2021 (8) TMI 180 - HC - Indian Laws

Assignment of trademark to other person - Section 30(3)(a) of the Trade Marks Act, 1999 - HELD THAT - The Hon'ble Division Bench of the Hon'ble Delhi High Court passed an order in the case of Kapil Wadhwa and Others vs Samsung Electronics Co. Ltd and Another 2012 (10) TMI 1246 - DELHI HIGH COURT and held that Section 30(3)(a) of the Trade Marks Act, 1999 deals with a situation where the registered proprietor of a trade mark sells the goods bearing the trade mark of a person and thereafter assigns the registered trade mark to another person. The said person (another person) cannot oppose further dealing in those goods by the person who has acquired those goods bearing the trade mark. The ratio laid down by the Hon'ble Division Bench of the Delhi High Court, in the judgment, is to be followed for the purpose of dealing with the cases, including that of the petitioner - Petition disposed off.

Summary

Issues:
1. Challenge to circular dated 08.05.2012 passed by first respondent
2. Modified order dated 21.06.2012 by second respondent
3. Interpretation of Section 30(3)(a) and Section 30(3)(b) of Trade Marks Act, 1999
4. Application of principles from Delhi High Court judgment in the case of Kapil Wadhwa and Others vs Samsung Electronics Co. Ltd
5. Pending Civil Appeal No.8600/2013 before Supreme Court

Analysis:
1. The writ petition sought relief to quash Circular No.13/2012 dated 08.05.2012 issued by the first respondent. The petitioner challenged the modified order dated 21.06.2012 by the second respondent, alleging it to be perverse and bad in law.

2. The judgment referred to a Delhi High Court case regarding the Trade Marks Act, 1999. It discussed Section 30(3)(a) which deals with the scenario of a registered trademark being sold and then assigned to another person. The judgment clarified that the new owner cannot oppose further dealing in goods bearing the trademark.

3. The interpretation of Section 30(3)(b) was also crucial, addressing the lawful acquisition of goods bearing a registered trademark and the subsequent sale of those goods in the market. The judgment emphasized that such sales do not infringe on the trademark rights.

4. The Delhi High Court judgment highlighted the principle of International Exhaustion of Rights, stating that once goods are lawfully acquired and put on the market, the original trademark owner loses control over further sales and distribution. It suggested measures for displaying information to prevent consumer confusion and protect the reputation of the trademark owner.

5. The petitioner's counsel mentioned a pending Civil Appeal before the Supreme Court, indicating that the principles established by the Delhi High Court judgment should be followed until a different ruling is issued. The writ petition was disposed of with no costs imposed, concluding the matter.

This detailed analysis covers the issues raised in the judgment, including challenges to specific orders, statutory interpretations, application of legal principles from precedent cases, and the impact of pending appeals on the current case.