9911796707
TMI Blog2010 (11) TMI 1050X X X X Extracts X X X X X X X X Extracts X X X X ..... hardwares, computer interface, computer peripherals, electronics telex interface and in 1988 in class 7 in connection with machine and machine tools and motors (not for land vehicles). The particulars with reference to the trade mark registered by the appellant are as follows : Date RegistrationNo. Class Goods 15.07.1987 475269 Class 16 Computer Stationery, Computer Manuals, Printed Manuals for Computer Instruction and teaching materials etc. 15.07.1987 475267 Class 09 Computer Hardwares, Computer Interface, Computer Peripherals, Electronics Telex Interface and all goods covered in class 09. 27.01.1988 484837 Class 07 Machine and Machine Tools and Motors (not for land vehicles) included in class 07. 3. On April 21, 1992, the name of the company--Infosys Consultants Pvt. Limited--was changed to Infosys Technologies Pvt. Ltd. and thereafter on June 2, 1992, the name was changed to t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 475269 in Class 16 while in the other two applications being O.P. No. 765 of 2001 and O.P. No. 766 of 2001, the first respondent prayed for removal/rectification of trade mark No. 475267 in Class 9 and trade mark No. 484837 in Class 7 respectively. 9. The appellant opposed these applications on diverse grounds by filing counter affidavits. 10. On August 12, 2003, the Madras High Court framed the following issues: a) Whether the mark applied for registration was used in respect of the goods for which the mark was registered? b) Whether the respondent had a bonafide intention to use the mark applied for under section 18 of the Trade and Merchandise Marks Act? c) Whether the mark registered in favour of the respondent is a service mark? d) Whether there is a non use of registered trade mark by the respondent for a period of over 5 years and 1 month. e) 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? f) Whether the registered trade mark has lost its distinctiveness and is liable to be removed under section 32(c)? g) Whether the respondent has committed fraud while ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that effect has been issued by the Registrar of Companies, Kolkata under the Companies Act, 1956 and no dispute remains between the parties under the trade mark. The relevant statement made in the affidavit dated July 14, 2003 (we were informed that the date of the affidavit is July 14, 2004) reads as follows: 4. That in the meantime the defendant has already changed the Trade Mark namely Jupiter International Ltd. in place of Jupiter Infosys Ltd. The copy of the incorporation on change of name which was issued by the registrar of the Companies are being marked and annexed herewith as Annexure A. 5. That now there is no dispute between the plaintiff and defendant under the Trade Mark. Based on this affidavit, the suit was partially decreed in favour of the appellant on November 10, 2004. 13. In 2007, however, the first respondent filed a suit in the Court of Additional District Judge, Delhi for setting aside the decree dated November 10, 2004. That suit is said to be pending. 14. The IPAB proceeded with the matter in light of the issues that were already framed by the High Court and heard the parties. The IPAB in the impugned order while dealing with the plea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . He contended that the IPAB erred in holding that software was a `service' and the subject registrations were in relation to goods without considering the wide definition of `goods' provided under Section 2(g) of the 1958 Act. Mr. Akhil Sibal argued that the IPAB committed grave error in relying upon the provisions of the 1999 Act and the Trade Marks Rules, 2002 when these provisions were not applicable as the applications were filed under the 1958 Act. According to him, the IPAB sought to rely upon `computer programming' which is a `service' enumerated in Class 42, without considering the distinction between a `computer programme' and `computer programming' and without noticing the (2003) 11 SCC 92 (2008) 10 SCC 766 entry `computer' under Class 9 which falls within `goods'. Learned counsel would submit that in examining the question of non-use under Section 46(1)(b), the IPAB failed to consider that the requisite use must be `in relation to goods' under registration, which is extensively defined under Section 2(2)(b) of the 1958 Act. 18. Mr. Akhil Sibal, learned counsel also argued that the IPAB failed to have regard to the proviso to Sectio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s, for the first time, argued before this Court that the first respondent is not a person aggrieved and/or not capable of maintaining the rectification proceedings with respect to each and every good for which the appellant has been registered since the first respondent has not been registered for all the goods. Mr. Vaibhav Gaggar rather asserted that the first respondent is a person aggrieved in view of the fact that various suits for infringement have been filed by the appellant against the first respondent and on the date of the applications for rectification/removal of the subject registrations from the register, the suits were pending. With reference to the affidavit dated July 14, 2004 filed by the first respondent before the Court of Additional District Judge, he submitted