2003 (9) TMI 542 - SC - Indian Laws

Whether there was any bona fide use of the trade mark in relation to goods by the proprietor or for the purposes of section 46(1)(a) of the Act? Held that -Appeal allowed. In the circumstances, for Buttress to have said that it was not economically possible for Hardie to itself put its manufactured goods in the market immediately, cannot be taken as being a circumstance which was peculiar to Hardie alone. It was a circumstance which was generally applicable to all foreign manufacturers of paints and lacquers. Therefore, the con- clusion of the Joint Registrar and the High Court that there were no special circumstances in the trade which justified the alleged non-user for the period in question was wrong.

Summary

Issues Involved:
1. Rectification of the Trademarks Register.
2. Registration of Hardie's device and trademarks in Addison's name.
3. Validity of the consent order and its implications on the parties' rights to use the trademarks and device.

Issue-wise Detailed Analysis:

1. Rectification of the Trademarks Register (S.L.P. (C) No. 206 of 1998):
Person Aggrieved:
The Joint Registrar and the High Court held that Addisons was a "person aggrieved" because it was in the same trade as Hardie and its applications for registration had been rejected due to the existence of Hardie's marks. The Supreme Court noted that the phrase "person aggrieved" in the context of section 46 (non-use) should be interpreted more restrictively than in section 56 (wrongful entry), focusing on practical damage or injury from the continued registration of the trademark.

Non-use of the Trademarks:
Under section 46(1)(b), an application for removal requires proof of non-use for a continuous period of five years and one month prior to the application. The relevant period was from 30th April 1972 to 30th April 1977. The Supreme Court found that there was no absolute non-use by Hardie, as evidenced by ongoing negotiations and efforts to appoint Hansa as the registered user, demonstrating no intention to abandon the trademarks.

Special Circumstances:
Hardie argued that import restrictions constituted special circumstances under section 46(3). The Joint Registrar and the High Court dismissed this, attributing non-use to Hardie's business interests rather than trade circumstances. The Supreme Court disagreed, recognizing that import restrictions and economic impracticality were special circumstances affecting all foreign manufacturers, justifying non-use.

Conclusion:
The Supreme Court set aside the decisions of the lower courts, allowing the appeal and maintaining Hardie's trademarks on the Register.

2. Registration of Hardie's Device and Trademarks in Addison's Name (Civil Appeal Nos. 5307-5311 of 1993):
Merits of Addison's Applications:
The High Court focused on Hardie's and Hansa's objections rather than assessing Addison's evidence of proprietorship and bona fide intention to use the device. The Supreme Court emphasized that the device was invented by Hardie and used internationally, including in India through Addisons under the collaboration agreement.

Use of the Device:
Addisons used the device under Hardie's supervision until 1971, after which it publicly renounced the marks. There was no evidence of Addison's use or intention to use the device post-1971.

Consent Order:
The consent order from the Calcutta High Court allowed Hardie and Hansa to use the trademarks and device, while Addisons agreed not to use the warrior-rear device until the suit's disposal. The Supreme Court found that this order was misinterpreted by the Madras High Court, which wrongly concluded that Hansa's use was not bona fide.

Conclusion:
The Supreme Court set aside the High Court's decision, rejecting Addison's applications for registration of Hardie's device.

3. Validity of the Consent Order and its Implications (Civil Appeal Nos. 5312-A & 12A-E of 1993):
Identical Marks:
Addison's applications for registration of Spartan and Spartan Velox were identical to Hardie's registered marks. The Supreme Court noted that as long as Hardie's trademarks remained on the Register, Addison's applications could not proceed without a plea of bona fide concurrent user under section 12.

Conclusion:
The Supreme Court allowed the appeals, setting aside the Registrar's order granting Addison's applications for registration of the identical marks.

Summary:
The Supreme Court upheld Hardie's rights to the trademarks and device, recognizing the ongoing bona fide use and special circumstances justifying non-use due to import restrictions. The Court rejected Addison's applications for registration, emphasizing the lack of evidence of Addison's use or intention to use the trademarks and device post-1971 and the misinterpretation of the consent order.