2010 (11) TMI 1050 - SC - Indian Laws

Summary

Issues Involved:
1. Whether the mark applied for registration was used in respect of the goods for which the mark was registered.
2. Whether the respondent had a bona fide intention to use the mark applied for under section 18 of the Trade and Merchandise Marks Act.
3. Whether the mark registered in favor of the respondent is a service mark.
4. Whether there is a non-use of registered trade mark by the respondent for a period of over 5 years and 1 month.
5. Whether the registered trade mark is disentitled for protection in a Court of Law under Section 11(e) of the Trade and Merchandise Marks Act.
6. Whether the registered trade mark has lost its distinctiveness and is liable to be removed under section 32(c).
7. Whether the respondent has committed fraud while obtaining registration of the mark.
8. To what further relief?

Comprehensive, Issue-wise Detailed Analysis:

Issue 1: Whether the mark applied for registration was used in respect of the goods for which the mark was registered.
The Intellectual Property Appellate Board (IPAB) held that the trade mark Nos. 475269, 475267, and 484837 had not been used by the appellant for more than five years and one month. The appellant failed to prove that it had been manufacturing or trading the goods for which it had taken the registrations. Consequently, the IPAB directed the Registrar to remove these registrations from the register.

Issue 2: Whether the respondent had a bona fide intention to use the mark applied for under section 18 of the Trade and Merchandise Marks Act.
The IPAB did not specifically address this issue in its decision. However, the appellant argued that the IPAB erred by not considering the wide definition of 'goods' under Section 2(g) of the 1958 Act and by relying on the provisions of the 1999 Act and the Trade Marks Rules, 2002, which were not applicable.

Issue 3: Whether the mark registered in favor of the respondent is a service mark.
The IPAB considered software as a 'service' and the subject registrations were in relation to goods. The appellant contended that the IPAB erred by not distinguishing between 'computer programme' and 'computer programming' and by not considering 'computer' under Class 9 as 'goods.'

Issue 4: Whether there is a non-use of registered trade mark by the respondent for a period of over 5 years and 1 month.
The IPAB found that the appellant had not used the registered trade marks for the goods in question for more than five years and one month. The appellant argued that the IPAB failed to consider the proviso to Section 46(1), which allows reliance on the use of the registered trade mark during the relevant period in relation to 'goods of the same description.'

Issue 5: Whether the registered trade mark is disentitled for protection in a Court of Law under Section 11(e) of the Trade and Merchandise Marks Act.
The IPAB did not specifically address this issue in its decision. The appellant argued that the IPAB should have considered whether the use of the mark 'Infosys' by the first respondent on computer hardware would create confusion among consumers, leading them to believe that the hardware was manufactured by the appellant.

Issue 6: Whether the registered trade mark has lost its distinctiveness and is liable to be removed under section 32(c).
The IPAB did not specifically address this issue in its decision. The appellant argued that the IPAB failed to apply proper legal tests for determining 'goods of the same description' and that 'computer software' amounts to 'goods of the same description' as 'computer hardware.'

Issue 7: Whether the respondent has committed fraud while obtaining registration of the mark.
The first respondent argued that the appellant had not used the registered trade marks for the goods in question for almost 30 years, indicating a mala fide intention in having the same registered for the purpose of squatting and trafficking. The appellant contended that the IPAB failed to consider the aspect of public interest and the potential confusion among consumers.

Issue 8: To what further relief?
The Supreme Court concluded that the applications made by the first respondent for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB in accordance with law and the observations made. The appeals were allowed in part, and the impugned order dated September 9, 2004, was set aside. The applications were restored to the file of the IPAB for hearing and disposal afresh in accordance with law.

Conclusion:
The Supreme Court allowed the appeals in part, setting aside the IPAB's order and restoring the applications to the IPAB for fresh consideration. The Court emphasized the need for the IPAB to consider the locus standi of the first respondent as a 'person aggrieved' and to address the diverse contentions raised by both parties.