TMI Blog2009 (9) TMI 1077X X X X Extracts X X X X X X X X Extracts X X X X ..... of all the impugned finished and unfinished materials bearing the violative trademark. 3. The plaintiff, which is a private trust established under the Deed of Trust dated 05.11.2000, duly registered with the Sub-Registrar Varanasi (U.P.), is engaged in the business of manufacture and trade of fans of various types. It is averred that the plaintiff has already achieved the turnover of over Rs. 70 crores since the year 2000 till date under its well established and proprietary trade mark/trade name 'CINNI' and has built up a valuable goodwill and reputation in India as well as overseas. The trade mark 'CINNI' is registered under the Trade Marks Act, 1999 under the following numbers: 4. By virtue of the said registrations, the plaintiff has exclusive right to use the said registrations within the meaning of Sections 28 and 29 of the Trade Marks Act, 1999 as also to prevent rival violative third party use thereof. The plaintiff is carrying on its business under the said 'CINNI' trade mark/trade name through a wide range of licensees, manufacturers, distributors, etc. One such licensee firm is M/s. Panchmukhi Engg. Works, Varanasi (U.P.) and one such ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of fans of various types and have claimed their own rights therein. The said adoption and use of the 'CINNI' trade mark by the defendants is mala fide, fraudulent and in violation of the plaintiff's statutory and common law rights in the trade mark/trade name 'CINNI' and in infringement of the plaintiff's 'CINNI' trade mark registrations. In addition, the defendants by their impugned adoption and use are passing off their goods and business as that of the plaintiff and are thus deceiving the innocent and unwary purchasers, the market and the trade as to the origin of the goods. The plaintiff is resultantly suffering tremendously in business and in reputation and the losses being suffered by it are incalculable. Aggrieved, the plaintiff immediately, through its Managing Trustee, issued a cease and desist notice dated 13th April, 2009 through its attorney upon the defendants. This apart, the plaintiff also issued Caution Notices in newspapers, protested through family channels and requested the defendant No. 2 to cease its impugned activities. The plaintiff, in addition, also launched enquiries in the market, which revealed that the defendants were sol ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nterim order of injunction passed by this Court on 01.05.2009 in IA No. 5726/2009. 11. Mr. Vikas Singh, the learned senior counsel for the defendants raised a three-fold contention to buttress his prayer for rejection of the plaint: (i) Firstly, the present suit has not been filed by a duly authorised person, in that, Shri Chandra Kumar Sah, the Managing Trustee of the plaintiff trust, who has filed the suit, was removed from the office of Managing Trustee vide a resolution of the Board of Trustees dated 22.04.2009 and by another resolution dated 14.05.2009, one of the trustees, namely, Sumit Agrawal had been appointed and authorised to represent the plaintiff trust. The aforesaid resolutions had been passed in view of the fact that Shri Chandra Kumar Sah had mismanaged the affairs of the trust and started a rival business of manufacturing of fans and motors under the trade name 'CINTU' and was getting its product distributed through M/s. Sah Agencies by misrepresenting to the dealers of the trade mark 'CINNI' that 'CINTU' was a product of 'CINNI'. M/s. Sah Agencies was incorporated on 13.12.2002 with Chandra Kumar Sah and Dipak Kumar Sah, son ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t any business transaction had been conducted by M/s. Sah Agencies at Delhi, within the jurisdiction of this Court. Shri Chandra Kumar Sah, as already stated, is one of the Directors of M/s. Sah Agencies. Since the defendants have sent a notice to M/s. Sah Agencies informing it that it has no power or authority to trade and manufacture fans under the trade mark 'CINNI' without issuance of a licence in terms of Clause 5.6 of the Trust Deed, which requires that any licence issued by the Managing Trustee be countersigned by at least one of the two trustees, namely, Ravindra Kumar Sah (the defendant No. 2) and Shri Sumit Agrawal, no enforceable right has been created in favour of the said Sah Agencies for conferring jurisdiction on this Court. The said M/s. Sah Agencies is in any case not a licensee of the plaintiff for 'CINNI' fans, but is a licensee for 'CINTU' fans. (iii) Thirdly, there is a clear-cut admission in paragraph 27 of the plaint to the effect that so far there is no recordial of the assignment of the trade mark 'CINNI' to the plaintiff Company with the office of the Registrar of Trade Marks and without a recordial of the assignment, n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... time trustee to work for the benefit of the trust. Yet, the defendants had sought to remove him, compelling him to file a suit in the Varanasi Courts challenging his aforesaid removal, which suit had been filed after the defendants took the aforesaid plea of his removal in the present case. The learned Counsel also contended that it was unsafe to hand over conduct of the suit to the defendants or to the said Sumit Agrawal, who was in league with the defendants No. 1 and 2 and was hand in glove with the said defendants. Sumit Agrawal, was the son of the daughter of Raj Kumar Sah, while the defendant No. 2 was the son of Raj Kumar Sah and the aforesaid persons in connivance with each other were aiming to usurp the business of the plaintiff. The said Sumit Agrawal was also a partner/proprietor in the firm styled as U.B. Sales having its main office at C-21/ 85, Mahamandal Nagar, Pishachmochan Marg, Varanasi. This firm had been appointed by the defendant No. 1 as its sole selling agent of 'CINNI' fans and as was evident from letter dated 6th May, 2009 sent by the defendant No. 2 on behalf of the defendant No. 1 to M/s. Pawan Electrical Industries, Village-- Alauddinpur Lohata ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts partner, which reads as under: We wish to inform you that the royalty as per our agreement dated 31.12.1999 will be paid by you to us upto 8th Nov.' 2000 only as the Brand Equity have been transferred to Cinni Foundation. You are, therefore, requested to please contact Cinni Foundation, D-59/37, Mahmoorganj, Varanasi for your fresh agreement towards Cinni Royalty. You are also requested to please clear the dues against royalty upto 8th Nov.' 2000 at the earliest to square up the account. 