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TMI Blog2009 (8) TMI 1289X X X X Extracts X X X X X X X X Extracts X X X X ..... no 2 is therefore only a formal party to the suit. According to the plaintiff the numeral 5000 is a fancy numeral and forms a leading and essential feature of the said trade mark. The present application being for leave under clause of 14 of the Letters Patent the merits of the case are not relevant except to the extent dealt with hereafter. 3. 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. Mr. Bookwalla however submitted that the plaintiff is not entitled to maintain the suit as it is not the registered proprietor of the trade mark the infringement whereof is alleged in the suit. The submission was based on the fact that admittedly as on the date of the filing of the suit the plaintiff was not registered as the proprietor of the trade mark. Mr. Bookwalla also submitted that the registration of the plaintiff as the subsequent proprietor of the trade mark after the filing of the suit was illegal. This submission was based on the premise that the application for bringing the plaintiff on the register as a the subsequent proprietor of the trade mark was signed only by the second ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ins/applies to an unregistered trade mark and not to a registered trade mark which is sought to be protected by an assignee pending his registration as the proprietor thereof. 8. Section 28(1) reads thus: 28. Rights conferred by registration.(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. In support of his contention that the suit is not maintainable at the instance of the plaintiff Mr. Bookwalla relied upon the latter part of Section 28(1): ..and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. He submitted that under Section 28(1) it is only the registered proprietor who has the exclusive right not merely to the use of the trade mark but also to obtain relief in respect of infringement thereof in the manner provided by the Act. Section 2(v) defines registered proprietor, in relati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court. (2) Except for the purpose of an application before the Registrar under Sub-section (1) or an appeal from an order thereon, or an application under Section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with Sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs . 11. Sub-section (2) of Section 45 contains two important features which militate against Mr. Bookwalla's contention. Firstly Section 45 does not contain an absolute bar against the court recognizing or giving effect to an assignment or transmission in respect whereof the person has not been registered as the proprietor of the registered trade mark due to the pendency of the application under Section 45. Depending upon the facts of the case, nor does ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s: Where a person becomes entitled by assignment or transmission to a registered trade mark ... posit the acquisition of title thereto by assignment or transmission. This is further clear from Sub-section (1) which requires the Registrar to register the title of a person who acquires the trade mark by assignment or transmission on proof of title . Thus the acquisition of title to a trade mark by assignment or transmission precedes and is essential to an application under Section 45. 15. There is a distinction between an unregistered document not affecting the property which is the subject matter thereof and such a document not being inadmissible in evidence. It is important to note that Section 45 does not provide that a document of the nature referred to in Sub-section (2) does not affect the trade mark acquired by assignment or transmission. This is in contrast to Section 49 of the Registration Act which provides that no document required to be registered under Section 17 thereof or under the Transfer of Property Act shall affect any immovable property comprised therein. Section 49 of the Registration Act reads as under: 49. Effect of non-registration of documents requi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd the intention of the parties acquiring title to the trade mark thereby bringing themselves on the register it must decide the application on merits. Where the court is of the view that despite a strong prima-facie case in this regard it would require to be established at the trial then, at the highest, pending the decision of the application under Section 45 the decree may not be passed. Such a situation can arise for instance where the assignment is denied or opposed on any ground by the assignor. It may also arise where others challenge the plaintiffs acquisition of the trade mark by transmission. In such cases it may be necessary to implead the assignor or such other persons and also seek reliefs against them to establish the assignment. The grant of interlocutory relief would naturally also depend upon whether the plaintiff has made out a strong prima facie case even in respect of the acquisition of the trade mark by assignment or transmission. 19. Such a procedure is not unknown to law. It has been followed where a suit is filed by an executor or legatee pending the grant of probate or of letters of administration. This is despite the fact that the bar under Section 213( ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... was also contended that in such a suit no interlocutory proceedings can be adopted. The Division Bench negated the submissions relying upon a series of judgements of the Privy Council and of this Court. The Division Bench drew a distinction between laying claim as an executor or a legatee and establishing the right as a legatee or an executor. The Division Bench held as under: 6. ..We are, therefore, of the view that Section 213 is merely a bar to a person establishing his right as an executor or legatee in an action. This does not suggest that the said person cannot claim the capacity of executor or legatee so long as he is able to produce the probate certificate before the actual decree is passed. In other words, the bar is really one against the passing of a decree without a probate certificate and not the entertainment of the suit itself. 