IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
PETITION NO. 159 OF 2007
SUIT NO. 603 OF 2007
SKOL Breweries Ltd. ....Petitioner.
Som Distilleries and Breweries Ltd. & Another ....Respondents.
Mr.H.W.Kane with Mr.Hiren Kamod, for the Plaintiff.
Mr.A.Y. Bookwalla i/b Anand Kumar and D.Jehangir, for defendant no. 1.
CORAM : S. J. VAZIFDAR J.
DATE : 28TH AUGUST 2009.
ORAL JUDGMENT :-
1. This is the plaintiffs petition for leave under Clause of 14 of the Letters
Patent to join together the cause of action for passing off with the cause of action for
infringement of a trade mark and for a combined trial of the said issues in the above
2. This is an action for infringement and passing off against defendant no.1
in respect of the plaintiff's trade mark "HAYWARDS 5000". The plaintiff claims to be the 2
owner of the trade mark "HAYWARDS 5000" having acquired the same by and under a
Deed of Assignment dated 27.5 .2005 from defendant no. 2 Shaw Wallace & Co. Ltd.
Defendant no 2 has not questioned the Deed of Assignment and has in fact confirmed
the same. Defendant no 2 is therefore only a formal party to the suit. According to the
plaintiff the numeral "5000" is a fancy numeral and forms a leading and essential feature
of the said trade mark. The present application being for leave under clause of 14 of the
Letters Patent the merits of the case are not relevant except to the extent dealt with
3. If the plaintiff is entitled to maintain the suit on the cause of action pleaded
it would be entitled to leave under Clause 14 of the Letters Patent. Mr. Bookwalla
however submitted that the plaintiff is not entitled to maintain the suit as it is not the
registered proprietor of the trade mark the infringement whereof is alleged in the suit.
The submission was based on the fact that admittedly as on the date of the filing of the
suit the plaintiff was not registered as the proprietor of the trade mark. Mr. Bookwalla
also submitted that the registration of the plaintiff as the subsequent proprietor of the
trade mark after the filing of the suit was illegal. This submission was based on the
premise that the application for bringing the plaintiff on the register as a the subsequent
proprietor of the trade mark was signed only by the second defendant whereas it ought
also to have been signed by Shaw Wallace Distilleries Ltd as it was a joint owner of the
4. For the purpose of this petition it is necessary to note only a few facts. By
a Deed of Assignment dated 27.5 .2005 defendant no. 2 assigned and transferred to the
plaintiff several registered and/or pending trade marks including the trade mark 3
"HAYWARDS 5000". The second defendant and the plaintiff made a request in the
prescribed form on 27.5 .2005 to the Registrar of Trade Marks to enter the name of the
plaintiff as the subsequent proprietor of the said trade marks. The suit was filed on
22.2 .2007. As on the date of the suit the request was pending. By an order dated
3.1.2008 the Registrar granted the registration of the said mark in the plaintiff's favour.
5. Mr. Bookwalla submitted that even assuming that the mark has been
assigned by defendant no. 2 to the plaintiff validly the plaintiff has no locus-standi to file
the suit as, on the date of the filing of the suit, the mark was not registered in the name
of the plaintiff to wit the plaintiff was not the registered proprietor of the trade mark.
6. In support of this submission Mr. Bookwalla relied upon sections 2 (1) (r)
(ii), 27, 28, 29, 45 and 53 of the Trade Marks Act, 1999. I would preface a consideration
of these provisions by mentioning that whereas none of them supports Mr. Bookwalla's
submissions sections 45 and 53 in fact militate against them and support the plaintiffs
7. Section 27 reads thus :-
27. No action for infringement of unregistered trade mark.--(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
Section 27 provides a bar to the institution of any proceeding for
infringement of an unregistered trade mark. It does not deal with the question under
consideration namely whether an assignee is entitled to file an action for infringement 4
pending the application before the Registrar to register him as the subsequent
proprietor of the registered trade mark. In other words the bar in the section
pertains/applies to an unregistered trade mark and not to a registered trade mark which
is sought to be protected by an assignee pending his registration as the proprietor
8. Section 28 (1) reads thus :-
28. Rights conferred by registration.--(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
In support of his contention that the suit is not maintainable at the instance
of the plaintiff Mr. Bookwalla relied upon the latter part of section 28 (1): "..and to obtain
relief in respect of infringement of the trade mark in the manner provided by this Act."
