2008 (10) TMI 726 - HC - Indian Laws

Summary

Issues Involved:
1. Whether the plaintiff is the registered proprietor of the trade mark and entitled to maintain an action for infringement.
2. Whether the plaintiff is entitled to interim relief despite the defendant's claims of extensive use and the plaintiff's alleged unclean hands.

Summary:

Issue 1: Registered Proprietor and Entitlement to Maintain Action for Infringement

The plaintiff instituted the suit for permanent injunction restraining infringement of the trade mark THEOBID. The primary question was whether the plaintiff, as the assignee of the trade mark, could maintain an action for infringement despite not being registered as the proprietor with the Registrar of Trade Marks. The trade mark was originally registered in the name of M/s Natco Fine Pharmaceuticals Private Limited and assigned to the plaintiff via a deed of assignment dated 31st October 1998. The plaintiff applied for registration of this assignment in Form TM 24 on 25th July 2000, which was still pending.

The defendant argued, based on Sections 2(1)(v), 28, 29, and 45(2) of the Trade Marks Act, 1999, that the plaintiff could not maintain an action for infringement without being registered as the proprietor. The defendant relied on judgments such as Soundarapandian Match Works v. M. Jayarama Chetty and Shaw Wallace & Co. Ltd. v. Superior Industries Ltd., which held that an assignee cannot exercise rights until the assignment is registered.

Conversely, the plaintiff cited cases like Modi Threads Limited v. Som Soot Gola Factory and Grandlay Electricals (India) Ltd. v. Vidya Batra, which held that pending registration does not bar an action for injunction. The court noted that the reasoning of the Madras High Court was attractive but chose to follow the consistent view of the Delhi High Court, supported by the Apex Court's preference in Collector of Central Excise v. Vikshara Trading and Invest. P. Ltd.

The court concluded that the assignee acquires title to the registered trade mark upon assignment, and registration is merely a formality to record this title. Thus, the plaintiff, despite not being registered, was entitled to exercise rights as a registered proprietor of the trade mark THEOBID.

Issue 2: Entitlement to Interim Relief

The defendant contended that the plaintiff approached the court with unclean hands and had not used the trade mark extensively. The court found no evidence of unclean hands, noting that the plaintiff clarified its position regarding the use of the trade mark. The court also addressed the issue of non-use, stating that the Trade Marks Act does not make use a precondition for obtaining relief against infringement and that the jurisdiction for removal of a trade mark for non-use lies with the Registrar.

The court held that the plaintiff, as the registered owner, could not be injuncted and that allowing the defendant to continue using the mark would cause great injury to the trade mark. The balance of convenience favored the registered user, and the defendant, being an assignee who acquired the unregistered mark in 2007, had no equities in its favor.

The court granted interim relief to the plaintiff, restraining the defendant from manufacturing, selling, or dealing in medicinal preparations under the trade mark THEOBID-D or any deceptively similar trade mark. However, to avoid disrupting the defendant's business, the order was made operative one month from the date of the judgment.