2009 (8) TMI 1289 - HC - Indian Laws

Summary

Issues Involved:
1. Entitlement to maintain a suit for infringement and passing off.
2. Validity of the plaintiff's registration as the proprietor of the trade mark.
3. Applicability of Sections 27, 28, 29, 45, and 53 of the Trade Marks Act, 1999.
4. Grant of interlocutory reliefs.
5. Validity of the assignment deed and non-joinder of necessary parties.
6. Leave under Clause 14 of the Letters Patent.

Detailed Analysis:

1. Entitlement to Maintain a Suit for Infringement and Passing Off:
The plaintiff sought to join the cause of action for passing off with the cause of action for infringement of a trade mark and for a combined trial of these issues. The court noted that if the plaintiff is entitled to maintain the suit on the cause of action pleaded, it would be entitled to leave under Clause 14 of the Letters Patent.

2. Validity of the Plaintiff's Registration as the Proprietor of the Trade Mark:
The plaintiff claimed ownership of the trade mark "HAYWARDS 5000" via a Deed of Assignment from defendant No. 2. The registration of the plaintiff as the subsequent proprietor was challenged on grounds that the application was signed only by defendant No. 2 and not by Shaw Wallace Distilleries Ltd., which was alleged to be a joint owner.

3. Applicability of Sections 27, 28, 29, 45, and 53 of the Trade Marks Act, 1999:
- Section 27: Bars the institution of proceedings for infringement of an unregistered trade mark. The court clarified that this bar does not apply to a registered trade mark being protected by an assignee pending registration as the proprietor.
- Section 28: Grants exclusive rights to the registered proprietor to use the trade mark and obtain relief for infringement. The court held that interlocutory reliefs could be granted to an assignee pending registration under Section 45.
- Section 45: Allows for the registration of assignments and transmissions. The court emphasized that the acquisition of title by assignment precedes the application for registration and that the court has discretion to admit documents in evidence even if not yet registered.
- Section 53: Bars proceedings for infringement by a permitted user but does not apply to an assignee pending registration.

4. Grant of Interlocutory Reliefs:
The court held that interlocutory reliefs could be granted to an assignee of a registered trade mark even if their application under Section 45 is pending. The court can exercise discretion to admit documents in evidence and grant relief based on a prima facie case.

5. Validity of the Assignment Deed and Non-Joinder of Necessary Parties:
The court rejected the submission that the assignment deed was invalid due to the absence of Shaw Wallace Distilleries Ltd.'s signature on the application under Section 45. The court noted that the document as a whole indicated that the trade marks were owned by different entities and not all were inadvertently assigned to Shaw Wallace Distilleries Ltd. The court emphasized the importance of pleadings and rejected the contention based on a lack of factual basis.

6. Leave Under Clause 14 of the Letters Patent:
The court granted leave under Clause 14 of the Letters Patent, allowing the plaintiff to join the cause of action for passing off with the cause of action for infringement and for a combined trial of these issues.

Conclusion:
The court made the petition absolute in terms of prayer (a), allowing the plaintiff to maintain the suit and granting the necessary leave. The costs were to be costs in the cause.