TMI Blog2012 (3) TMI 706X X X X Extracts X X X X X X X X Extracts X X X X ..... MARELANE and MARICELL . 2. The appeal was admitted on 31 January 2012 and in view of history of past litigation, respondent-defendant was permitted to file affidavit-in-reply to raise all available contentions for arguing the Notice of Motion in the suit. The appeal has been taken up for final hearing and learned counsel for the parties have been heard at length on the Notice of Motion in the suit. 3. Before enumerating rival contentions, it is necessary to refer to relevant facts and also the history of litigation between these two very parties in suits filed by either the appellant-plaintiff or its sister concerns against the defendant herein, in actions for infringement of plaintiff's registered marks and for passing off. 4. The trade name MERELANE was registered on 17 May 1971 with Trademark No. 272074 in favour of Badriprasad Gulraj Kejriwal and thereafter upon death of Badriprasad Kejriwal in 1975, the mark was registered in favour of partnership firm of his family members on 6 February 1976. Thereafter the registration was renewed in favour of successive partnership firms including M/s. Kejriwal Sons. The last registration is in favour of Parksons Games ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... MERELANE 555 MARICELL 555 Ad-interim order dated 22 September 2011 7. MERELANE No. 7 MARICELL NO. 7 Ad-interim order dated 28 November 2011 (Order under appeal) 6. A Division Bench of this Court in Hiralal Prabhudas v. Ganesh Trading Company and Others A.I.R. 1984 BOM. 218 : 1984 PTC 155 laid down the following propositions for judging deceptive similarity of products of rival trademark : What emerged from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being im ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... order dated 24 September 2010, the learned Single Judge of this Court granted injunction in favour of the plaintiff and against the defendant. That order came to be confirmed by this Court in appeal on 18 March 2011 and Special Leave Petition filed by the defendant came to be dismissed by the Apex Court vide order dated 10 May 2011. Similarly, the defendant had used the trademark NO.7 MARILYAN infringing the plaintiff's trademark MERELANE No. 7 . By a consent order dated 14 January 2011, the learned Single Judge of this Court decreed the suit filed by the plaintiff against defendants. Another attempt made by the defendant was to use the trademark MARICELL 555 infringing the plaintiff's trademark MERELANE 555 and by order dated 22 September 2011, the learned Single Judge of this Court granted interim injunction against the defendant. 9. There were also other orders passed by this Court restraining the defendant from using the trademark NILON NO.7 infringing the trademark NYLON NO.7 . Further this Court passed another order against the defendant from using the trademark NAIKAN NO.7 infringing the trademark NYLON NO.7 . Those orders were passed on 12 Jan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s passed the impugned order in favour of the respondent-defendant. The question is whether the same can be considered as a discretionary order. In M/s. Hiralal Prabhudas v. Ganesh Trading Company and Others A.I.R. 1984 BOM. 218 : 1984 PTC 155, where a similar contention was raised that the appellate court should not disturb the discretionary order of the learned Single Judge, a Division Bench of this Court speaking through Justice Lentin held as under: It was finally urged by Mr. Kale that the discretion exercised by the Deputy Register under Section 56 of the Act in the respondents' favour should not be lightly disturbed and the appellate Court should therefore not disturb the judgment and order of the learned single Judge. We ask ourselves; Pray where at all arises the Deputy Registrar did not exercise any discretion under Section 56 in rejecting the appellants application for rectification. It must be remembered that the concept of discretion is distinct from that of adjudication. When the Deputy Registrar rejected the appellants application for rectification on the ground that the two marks are not deceptively similar, she did not use any discretion but adjudicated upon ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de an application to the Registrar of Trademarks on 29 October 2010 for making the necessary changes in the trademark register, pursuant to Deed of Assignment dated 29 September 2010 upon incorporation of the partnership firm Parksons Games Sports into Parksons Games Sports Pvt. Ltd. on 29 September 2010, which will enure for the benefit of PARKSONS Cartamundi Pvt. Ltd., as indicated in the fresh certificate of incorporation consequent upon change of name issued by the Registrar of Companies, Maharashtra, Mumbai, as per the approval of the Central Government under Section 21 of the Companies Act, 1956 on 22 January, 2011. The plaintiff has also made statement to that effect in the plaint. 