1991 (4) TMI 314 - HC - Companies Law

Summary

Issues Involved:
1. Improper assignment or transmission of the registered trademark.
2. Non-application by Eastern Clay Works to the Registry notifying their assignment.
3. Non-use of the trademark by STC.
4. Entitlement of the petitioner to maintain a suit.
5. Dishonesty and public interest.

Detailed Analysis:

1. Improper Assignment or Transmission of the Registered Trademark:
The petitioner argued that STC improperly assigned the registered trademark to Eastern Clay Works without notifying the Registry as required by sections 41 and 44 of the Trade and Merchandise Marks Act, 1958. However, the respondent countered that there was no assignment or transmission of the trademark. The court found that the agreements between STC and Eastern Clay Works were merely licensing arrangements, not assignments. The court held that the use of the trademark by Eastern Clay Works was effectively under the control and supervision of STC, thereby maintaining the trademark's integrity.

2. Non-application by Eastern Clay Works to the Registry Notifying Their Assignment:
The petitioner claimed that Eastern Clay Works did not apply to the Registry to notify their assignment, which violated sections 41 and 44 of the Act. The respondent denied any assignment, asserting that Eastern Clay Works was merely a user of the trademark under STC's supervision. The court agreed with the respondent, stating that the provisions of sections 41 and 44 were not applicable as there was no assignment.

3. Non-use of the Trademark by STC:
The petitioner alleged that STC had not been using the registered trademark and thus it should be canceled under section 46 of the Act. The respondent argued that the use of the trademark by Eastern Clay Works, a subsidiary of STC, constituted use by STC itself. The court found that the use of the trademark by Eastern Clay Works under the supervision and control of STC was sufficient to constitute use by STC. The court cited various legal precedents to support this view, including the Radiation case and GE Trade Mark case, which established that use by a subsidiary could be considered use by the holding company.

4. Entitlement of the Petitioner to Maintain a Suit:
The petitioner argued that only the registered user could maintain a suit against them, and since Eastern Clay Works was not a registered user, the petitioner was entitled to maintain the original petition for rectification. The court found this argument unconvincing, noting that STC, as the registered proprietor, had the right to enforce the trademark and that the use by Eastern Clay Works was under STC's control.

5. Dishonesty and Public Interest:
The petitioner claimed that the trademark should be removed on the grounds of dishonesty by STC and in the public interest. The court found no evidence of dishonesty or public interest concerns that would warrant the cancellation of the trademark. The court noted that the petitioner had adopted a similar "umbrella" mark without explanation, suggesting dishonesty on the petitioner's part.

Conclusion:
The court dismissed both petitions, finding that the petitioners had not made out a case for rectification or cancellation of the trademark. The court held that the use of the trademark by Eastern Clay Works under the supervision and control of STC constituted legitimate use by STC. The petitions were dismissed with costs awarded to the first respondent, STC.