He submitted that under section 28 (1) it is only the registered proprietor who has the
exclusive right not merely to the use of the trade mark but also to obtain relief in respect
of infringement thereof in the manner provided by the Act. Section 2(v) defines
"registered proprietor", in relation to a trade mark to mean the person for the time being
entered in the register as proprietor of the trade mark.
9. The submission even if well founded would have force only up to a point. I
have later in this judgement held that the court is entitled to grant even the final relief in
an action for infringement instituted by an assignee of a registered trade mark prior to or
even pending an application under section 45 to register him as the proprietor of the
trade mark. I will however for the moment assume that the final relief against or in
respect of infringement can be granted only to the registered proprietor of the trade 5
mark. That however would 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 prior to or pending an application under section 45 to register his title to the
trade mark. The words "and to obtain relief" in the context of the section and the other
sections which I will refer to shortly, refers to the final relief. It does not refer to
interlocutory reliefs. This limitation in section 28 (1) is also subject to the discretion
granted to the court, Registrar or the Appellate Board under section 45 (2) which I will
now refer to.
10. In a case where the court is satisfied that the assignment is valid and an
application for bringing the assignee is made or where the court is satisfied that an
application will in all probability be made shortly and only the formality of the procedure
under section 45 remains to be completed there can be no difficulty whatsoever in
entertaining not merely the interlocutory applications but deciding the suit itself. This is
clear from section 45 which 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 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 6
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.
11. Sub-section (2) of section 45 contains two important features which militate
against Mr. Bookwalla's contention. Firstly section 45 does not contain an absolute bar
against the court recognizing or giving effect to an assignment or transmission in
respect whereof the person has not been registered as the proprietor of the registered
trade mark due to the pendency of the application under section 45. Depending upon
the facts of the case, nor does it contain a bar against the court recognising or giving
effect to an assignment or transmission in respect whereof an application under section
45 has not yet been made. Secondly the bar does not operate at the interlocutory stage
if the Plaintiff makes out even a prima-facie case of being entitled to be registered as
12. The first aspect is clear from sub-section (2) which provides that a
document or instrument of which no entry has been made in the register in accordance
with sub-section (1) shall not be admitted in evidence by the court in proof of title to the
trade mark by assignment or transmission unless the court "otherwise directs". The
section thus confers a discretion upon the Registrar or the Appellate Board or the court
as the case may be to direct otherwise to wit it confers discretion to admit in evidence a
document or instrument in respect of which no entry has been made in the register in
accordance with sub-section (1). Thus even the only consequence of such a document
or instrument, viz. that it shall not be admitted in evidence in proof of title to the trade 7
mark, is subject to the discretion of the Registrar or the Appellate Board or the court as
the case may be directing otherwise.
13. Indeed the exercise of this discretion would depend upon the facts and
circumstances of the case. It is neither possible nor desirable to enumerate exhaustively
the circumstances in which the discretion may be exercised.
If for instance the assignor confirms the assignment or does not object to
the assignment in any manner and an application under section 45 pursuant to and in
respect of the said assignment has been made and is pending before the Registrar or
the court is satisfied that it will be made and pursued diligently the court would readily
exercise its discretion in the plaintiffs favour.
14. Section 45 does not confer title to the trade marks assigned or acquired by
transmission. The registration granted by the Registrar under section 45 is proof of title
to the trade mark of the assignee or the person who acquires the same by transmission.