17. The learned Counsel for the plaintiff also drew my attention to the letter dated September 13, 2005 signed on behalf of CINNI Foundation by Mr. C.K. Sah as Managing Trustee and countersigned by Mr. Ravindra Kumar Sah as trustee to urge that the defendant No. 2 (Ravindra Kumar Sah) had explicitly acknowledged that the trade mark 'CINNI' vested in the 'CINNI Foundation'. The said letter being apposite is reproduced hereunder: September 13, 2005 M/s Pawan Electrical Industries Plot No. 338, Khajuri Pandeypur VARANASI - 221 002 Kind Attn: Sri Abhishek Agrawal Dear Sir, Further to renewal of our Agreement for the use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aid application. Dealing first with the contention that the suit has not been filed by a duly authorized person, in that, the person who had instituted the suit on behalf of the plaintiff-trust, had been removed as the Managing Trustee for his various acts of omission and commission, viz. mis-management of the Trust, starting of a rival business of manufacturing the fans, pumps, etc. and marketing the same under the new registered trademark of 'CINTU', thereby causing infringement and passing off of the trademark of the defendant No. 1, and causing serious prejudice to the interests of the trust as well as of the beneficiaries, it needs to be noted that there is no denial on the part of the defendants that the trademark 'CINNI' had been assigned to the plaintiff under the Deed of Assignment dated 05.11.2000 whereunder the Managing Trustee was to continue as such for his lifetime and was authorized to institute legal proceedings. Even assuming there had been any denial of the said fact, this Court could not have taken notice of the same for the purpose of adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... application under Order 7 Rule 11 CPC, in the course of arguments, it was urged by counsel that in view of Section 45 of the Trademarks Act the title in the trademark cannot pass unless the assignment or transmission thereof is registered with the Registrar. Section 45 which is apposite reads 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. (2) Except for the purpose of an application before the Registrar under ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e above position is further clarified by the proviso to Sub-section (1) of Section 45, which lays down 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. Thus, the question of title is not a matter which will be gone into by the Registrar. It can only be adjudicated upon in a court of competent jurisdiction and after adjudication thereon, the party, in whose favour the decision is rendered by the competent court, may apply for registration of its proprietorship/title. 26. In the instant case, the plaintiff-trust has applied for registration of its title to the trademark 'CINNI' in view of the assignment thereof by the defendant No. 1 to the plaintiff-trust and the matter is stated to be pending before the Registrar, who has yet to adjudicate upon the same, after arriving at a satisfaction 'on proof of title'. Significantly, there is no dispute raised with regard to the execution of the Deed of Assignment. 27. More than five decades ago a Division Bench of the Madras High Court i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tered trademark in its name is still pending, but that does not debar the plaintiff to protect violation of the aforesaid trademark at the hands of unscrupulous persons by filing an action in a court of law for injunction. It is prima facie clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trademarks the dishonest persons cannot be allowed to make use of the said trademark in order to get themselves illegally enriched earning upon the reputation built up qua that trademark by the predecessor-in-interest of the plaintiff.... 31. In Grandlay Electricals (India) Ltd. and Ors. v. Vidya Batra and Ors. 1998 VII A.D (Delhi) 618, the plaintiff, who had entered into the partnership with two other persons, who subsequently retired from the partnership, relinquishing all their rights in the said partnership and assigning their rights and interests in the partnership property, including the trade name and trademark 'GRANDLAY' in favour of the plaintiff, brought an action for infringement of the said trademark against the defendants, who opposed the same, inter alia, on the ground that the plain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... llows: 36. The application for registration of trademark in favour of plaintiff No. 1 is still pending with the Registrar of Trademarks. During the interregnum the rights emanating from the assignment cannot be denied to the plaintiffs on account of non- registration by the Trademark registry. The plaintiffs have filed the appropriate application and form and have also filed the copies of the correspondence with the Trademark Registry in this Court to show that their application for registration is still pending. Prima facie it cannot be inferred that the application for registration of trade mark on the basis of assignment of the plaintiffs is not pending. Registration/recordal of the name of the proprietor does not confer title but is merely an evidence of title. The rights in the trademark have come to the plaintiffs on the basis of assignment deeds which cannot be denied, prima facie in the facts and circumstances. 34. The law as enunciated above, was recently reiterated by this Court in the case of CICO Technologies Ltd. and Anr. v. Tapcrete Marketing (P) Ltd. and Ors. 2008 (38) PTC 621 and in Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd. 2009 (39) PTC 347 (Del). I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... heres in the assignee even before registration. Section 2(v), on the other hand, defines 'registered proprietor' in relation to a trademark to mean 'the person for the time being entered in the register as proprietor of the trademark'. Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the 'registered proprietor' of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark. 37. The matter is further clarified by the definition of transmission in Section 2(zc) of the Act wherein 'transmission' has been defined to mean 'transmission by operation of law, devolution on the personal representative of a deceased person and other mode of transfer, not being assignment'. It is not difficult to visualize a case where the title in the trademark may devolve on the legal representative of a deceased person or in the case of an entity may devolve by operation of law to the successor-in-interest, but such transmission may not be recorded with the Registrar, ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
