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user of the said mark,therefore,entails the consequences laid down under cl.(b) of Sub-s.(1) of S.46 Ratio |
However,such an application can be filed only by a person aggrieved Ratio |
When the applicant before the Board establishes the fact in regard to non-user of the mark for a period of more than five years on the part of the registered owner,the latter may show that his case falls within the purview of sub-s.(3) of S.46 Ratio |
The question which,therefore,arises is as to who can prove that he had the bona fide intention to use the trade mark on the date of application for registration Ratio |
Indisputably,it would be the registered proprietor Ratio |
S.46 is a penal provision Ratio |
It provides for civil or evil consequences Ratio |
It takes away the valuable right of a registered proprietor Ratio |
It,therefore,can be taken away only when the conditions laid down therefor are satisfied Ratio |
While we say so,we are not oblivious of the fact that trafficking in trade mark is to be discouraged Ratio |
A registered proprietor of a trade mark should not be permitted to circumvent the law of user of the trade mark for a long time by assigning the same from time to time Ratio |
But then such a case has to be made out Ratio |
Allegation of trafficking is a serious one Ratio |
It must be proved in presence of the person against whom such allegations are made Ratio |
At the time of grant of original registration,advertisements are issued and objections are called for Ratio |
Renewal of registration,in a sense,also is not automatic Ratio |
A person who had been using the said trade mark as a proprietor thereof by user is supposed to keep itself abreast with such applications filed by another either for registration of the trade mark or renewal thereof Ratio |
The non-user for a long time would disentitle a registered proprietor from renewal of the registration Ratio |
It must not,however,be forgotten that S.46(1)(b) provides for a special remedy Ratio |
As a person obtains a right on and from the date of registration and/or renewal thereof,he can ordinarily be deprived of his right unless it is shown that the assignment thereof by his holder was not a bona fide one or had been made by way of camouflage Ratio |
If the assignee has obtained assignment for bona fide use,he may not be fastened with any liability owing to non-user on the part of his predecessor Ratio |
In other words,the mistake of the predecessor should not be visited with non-use of the present registered owner Ratio |
It must,however,be observed that whether a use is for bona fide purpose would essentially be a question of fact Ratio |
Whether S.46(1)(b) read with S.48 of the Act would bring within its purview,not only a registered proprietor but also the proprietor who had otherwise acquired a right would depend upon the facts and circumstances of each case Ratio |
In Kabushiki Kaisha Toshiba v PRE |
Tosiba Appliances Co PRE |
Ors.[(2008) 8 SCALE 354 2008 Indlaw SC 1395],this Court held : "We do not find any force in the aforementioned submission PRE |
Cls.(a) and (b) operate in different fileds PRE |
Sub-s.(3) covers a case falling within cl.(b) and not the cl.(a) thereof PRE |
Had the intention of the Parliament been that sub-s.(3) covers cases falling under cl.(b) and clause (a),having regard to the similarity of the expressions used,there was no reason as to why it could not be stated so explicitly PRE |
It was furthermore opined : "There may be a case where owing to certain special circumstances,a continuous use is not possible PRE |
The trade mark for which registration is obtained is used intermittently PRE |
Such non-user for a temporary period may be due to any exigency including a bar under a statute,or a policy decision of the Government or any action taken against the registrant PRE |
It was observed that in cases of intermittent use also,cl.(b) shall apply PRE |
In Kabushiki Kaisha Toshiba,this Court relied upon Hardie Trading Ltd.& Anr PRE |
V.Addisons Paint & Chemicals Ltd.[(2003) 11 SCC 92 2003 Indlaw SC 756]: "In our opinion,the phrase "person aggrieved" for the purposes of removal on the ground of non-use under S.46 has a different connotation from the phrase used in s.56 for canceling or expunging or varying an entry wrongly made or remaining in the R... |
The submission of Mr Ratio |
Sudhir Chandra Ratio |
that the appellant was an infringer both of the right of M/s Ratio |
Jain Industries as also the first respondent and,thus,its use was not bona fide in a case of this nature cannot be accepted Ratio |
If appellant infringed the right of M/s Ratio |
Jain Industries,it was for it to take action there for Ratio |
It did not Ratio |
First respondent itself accepts that at least immediately prior to the institution of the suit,appellant had been using the same Ratio |
We are not concerned herein as to since when it had been doing so Ratio |
It obtained an or of injunction Ratio |
The order of injunction was vacated Ratio |
For one reason or the other,the said order attained finality Ratio |
Prima facie,therefore,appellant has been held to be the registered owner of the trade mark Ratio |
It is one thing to say that for the purpose of frustrating an application for rectification,the appellant had colluded with its predecessor for the purpose of trafficking by entering into the deed of assignment which is otherwise illegal and bad in law Ratio |
but it is another thing to say that the appellant could be proceeded against alone for non-user of the registered trade mark for a period of more than five years Ratio |
For the purpose of making out such a case,both the original registrants as also the assignee were required to be impleaded as parties Ratio |
We may,at this stage,notice that in Law of Trade Marks by Mr Ratio |
K.C.Kailasam,while commenting on S.47 of the Trade Marks Act,1999 to which our attention has been drawn by Mr Ratio |
Sudhir Chandra,it is stated Ratio |
Notes on clauses Ratio |
This clause corresponds to s.46 of the existing Act and provides for removal of a trade mark from the register on the ground of non-use Ratio |