that the said affidavit has no relevance in consideration as to whether the first respondent is an aggrieved person as Section 46 (1) of the 1958 Act relates only to the period upto the date of the filing of the rectification application and the rights of the parties crystallized at that stage itself. In this regard, he relied upon a decision of the Madras High Court in Agha Hyder Hussain Anr. v. Omar Kh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... word; the said word is an abbreviation and combination of the words `information system'; the word `Infosys' has been used by various companies abroad as well as within India prior to incorporation of the appellant itself and hence cannot be called an invented word. In this regard, he relied upon a decision of the Madras High Court in Nestle's Products (India) Ltd. v. P. Thankaraja Anr.12. He submitted that appellant is primarily in service industry which is unregistrable under the 1958 Act and since the appellant is not trading in the goods in respect of which it is registered, it cannot be said that the mark of the appellant is distinctive of its goods. In any case, learned counsel would submit that the expression `Infosys' is not descriptive expression. 24. Insofar as discretion exercised by IPAB in ordering removal of the appellant's registrations from the register under Section 46(1)(b) of the 1958 Act is concerned, learned counsel for the first respondent submitted that this Court should not overturn the discretion so exercised by the IPAB keeping in view the dishonest and fraudulent conduct of the appellant. Lastly, he submitted that although no cros ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tribunal may make such order for making, expunging or varying the entry as it may think fit. (3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register. (4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2). (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly. (6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register. 27. The position that emerges from the above provisions is this. Whether the application is under Section 46 or under Section 56 or a composite application under both Sections, it is a pre-requisite that the applicant must be a person aggrieved. Section 46(1) of the 1958 A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rectly made. The situations covered by this section include: (a) the contravention or failure to observe a condition for registration; (b) the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions are commenced for the purity of the Register which it is in public interest to maintain. Applications under Sections 46 and 56 may be made to the Registrar who is competent to grant the relief. Persons aggrieved may also apply for cancellation or varying an entry in the Register relating to a certification trade mark to the Central Government in certain circumstances. Since we are not concerned with a certification trade mark, the process for registration of which is entirely different, we may exclude the interpretation of the phrase person aggrieved occurring in Section 69 from consideration for the purposes of this judgment. 31. In our opinion the phrase person aggrieved for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on was one under Section 46 and the test to determine whether the applicant was a person aggrieved within the meaning of that section should have been the one laid down by Romer, J. in Wright case and not the one propounded by the House of Lords in the matter of Powell's Trade Mark. The High Court and the Joint Registrar fell into error in not drawing this distinction. However, it is not necessary to dilate on this aspect of the matter as the appellant has really argued on the second and third aspects of Section 46 viz. the alleged non-use of the trade marks by Hardie and special circumstances . 29. In the case of Hardie Trading Ltd.1, this Court approved the test applied by Romer, J. in The Royal Baking Powder Company v. Wright, Crossley, and Co.13, which has been reproduced in para 33 of the report. We respectfully agree. 30. Hardie Trading Ltd.1 has been followed by this Court in a recent decision in the case of Kabushiki Kaisha Toshiba2. This Court stated that Section 46 speaks for private interest while Section 56 speaks of a public interest. 31. It is true that the appellant in opposition to the applications for removal/rectification of trade mark did not speci ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gistered trade mark. This is so because the pre-requisite for exercise of power under Section 46(1) is that the applicant is a person aggrieved. 33. The question then arises, whether it is sufficient for the applicant to show that he is a person aggrieved when he makes his application or he must continue to remain a person aggrieved until such time as the rectification/removal application is finally decided. In our view, the grievance of the applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided. If during the pendency of such application, the applicant's cause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest. In re Apollinaris Company's Trade-Marks14, while dealing with this aspect, Kekemich,J. stated : .....because that is a remedy given to the person aggrieved through the interposition of t ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
