TMI Blog2023 (6) TMI 1009X X X X Extracts X X X X X X X X Extracts X X X X ..... lling up a form RM-P issued by the Trademark registry. This form provides for an application for post registration changes in a trademark. In the garb of making this application Poulami Mukherjee tried to record with the registry that Duckbill had assigned the seven trademarks to her (see page 168 of the application CAN 2 of 2023) and managed to get the assignment registered on 14th June, 2022. Under Chapter V of the Trade Marks Act, 1999 the right of assignment and transmission is vested in the registered proprietor. In case of these seven marks, the registered proprietor was Duckbill, the custodian of whose assets was the liquidator. So the real proprietor was the liquidator - a deliberate attempt was made by Poulami and her father-in-law to divest Duckbill of its principal assets that is the trademarks and misappropriating them, by backdating a deed of assignment to 2017 and then filing it with the trademark registry five years later. This appeal is dismissed by vacating our interim order dated 24th January, 2023. The impugned judgment and order is affirmed by substituting therein the reasons in this judgment and order. - FMAT 9 of 2023 With CAN 1 of 2023 CAN 2 of 2023 - ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... judgment and order appealed against. We granted an order of injunction restraining Duckbill from using the marks. The interim order would be valid till 31st March, 2023 with power vested in the learned judge to extend it if hearing of the application could not be completed by that time. Immediately, thereafter, on or about 28th January, 2023 Duckbill made an application for setting aside our order dated 24th January, 2023 and for reinstatement of the order of the learned Court below, on the ground that the ex parte order was obtained on 24th January, 2023 by misleading the court that inspite of service, Duckbill had not appeared. SHORT FACTS The facts of this case are most extraordinary. Very rarely does one come across a case of this kind where there is such a serious allegation of fraud, misrepresentation and suppression of facts and cheating. Insolvency commencement date for Duckbill was 17th December, 2019, when NCLT commenced Corporate Insolvency Resolution Process (CIRP) against them. The order of liquidation of Duckbill was passed by the tribunal on 13th April, 2021. The Liquidator proposed to sell the assets of the company as a going concern. The most va ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gnment of 3rd April, 2017, is a fabricated document, so backdated that the assignment would appear to have been effected prior to two years of commencement of insolvency on 17th December, 2019. According to the Liquidator, the consideration received from Duckbill has been utilized to pay the dues of the company. According to Duckbill, Poulami in connivance with her father-in-law who was the director of that company, wanted the liability of Duckbill to be met from the consideration paid by Paul Brothers and at the same time stake their wrongful claim on the seven trademarks, so as to deprive the company of these valuable assets and enrich themselves. On 14th November, 2022 Paul brothers filed a writ application in this court (WPA 24933 of 2022) asking inter alia for a writ of mandamus for cancellation of the assignment of the seven trademarks in favour of Poulami and for its restoration in favour of Duckbill. At the ad-interim stage on 6th April, 2023 a learned single judge hearing the writ took note of our order dated 24th January, 2023 restraining Duckbill from using the marks. She ruled, on appreciation of the prima facie case that Poulami be also restrained from using the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a consideration of only Rs. 7,000/-, by Swapan Kumar Mukherjee, the respondent No.2 as the director of the company as well as the father-in-law of Poulami. On behalf of Poulami Mukherjee, learned counsel Mr. Debnath Ghosh assisted by Mr. Aniruddha Chatterjee, learned counsel contended that the deed of assignment by Duckbill in favour of Poulami Mukherjee was validly executed on 3rd April, 2017. By such assignment, Poulami acquired the rights of the registered proprietor of seven trademarks of Duckbill. Under Section 28 of the Trade Marks Act, 1999, Poulami became entitled to the exclusive right to use the trademark and under Section 29 entitled to prevent infringement of the marks by another party. Learned counsel contended that upon initial registration of the trademark and its subsequent assignment, the assignment became prima facie evidence of the validity of the mark under Section 31 of the said Act. Relying on Rules 75 to 77 of the Trade Mark Rules, it was argued that the certified copy of the original assignment had to be furnished with the Registrar. The deed of assignment by which the marks were assigned under Chapter V of the said Act would only be challenged by f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dgment. The application (CAN 2 of 2023) is allowed to the above extent. DISCUSSION AND CONCLUSION The dispute between the parties as I see it is more concerned with proprietorship of the seven trademarks than with their infringement. At this stage of the suit, the court is only called upon to decide prima facie the proprietorship rights of these trademarks. The prima facie finding of the learned judge in the impugned judgment and order is palpably erroneous to the point of being perverse. No learned judge on the basis of the deed of assignment of 3rd April, 2017 lodged some five years later on 18th January, 2022 and purportedly registered on 14th June, 2022 would have come to the prima facie conclusion that it was valid, under Section 42 of the Trade Marks Act, 1999. However, the learned Judge came to this finding. At the ad interim stage we did not have the opportunity of scrutinizing the documents. We entertained the view that if the learned judge had entered the finding that the assignment was valid, then Poulami had the right of the proprietor of a registered trademark and entitled to an ad interim order restraining Duckbill from using the marks. Hence, with an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed 3rd April, 2017 was sought to be lodged with the Registrar on 18th January, 2022 for registering the assignment. This application to record this assignment was made by filling up a form RM-P issued by the Trademark registry. This form provides for an application for post registration changes in a trademark. In the garb of making this application Poulami Mukherjee tried to record with the registry that Duckbill had assigned the seven trademarks to her (see page 168 of the application CAN 2 of 2023) and managed to get the assignment registered on 14th June, 2022. First of all, under Section 28 of the Trade Marks Act, 1999 registration is only prima facie proof of validity. According to the decision in Lupin at the ad-interim stage the court can prima facie go into the question of validity. It is absolutely plain that prima facie there was gross irregularity involved in the alleged assignment and in the registration thereof. From the prima facie findings arrived at by me there is every reason to believe that the deed of assignment was backdated. Even if it is assumed that it was not the trademark registry had no power under Section 42 of the said Act to register the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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