15. Learned counsel for the respondent-defendants has, however, vehemently submitted that there is still no registration in favour of either Parksons Games Sports Pvt. Ltd. Or PARKSONS Cartamundi Private Limited. Strong reliance has been placed on the provisions of Section 45 of the Trade Marks Act, 1999 and on the decision of this Court in Cott Beverage Inc, A Georgia Corporation Vs. Silvassa Bottling Company 2004 (29) PTC 679 (Bom). In that case a learned Single Judge of this Court (Cor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... J. Vazifdar, J.) in SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd. and Another, (Petition No. 159 of 2007 in Suit No. 603 of 2007, decided on 28 August 2009). The principles enunciated by the learned Single Judge in the SKOL Breweries case (supra) commend to us as the correct exposition of law on the subject of rights of the assignee of a registered trade mark pending an application made to the Registrar of Trade Marks for registration of his title to the trade mark. 19. We may hasten to add that the observation of the learned Single Judge in para 10 of the judgment, that registration of assignment under Section 45 is a mere formality was not borne out by the language of Section 45(1) as it then stood, but by virtue of substitution of Section 45 by Amending Act 40 of 2010, Section 45 has undergone a sea change and amply supports the plaintiff's contention that the registration of assignment of a registered trademark would now ordinarily be a formality because of deletion of the words and on proof of title to his satisfaction in sub-section (1), the tenor of newly added sub-section (2) and insertion of the underlined words in sub-section (3). Moreover, sub-secti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e application within the prescribed period. (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. (4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission. 21. We will now set out the relevant paragraphs from the above judgment which lay down the correct principles: 14. Section 45 does not confer title to the trade marks assigned or acquired by transmission. The registration granted by th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d defendant has assigned all its rights in the said trade 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 bonafide 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng prior assignment and not by strangers or by persons claiming adversely to the Assignor. 23. Having considered all the decisions discussed above, in our view, it must now be taken as the settled law that the provisions of Trade Marks Act, 1999 do not preclude a Court from granting interlocutory reliefs in favour of a person who becomes entitled by assignment or transmission to a registered trade mark, pending application under Section 45(1) to register his title to the trade mark. 24. In view of the above settled legal position and also having regard to the history of past litigation between the parties, the fact that the plaintiff's application submitted to the Registrar of Trade Marks on 29 October 2010 has remained pending and the plaintiff already has registered label mark on the packet MERELANE No. 7 PLAYING CARDS , we are inclined to exercise the discretion in favour of the plaintiff to take into consideration the Deed of Assignment dated 29 September 2010 assigning the trademark MERELANE in favour of the plaintiff. 25. The next contention of the respondent-plaintiff is that the words No. 7 merely indicate a figure and it is not something on which the plai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... concern M/s. Parvati Packers. 27. Similar contention was raised when the defendant's trademark 555 MARILYN DX was considered as violating the plaintiff's trademark 555 MERELANE DELUX and two other similar trademarks of the plaintiff. A Division Bench of this Court to which one of us (Chief Justice Shah) was a party rejected a similar contention about the use of the figure ₹ 555'. 28. Moreover, in the present case we are not passing any order on the basis of infringement of the plaintiff's copyright in the words MERELANE No. 7 but on the basis that the plaintiff has acquired goodwill in the trademark MERELANE No. 7 which is apparent from the figures of advertisement expenses and sales of the plaintiff's playing cards including MERELANE No. 7 brand for the period from 1999-2000 to 2009-10, which figures are to be found in the certificate dated 29 October, 2010 of the plaintiff's chartered accountants at Exhibit-M particularly the annual turnover for the last two years being Rs.52.43 lakhs and Rs. 61.93 lakhs respectively. 29. As regards the contention that the additional material on the cartons and packets make the defendant's case ..... X X X X Extracts X X X X X X X X Extracts X X X X
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