2006 (10) TMI 480 - HC - Indian Laws

Summary

Issues Involved:
1. Jurisdiction of the Intellectual Property Appellate Board.
2. Rights of the Kangayam Party regarding the trade mark.
3. Rights of the Tindivanam Party regarding the trade mark.
4. Rights of the Delhi Party regarding the trade mark.
5. Validity of the assignment between the Delhi Party and the Kangayam Party.
6. Non-use of the trade mark by the Delhi Party.
7. Procedural requirements under Section 124 of the Trade Marks Act, 1999.

Detailed Analysis:

1. Jurisdiction of the Intellectual Property Appellate Board:
The Delhi Party contended that the Appellate Board lacked territorial jurisdiction to entertain the rectification application filed by the Tindivanam Party at Chennai, as their trade mark was registered in Delhi. The court held that Sections 83 and 84 of the Trade Marks Act, 1999, contemplate the establishment of a single Appellate Board with multiple benches. The Chairman of the Appellate Board has the discretion to decide the allocation of business among benches. The rules cited by the Delhi Party pertain to the appropriate office of the Trade Mark Registry and not the jurisdiction of the Appellate Board or its benches. Therefore, the court concluded that the orders of the Appellate Board did not suffer from a lack of territorial jurisdiction.

2. Rights of the Kangayam Party:
The Kangayam Party applied for the registration of the word "MAHARAJA" and its caricature in 1992 but faced opposition from the Tindivanam Party. The Assistant Registrar granted conditional registration to the Kangayam Party, limiting its use to Tamil Nadu. The Appellate Board later dismissed the Kangayam Party's appeals and upheld the Tindivanam Party's registration. The Kangayam Party then entered into an assignment with the Delhi Party. The Appellate Board invalidated this assignment, leaving the Kangayam Party without rights to the mark. The court upheld the Appellate Board's decision, dismissing the Kangayam Party's claims to concurrent user rights and the validity of the assignment.

3. Rights of the Tindivanam Party:
The Tindivanam Party applied for registration in 1992, claiming joint ownership among three brothers. The Assistant Registrar granted conditional registration in 2004. However, the Appellate Board directed the Registrar to amend the application to reflect only B.Mohammed Yousuf as the proprietor. The court found this direction erroneous, as it granted relief beyond the scope of the appeal and after the issuance of the registration certificate. The court set aside this portion of the Appellate Board's order, invalidating the Tindivanam Party's amended registration and renewal application.

4. Rights of the Delhi Party:
The Delhi Party registered the word mark "MAHARAJA SPECIAL" in 1977, claiming use since 1966. The Tindivanam Party sought rectification of this registration, alleging non-use and changes in the partnership. The Appellate Board restricted the Delhi Party's use to Delhi. The court found the Tindivanam Party's pleadings on non-use vague and insufficient under Section 47 of the Act. The court set aside the Appellate Board's order, maintaining the Delhi Party's registration and renewals.

5. Validity of the Assignment:
The Kangayam Party entered into an assignment with the Delhi Party in 2004. The Appellate Board invalidated this assignment due to procedural lapses and misdescription of the assignor's name. The court held that the misdescription was a curable mistake and did not affect the validity of the assignment, especially since there was no dispute between the assignor and assignee.

6. Non-use of the Trade Mark:
The Tindivanam Party alleged non-use of the Delhi Party's trade mark under Section 47 of the Act. The court found the pleadings insufficient and noted that the Appellate Board had recorded some use within Delhi. Therefore, the court dismissed the Tindivanam Party's application for rectification on this ground.

7. Procedural Requirements under Section 124:
The Delhi Party contended that the Tindivanam Party should have obtained leave from the court under Section 124 before filing the rectification application. The court held that Section 124(1)(b)(ii) is an enabling provision for staying a suit, not a pre-condition for filing a rectification application. Therefore, the Tindivanam Party's application was valid without obtaining leave.

Conclusion:
- The court upheld the Delhi Party's registration and renewals.
- The Kangayam Party's claims to concurrent user rights and the validity of the assignment were dismissed.
- The Tindivanam Party's amended registration and renewal application were invalidated.
- The assignment between the Delhi Party and Kangayam Party was upheld as valid.
- The Tindivanam Party's application for rectification on the ground of non-use was dismissed.