Thus a person who has acquired title to a trade mark by assignment or transmission
cannot be non-suited for want of title per se on the ground that the assignment or
transmission is not entered on the register. This is clear from the plain language of
section 45 (1). The opening words: "Where a person becomes entitled by assignment or
transmission to a registered trade mark ..." posit the acquisition of title thereto by
assignment or transmission. This is further clear from sub-section (1) which requires the
Registrar to register the title of a person who acquires the trade mark by assignment or
transmission "on proof of title". Thus the acquisition of title to a trade mark by
assignment or transmission precedes and is essential to an application under section
15. There is a distinction between an unregistered document not affecting the
property which is the subject matter thereof and such a document not being
inadmissible in evidence. It is important to note that section 45 does not provide that a
document of the nature referred to in sub- section (2) does not affect the trade mark
acquired by assignment or transmission. This is in contrast to section 49 of the
Registration Act which provides that no document required to be registered under
section 17 thereof or under the Transfer of Property Act shall "affect" any immovable
property comprised therein. Section 49 of the Registration Act reads as under :-
49. Effect of non-registration of documents required to be registered.--No document required by Section 17 1[or by any provision of the Transfer of Property Act, 1882 (4 of 1882),] to be registered shall--
(a) affect any immovable property comprised therein, or
(b) confer any power to adopt, or
(c) be received as evidence of any transaction affecting such property or conferring such power, unless it has been registered :
[Provided that an unregistered document affecting immovable property and required by this Act or the Transfer of Property Act, 1882 (4 of 1882), to be registered may be received as evidence of a contract in a suit for specific performance under CHAPTER II of the Specific Relief Act, 1877 (1 of 1877), [* * *]or as evidence of any collateral transaction not required to be effected by registered instrument.]
16. It is important to note from clauses (a) and (c) of section 49 of the
Registration Act the clear distinction between an unregistered document not affecting
property and an unregistered document not being receivable as evidence of the
transaction affecting such property. Whereas section 49 of the Registration Act imposes
a bar on both, section 45 of the Trade Marks Act imposes a bar only against the
document being admitted in evidence. It was obviously not necessary to provide any 9
exception in section 45 of the Trade Marks Act of the nature stipulated in the proviso to
section 49 of the Registration Act as section 45 of the former Act grants a discretion to
the court to receive a document in evidence even though in respect thereof no entry has
been made in the register in accordance with sub-section (1).
17. The second important aspect of section 45 is that the bar to receiving a
document of the nature referred to in section 45 (2) does not operate at the interlocutory
stage. It would operate only at the final hearing of the suit or proceeding before the
Registrar or the Appellate Board or the court as the case may be. This is evident from
the fact that the question of admitting a document in evidence does not arise at the
interlocutory stage but only at the final hearing. At the interlocutory stage the court or
tribunal is concerned only with the prima-facie validity and existence of the document
and not with the admissibility thereof.
18. Where the court is satisfied at the interlocutory stage prima-facie of the
validity of the assignment or the transmission and the intention of the parties acquiring
title to the trade mark thereby bringing themselves on the register it must decide the
application on merits. Where the court is of the view that despite a strong prima-facie
case in this regard it would require to be established at the trial then, at the highest,
pending the decision of the application under section 45 the decree may not be passed.
Such a situation can arise for instance where the assignment is denied or opposed on
any ground by the assignor. It may also arise where others challenge the plaintiffs
acquisition of the trade mark by transmission. In such cases it may be necessary to
implead the assignor or such other persons and also seek reliefs against them to
establish the assignment. The grant of interlocutory relief would naturally also depend 10
upon whether the plaintiff has made out a strong prima facie case even in respect of the
acquisition of the trade mark by assignment or transmission.
19. Such a procedure is not unknown to law. It has been followed where a suit
is filed by an executor or legatee pending the grant of probate or of letters of
administration. This is despite the fact that the bar under section 213(1) of the Indian
Succession Act is wider and more rigid than the bar under section 45 of the Trade
Marks Act. Section 213 of the Indian Succession Act reads as under :-
213. Right as executor or legatee when established.--(1) No right as executor or legatee can be established in any Court of Justice, unless a Court of competent jurisdiction in 1[India] has granted probate of the will under which the right is claimed, or has granted letters of administration with the will or with a copy of an authenticated copy of the will annexed."