A trade mark which is not used within five years of its registration,becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used Ratio |
Under S.46(1),it is proposed to clarify that the five years period will start from the date on which the trade mark is actually entered on the register Ratio |
This amendment is intended to remove any ambiguity,as for all other purposes,the date of registration will be the date on which the application was filed vide cl.23(2).Proviso to sub-cl.(1) also provides that the tribunal may refuse removal of the mark if it is shown that any proprietor had in fact made bona fide use o... |
It is also proposed to increase the period from 1 to 3 months in cl.47(1)(a) and (b) in which use of the trade mark,prior to the date of filing of the application for removal of the trade mark,shall be disregarded Ratio |
This is intended to prevent the registered proprietor to by pass the Act by such token use after he comes to know that an application for removal is about to be filed.?Sub-cl.(3) protects a mark from being removed from the register on ground of non-use if such non-use is shown to have been due to special circumstances ... |
The clause is proposed to be modified to clarify that special circumstances in the trade will include restrictions imposed by any law or regulation on the use of trade mark in India Ratio |
Consequential amendments have been made to cover services.(Cl.47 of the Bill Ratio |
The Court while construing a statute takes into consideration the parliamentary intent in amending the provisions thereof Ratio |
It seeks to enhance the period of moratorium of use of the registered trade mark from one month to three months so as to prevent speculative assignment Ratio |
Thus,a case of speculative assignment is specifically required to be made out Ratio |
Such an application may be maintainable in terms of S.56 of the Act but strictly not in terms of S.46(1)(b) thereof and that too in the absence of the original registered proprietor Ratio |
We are not satisfied with the explanation offered by the first respondent that it gave up the case of non-use of the registered trade mark against M/s Jain Industries on the basis of statement made by the learned counsel for the appellant; firstly because consent does not confer jurisdiction; secondly,because want and/... |
The counsel appearing on behalf of the appellant did not state that it had waived its right so far as non-impleadment of M/s Ratio |
Jain Industries was concerned Ratio |
It only consented for grant of liberty in favour of the first respondent for filing of an application for the self-same cause of action Ratio |
The question of maintainability of the second suit is absence of the registrant proprietor was not and could not have been the subject matter of consent at that stage Ratio |
The cause of action which permitted the first respondent to file an application for rectification against M/s Ratio |
Jain Industries was non-user thereof by it Ratio |
Its non-user and rectification of the register could not,in the aforementioned situation,have been tagged with the cause of action,if any,against the appellant Ratio |
The second contention of Mr Ratio |
that the appellant was an infringer of the trade mark is again a question of fact Ratio |
The right of the first respondent as a proprietor of the trade mark by reason of a long user is required to be determined vis-'-vis M/s Ratio |
Jain Industries as also the appellant in the suit filed by it which is pending Ratio |
The Board could not,while exercising its jurisdiction under S.46(1)(b),of the Act proceeded on the basis of such presumption Ratio |
It is not correct that no cause of action survived against Jain Industries Ratio |
It was not lost by reason of assignment as was contended by the learned counsel Ratio |
In the suit,only the competing right of the first respondent qua the appellant can be determined and not a right against M/s Ratio |
Such a right cannot be determined in a proceeding under S.46(1)(b) of the Act which is restricted to non-user of the registered trade mark Ratio |
Both the appellant and the respondent No.1 were the infringers of the right of M/s Ratio |
Jain Industries as it was the registered proprietor of the trade mark in respect of the goods in question,namely,centrifugal pumps Ratio |
Two interpretations of the said provision S.46(1)(b) are possible Ratio |
While interpreting the same,however,certain basic principles of construction of statute must be kept in mind Ratio |
As it takes away somebody's right,it deserves strict construction Ratio |
Jurisdiction of the Board being dependent on determination of the foundational facts,the same was required to be established on the basis of the averments made in the application and not otherwise Ratio |
The right of a registered trade mark is not lost automatically on the expiry of five years and one month Ratio |
It does not provide for a 'sun set' law Ratio |
It has to be adjudicated upon Ratio |
Whether the registered proprietor of the trade mark had taken recourse to trafficking or not must be determined in an appropriate proceeding Ratio |
The principle of 'purchaser of a property has a duty to make enquiries',therefore,cannot apply in a case of this nature Ratio |
So long as the right to assign a registered trade mark remains valid,once the same is validly assigned,the assignee derives the same right as that of the assignor in terms of the statute Ratio |
A title to a trade mark derived on assignment as provided for under the Act cannot be equated with a defective title acquired in any other property as admittedly on the date of assignment,the right of the registered trade mark was not extinguished Ratio |
Both the findings of the High Court which we have noticed hereinbefore are findings on question of law and in that view of the matter the contention of Mr Ratio |
Sudhir Chandra that the merit of the matter is yet to be gone into by the Board cannot be a ground for ignoring the submissions made at the bar Ratio |
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