TMI Blog2008 (10) TMI 726X X X X Extracts X X X X X X X X Extracts X X X X ..... ; that the said trade mark was assigned to the plaintiff alongwith its goodwill vide deed of assignment dated 31st October, 1998. The plaintiff claims to have applied in Form TM 24 dated 25th July, 2000 to the Registrar of Trade Marks for entering the name of the plaintiff as the subsequent proprietor of the said trade mark. Section 45 of the Trade Mark Act, 1999 is as under: 45 . Registration of assignments and transmissions - (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register: Provided that where the validity of an assignment or transmission is in dispute 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . It was thus held that till such registration, there is no right in the assignee to prevent anyone else. I may mention that in that case the assignee had not moved the Registrar to accept the assignment. In the present case, the application of the plaintiff for registration is pending since the year 2000. I find that a Single Judge of Bombay High Court also, in Ratansi Mulji v. Vinod Ratilal Gandhi AIR 1991 Bom 407 quashed prosecution for unauthorized use of Trade Mark at the instance of a person, assignment in whose favour had not been registered. It was observed that without registration of assignment, no rights can be pleaded on the ground that the trade mark have been assigned or transmitted. 6. In Shaw Wallace Co. (supra) an application for impleadment of the assignee was under consideration. This court held that till the time the Registrar, Trade Mark, does not record the title in favour of the assignee, the deed of assignment cannot be admitted in evidence. However, the assignee was still impleaded as a party with direction to file the registration as and when accorded by the Registrar. 7. Per contra, the counsel for the plaintiff has relied upon Modi Threads Limite ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inclined to follow the same reasoning as consistently followed by this Court, for two reasons. Firstly, the Apex Court also in Collector of Central Excise v. Vikshara Trading and Invest. P. Ltd. 2003(157)ELT4(SC) , though not directly concerned with the issue, held: when as a matter of fact it is held that there was an assignment in favour of the first respondent and that fact was not in serious dispute, the mere fact that the assignment was not registered, could not alter the position. I am conscious that the aforesaid observation by the Apex Court may not be construed as a ratio laid down by the Apex Court but the same shows the preference by the Apex Court also, of the view taken by this Court rather than of the view taken by the Madras High Court. 10. I also find that the Madras High Court in judgment (supra) did not consider earlier judgment of its Division Bench in T.I. Muhammad Zumoon Sahib v. Fathimunnissa AIR1960Mad80 holding that registration of assignment is not a condition precedent to an action for infringement by the assignee and an assignee of registered trademark will not be disentitled to an action for infringement on the ground that the assignment was not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hts under Section 28 as registered proprietor. If the interpretation canvassed by defendant herein is to be adopted it will amount to allowing a person who is divested by assignment of title to registered trade mark to nevertheless continue exercising such rights; it would play havoc with assignability and trading in trade marks, expressly permitted under the Act. If the person in whom title has vested by assignment, is held to be not entitled to exercise such rights owing to non registration, the same result will follow, besides giving a premium to third parties. In that situation, in the interregnum there will be none to enforce rights in the registered trade mark. Registered proprietor in Section 28, rather than adopting a pedantic interpretation has to be interpreted as including a person having title as registered proprietor by way of assignment or transmission. 14. It is also worth noting that what appears to have prevailed with the Madras High Court was the inaction of the plaintiff therein to have applied to the Registrar. In the present case, however, the plaintiff had applied for registration as far back as in the year 2000. There is nothing to show that the plaintif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat the plaintiff notwithstanding being not registered is entitled to exercise rights as a registered proprietor of trade mark THEOBID. 17. The mark adopted by the defendant is identical to the plaintiff's registered trade mark. The counsel for the defendant, however, contends that the plaintiff is not entitled to the interim relief for the reason of having approached this Court with unclean hands. It is stated that the plaintiff had approached this Court with a case that it/its predecessor had extensively used the said trade mark. However, upon the defendant challenging the said position, the plaintiff has given up the said case. It is further urged that the essence of the mark is in use thereof and without the plaintiff or anyone else using the trade mark, no injunction ought to be granted in favour of the plaintiff especially when the defendant has filed documents showing extensive use of the mark for the last several years. The counsel for the defendant has in this regard relied upon the Division bench judgment of this Court in Veerumal Praveen Kumar v. Needle Industries (India) Ltd. and Anr. 2001(21) PTC 889 (Del). It is further argued that when the defendant is in a po ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y of registration under Section 31 of the Act. The Apex Court in American Home Products Corporation v. Mac Laboratories Pvt. Ltd. AIR1986SC137 has held that in a proceeding under Section 47, the burden of proving the facts is on the person who seeks to have the trade mark removed from the Register. The Apex Court in this case has also dealt in extenso with the subject of trafficking in trade marks. Even in In Re American Greetings Corporation Application (1983) 2 All E.R. 609 quoted with approval by Apex Court, Lord Brightman of the House of Lords (1984) 1 All E.R. 426 held that the courts have to delineate trafficking in trade marks which is forbidden - only that is forbidden which is dealing in trade mark primarily as a commodity in its own right and not primarily for the purpose of identifying or promoting merchandise in which the proprietor of the mark is interested - if there is no real trade connection between the proprietor and the goods, there is room for conclusion that transaction is of trafficking. The law laid down thus appears to be that trade mark cannot be got registered and held by persons as investors only and with no intention whatsoever to use the same in conne ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Division Bench found a case of abandonment and no likelihood of deception. However, in the present case the plaintiff has been exercising rights with respect to the mark and has also pleaded sales thereunder w.e.f. January, 2008. In these circumstances, the principles laid down by Division Bench are not applicable. The plaintiff as registered owner cannot be injuncted. The result would be the existence in the market of different products under the same trade mark and which cannot be permitted. The plaintiff in the present case has claimed use and expressed intent to use and the correctness thereof is to be tested in trial and at this stage the rights of the registered owner are to be protected. The Apex Court in Ruston Hornsby Ltd. v. The Zamindara Engineering Co. [1970]2SCR222 , relied on by the counsel for the plaintiff, held that an action for infringement of trade mark is not dependent upon the plaintiff's use thereof and is a statutory right dependent only on the validity of the registration. A Single Judge of this Court in Polson Ltd. v. Polson Dairy Ltd. 56(1994)DLT102 discussed various judgments of Indian and Foreign Courts, the preponderance of which appears to b ..... X X X X Extracts X X X X X X X X Extracts X X X X
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