20. In Ramniklal Amritlal Shah Vs.Bhupendra Impex Pvt. Ltd. & Ors. 2001(4)
LJSOFT17 = AIR 2001Bom224 the appeal was directed against an order of the learned
Single Judge dismissing the notice of motion. The appellant was the brother of one
Madhuben @ Mridulaben Amritlal Shah who had filed the suit invoking Section 44 of the
Transfer of Property Act and Section 4 of the Partition Act, 1893. The case was that the
suit property was a dwelling house in the occupation of an undivided family, that the
original defendant nos.1 to 7, outsiders to the family, had purchased the undivided
share of one Mrs.Sadguna Shah, a member of the family, and on that basis had entered
into occupation of the second floor of the suit property. This, according to the original
plaintiff, was illegal as the purchaser not being a member of the undivided family could
get no right of joint occupation by virtue of the second paragraph of Section 44 of the
Transfer of Property Act, unless he sues for partition and obtains a partition by metes
and bounds. Pending the suit a notice of motion was taken out by the original-plaintiff 11
for interim reliefs. While this notice of motion was pending, the original plaintiff died and
the appellant brought himself on the record claiming that he represented the estate of
the deceased plaintiff being the named executor under a will left by the deceased
plaintiff. He has also filed a petition for grant of probate of the said will.
The learned Single Judge dismissed the notice of motion on the ground
that the appellant/plaintiff could not be said to have a prima facie case in his favour in
view of Section 213 of the Indian Succession Act. It was submitted on behalf of the
respondents that a suit brought in the capacity of an executor or legatee without the
production of a probate is not maintainable. Consequently, it was also contended that in
such a suit no interlocutory proceedings can be adopted.
The Division Bench negated the submissions relying upon a series of
judgements of the Privy Council and of this court. The Division Bench drew a distinction
between laying claim as an executor or a legatee and establishing the right as a legatee
or an executor. The Division Bench held as under :-
"6. ..........................We are, therefore, of the view that section 213 is merely a bar to a person "establishing" his right as an executor or legatee in an action. This does not suggest that the said person cannot claim the capacity of executor or legatee so long as he is able to produce the probate certificate before the actual decree is passed. In other words, the bar is really one against the passing of a decree without a probate certificate and not the entertainment of the suit itself.
7. The next contention of Mr. Doctor is that, even presuming that the suit is maintainable without production of the probate certificate, the appellant in his capacity as executor could not have sought any interlocutory relief. This is the argument which seem to have appealed to the learned Single Judge. The contention is that to claim interim relief the appellant had to establish, apart from the merits of the case, his character as the executor; this he could not do without production of a probate certificate by reason of section 12
213, even prima facie. Consequently, no interim relief could have been granted. In our considered view, this argument is fallacious. A party seeking interim relief in a suit is not required to 'establish' his rights. Question of establishment of rights is relevant only for the purpose of the final decree in the suit and not at an interlocutory stage. In order to seek or get interlocutory relief, all that a party has to show is that the suit is not frivolous, that there is a probability of his succeeding in the suit, apart from balance of convenience, with which we are not concerned here. As far as the argument of Mr. Doctor goes, we focus our attention on the "establishment" of the appellant's character as an executor. In our view, it was not necessary for the appellant to 'establish' his character as executor at this stage. It was necessary to show, prima facie, that he was the executor. This could have been done by the production of the Will of the deceased-original plaintiff and, unless upon a perusal thereof the Court came to the conclusion that there was no way the appellant could claim to be an executor under the Will, that would prima facie show the character of the appellant as an executor under the Will. The stage for the appellant to establish his right as an executor under the Will is yet to come in the trial if the suit goes on and, under the law as laid down by the Supreme Court, the appellant would fail unless he produces the probate certificate at the time when the Court finally decides the suit. At all intermittent stages, therefore, the insistence upon establishing the appellant's right as an executor, was neither necessary nor required. It was sufficient that he showed that he had a prima facie right to that character.
9. We are, therefore, of the considered view that the learned Single Judge erred in holding that, because the final decree could not be passed in favour of the appellant without production of a probate certificate, no interlocutory order could also be passed."
21. The observations of the Division Bench and the approach adopted by it
apply with greater force in an action for infringement of a registered trade mark by a
person who has acquired title thereto by assignment or transmission. Section 213 of the
Indian Succession Act bars the establishment of a right as an executor or legatee in the
absence of a probate of the will under which the right is claimed or the grant of letters of
administration with the will or a copy thereof attached. Section 45 does not contain a bar 13
to the establishment of a right as a registered proprietor. It merely bars the receipt of the
document in evidence which may indeed have its own consequences. Further, this bar
is subject to the discretion of the court under section 45 (2) to order otherwise.
