confer any legal right to the

assignee.

22. Once the dissolution deed lays down the rights and obligation of the

erstwhile partner, there is no necessity to execute a separate assignment deed

between the two partners. The dissolution deed itself would become an assignment

under the law.

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23. The Plaintiff is not entitled to temporary injunction, if he is a registered

user of the trade mark. He is having right to use only.

24. On the date of assignment there was no property in the hands of the

assignor to assign in favour of the assignee by reason of the non renewal and

nonpayment of the renewal fees. On the day when the assignment was given, no

property was available; in that case even a registered owner cannot make any claim

over his registered trade mark.

25. It is settled law that once there is a transfer of property, the license

granted by the owner / transferor for use of the property stands automatically

terminated. This principle is not only applicable to the immovable property but also

applicable to movable property.

26. Law provides legal sanction to the trade mark by its registration and not

necessarily to the holder of the trade mark.

27. The assignee fails to apply to the Registrar for direction with respect to

advertisement of assignment within the period of nine months as prescribed by the

Registrar. If this mandatory condition u/s 41 is not complied with, Assignment will

not be taken effect.

28. There is no restriction on the right of a partner to permit concurrent users

of the property of the firm by another person even if a partner in a firm assigns a

property of the firm without consent of the other partners. Documents related to

Assignment of trade marks vide family arrangement shall not require compulsory

registration.

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29. Ad interim injunction cannot be granted if a party seeking injunction is

not able to setup a primafacie case in his favour in the matter related to assignment

and reassignment.

30. An assignor can transfer only such right which he possess.

31. An instruction which is not properly stamped is admissible in evidence

u/s 35 of the Stamp Act 1899 on payment of the necessary stamp duty and penalty.

32. When there is a dispute in the genuineness of the documents related to

assignment and reassignment, that should be decided by the trial court only.

33. When a private company is converted into a Public Co., there is

alteration of Memorandum of Association and of Articles of Association of the

Company. There is no change in the legal personality of the company.

34. The purpose of confining the trade mark registration to one jurisdiction

for the purpose of its rectification is to facilitate rectification proceedings, so that an

aggrieved party doesnot have to run around the various courts to know the

assignment is effected in the jurisdiction. Likewise, even the registered proprietor

gets confined to one jurisdiction where in validity / removal of his mark can be

determined.

35. If a particular property is transferred as “ongoing concern”, settled

position of law is that it passes its title along with its goodwill. The defendant, being

the owner is entitled to use the trade name.

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iv. Operation of Law

36. When unregistered user – Government is trying to succeed registered

user of the trade mark by nationalization of Industry, removal of the trade mark of

Registered User from the register of the trade mark is not permitted.

37. It is clear that without registration of the assignment or transmission no

rights can be claimed on the ground that the trade marks have been assigned or

transmitted.

38. Transfer of ownership right to the legal heirs by operation of law. The

suit by the legal representation was maintainable even without an order of the

Registrar U/s 35. It gives recognition of the title which already inheres in the legal

representatives of the deceased proprietor.

39. The Power to assign to “the person for the time being entered in the

register as proprietor of trade mark” it would appear that even if the mark was

registered in the wrong name the registered proprietor has power to assign the mark

and the validity of the assignment cannot be questioned.

Since the High Courts and the Supreme Court are the rule making

courts, judgements given by the above courts are binding on the subordinary

judiciary. The interpretations of judgements of courts reveal that one who seeks

justice must come with the real facts for the claim. Eventhough there is a valid

assignment as per Trade marks Act, due to misconduct, the claimant may not get

remedy. Court has given verdict by giving importance to misconduct rather than the

proper assignment.

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The Term Natural Justice comes under Administrative Law. Though the

Trade marks Act does not contemplate the issuance of notice and hearing the

aggrieved person, the court determines predecisional hearing is necessary. It is well

settled Law that an order passed without following the principles of natural justice is

void and it will amount to violation of natural justice.

The Supreme Court specifies the jurisdiction of the Arbitrator, when the

dispute is raised before him. It is decided that an Assignment Deed which is not

properly stamped is admissible in evidence on payment of the necessary stamp duty

and penalty. The courts are having supervisory powers over all authorities .If any

violation of the Trade marks Act and Rules, the court can set right the law by giving

proper direction. The above analytical study of Judgments on Assignment and

Transmission of Trade marks in India has paved the way for the clearance of

loopholes and strict legal compliances on the related issues.

IV.4. Implications on Consumers and Traders

Trade mark law protects public interest by protecting them from

infringement of trade mark. There should not be any confusion as regards the

manufacturer of the product because of the deceptive similarities of the trade marks.

Consumers may not be able to differentiate two identical trade names or trade

marks, at a glance, which will defeat the very purpose of the Trade marks Act i.e., to

prevent the use of fraudulent marks. To protect the consumers, formation of

‘Redressal Forum’ is essential like “Lok Adalat” System.

The overall view of the study in this chapter clarifies that the legal

remedy is always available to the businessmen to redress their grievances. The

136

provisions made under the act and rules create awareness to the businessmen in the

litigation which will ultimately safeguard their interest in times of need. The liberal

approach in the procedure for assignment registration before Trade mark Registry

and filing of cases before the courts give sufficient protection to the businessmen in

particular. Besides, the legal interpretations lend further assurance for their future

guidance. The registered assignment is enforceable in a court of law in case of

dispute. Businessmen are protected by registration of assignment. Unregistered trade

marks can also be assigned with or without goodwill. This is yet another milestone

in the Trade mark Law on assignment and transmission, giving much benefit to the

business society.

CHAPTER - IV END NOTES

LAW JOURNALS REFERED

Case Studies :-

1. (36) PTC 139 2008 High Court, Bombay. Patent trade mark and copyright

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