7. The next contention of Mr. Doctor is that, even presuming that the suit is maintainable without production of the probate certificate, the appellant in his capacity as executor could not have sought any interlocutory relief. This is the argument which seem to have appealed to the learned Single Judge. The contention is that to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... registered trade mark by a person who has acquired title thereto by assignment or transmission. Section 213 of the Indian Succession Act bars the establishment of a right as an executor or legatee in the absence of a probate of the will under which the right is claimed or the grant of letters of administration with the will or a copy thereof attached. Section 45 does not contain a bar to the establishment of a right as a registered proprietor. It merely bars the receipt of the document in evidence which may indeed have its own consequences. Further, this bar is subject to the discretion of the court under Section 45(2) to order otherwise. 22. Mr. Bookwalla strongly relied upon Section 53 in support of his submission. However Section 53 of the Act must be read with Section 2(1)(r)(ii) which read as under: 2 (r) permitted use, in relation to a registered trade mark, means the use of trade mark (i) by a registered user of the trade mark in relation to goods or services (a) with which he is connected in the course of trade; and (b) in respect of which the trade mark remains registered for the time being; and (c) for which he is registered as registered user; ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mark in favour of the plaintiff and the same now stands vested in the plaintiff. The fact that the plaintiff has not as yet been shown in the register as the proprietor thereof does not lead to the conclusion that the rights in respect of the trade mark are not vested in the plaintiff. In any event the bar contained in Section 53 does not apply to a person not covered by Section 2(1)(r)(ii). 25. A view to the contrary would not only cause enormous prejudice to bona- fide assignees of trade marks but would also create havoc in the entire field of assignments of trade marks. Indeed this would be so even in respect of persons who acquire trade marks by transmission. 26. The rights of a bona-fide assignee could be set at naught not merely by a dishonest assignor but even by an honest assignor who not surprisingly may lose all interest in defending the trade mark against infringement upon assigning the trade mark and receiving the consideration for the same thereby leaving the field wide open for infringement of the trade mark pending the assignee being brought on the register as the proprietor of the mark assigned to him. Upon the registered proprietor entering into an agreement ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under Clause (c) of Sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes un ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to Mr. Bookwalla's submission. Section 134 is not relevant to this aspect of the matter at all. Section 134 reads and under: 134. Suit for infringement, etc. to be instituted before District Court.(1) No suit (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of Clauses (a) and (b) of Sub-section (1), a District Court having jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ompany Limited, and accordingly refuses to update the Indian Trade Mark Register to show Shaw Wallace Company Limited has the proprietor of this trade marks subsequent to the deed of modification, the assignors shall as soon as possible after such refusal and at the expense of the assignors use their best endeavours to execute a Deed of Assignment of the trade marks which were inadvertently assigned by Shaw Wallace Company Limited to Shaw Wallace Distilleries Limited assigning these trade marks back to Shaw Wallace Company Limited. The submission is that if defendant No. 2 and Shaw Wallace Distilleries Ltd are the assignor's jointly, the application under Section 45 having been made only by defendant No. 2 is defective. He further submitted that the suit having been based on a defective assignment is not maintainable. 35. The error in the submission arises from picking and choosing a recital and a part of a clause rather than reading the document as a whole. In choosing only two small portions out of the document Mr. Bookwalla proceeded on the basis that the suit mark is covered by recital (C) to wit, the suit mark was one of the marks which was inadvertently assig ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s on the terms and conditions set out in the licence agreement between the Assignee and Shaw Wallace Distilleries Ltd. to be entered into on the same date as the date of this Agreement (the New Trade Mark Licence ). (I) The New Trade Mark Licence records the termination of the trade mark licence agreement in relation to the Assigned Rights between Shaw Wallace Company Limited and Shaw Wallace Breweries Limited dated 21 May 2003 (the SWBL Trade Mark Licence ). Clause 4 defines Trade Marks to mean: (f) all trade marks whether or not registered, and applications for registered trade marks consisting of or including the words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000; (g) any trade marks which are confusingly similar to words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000; and (h) any and all rights in or to the name words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000 Owned by or applied for on behalf of the Assignors or any of their Affiliates from time to time anywhere in the world including those registered trade marks and applications for registered trade marks, detail ..... X X X X Extracts X X X X X X X X Extracts X X X X
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