22. Mr. Bookwalla strongly relied upon section 53 in support of his
submission. However Section 53 of the Act must be read with section 2 (1) (r) (ii) which
read as under :-
"2 (r) ''permitted use'', in relation to a registered trade mark, means the use of trade mark--
(i) by a registered user of the trade mark in relation to goods or services--
(a) with which he is connected in the course of trade; and (b) in respect of which the trade mark remains registered for the time being; and
(c) for which he is registered as registered user; and (d) which complies with any conditions or limitations to which the registration of registered user is subject; or
(ii) by a person other than the registered proprietor and registered user in relation to goods or services--
(a) with which he is connected in the course of trade; and (b) in respect of which the trade mark remains registered for the time being; and
(c) by consent of such registered proprietor in a written agreement; and
(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject ;
53. No right of permitted user to take proceeding against infringement.--A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of Section 2 shall have no right to institute any proceeding for any infringement.
23. These provisions in fact militate against Mr. Bookwalla's submissions and
support the case of the plaintiff. Section 53 undoubtedly contains a bar against the
institution of any proceedings for infringement. The bar however is restricted to a person
referred to in sub-clause (ii) of clause (r) of sub-section (1) of Section 2. It is of vital
importance to note that sub-clause (ii) of clause (r) of sub-section (1) of Section 2 does
not include an assignee of a trade mark even if such assignee's application under
section 45 is still pending and has not on the date of the institution of the proceeding
been shown in the register as the proprietor of the assigned trade mark. Section 53
therefore makes it clear that where the legislature intended barring the institution of a
proceeding by a person it did so specifically. The fact that a person who has acquired
title to a registered trade mark by assignment or transmission but has not been shown
in the register as the proprietor thereof is not included in such provision establishes that
the legislature did not intend barring the institution of an action or proceeding by him.
24. Section 2 (1) (r) (ii) recognizes the use of a registered trade mark by
persons other than the registered proprietor and registered user in certain
circumstances and situations. Section 2 (1) (r) (ii) does not deal with persons who have
acquired a proprietary right in the trade mark by assignment or transmission. In the
present case the second 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 bona-
fide 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. Upon the registered proprietor entering into
an agreement of assignment of a trade mark the assignor may well not be interested in
doing anything further including involving himself in any litigation in respect of the trade
mark. In other words if Mr. Bookwalla's submission is accepted it would mean that even
where a trade mark is validly assigned and the assignor being no longer interested in
the trade mark having assigned it, may do nothing to protect the same the assignee can
do nothing to protect the trade mark which he has validly acquired, during the pendency
of an application under section 45. In any event the process in an application under
section 45 is bound to take some time. The submission if accepted would entitle the
world at large in the meantime to infringe the trade mark at will. There would be nothing
to prevent them from doing so although their act would be in violation of law. I find
nothing in the act which supports Mr. Bookwalla's submission.
27. A person who acquires a trade mark by transmission would suffer a
similar fate if Mr. Bookwalla's submission is accepted. It would take considerable time 16
between the acquisition of a trade mark by transmission and the person being shown as
the registered proprietor thereof pursuant to an application under section 45.
28. The view that I have taken finds support in two judgements both of learned
single judges of the Delhi High Court in the cases of M/s.Modi Threads Limited versus
M/s. Som Soot Gola Factory and Anr. 1993 PTC 32 (paragraph 6 and 7) and Sun
Pharmaceuticals Industries Limited versus Cipla 2009 (39) PTC 347 (paragraph 12 to
16) and in the various judgements referred to therein.
29. This brings me to the last provision viz. section 29 relied upon by Mr.
Bookwalla. Section 29 of the Act reads thus :-
29. Infringement of registered trade marks.--(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-- (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof ; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
Section 29 is of no assistance while considering this aspect of the matter.
It stipulates/indicates as to who is an infringer and the circumstances in which a
registered mark is considered to be infringed. It specifies the various acts which
constitute infringement. It is of no relevance on the question as to the right of an
assignee to maintain a suit for infringement pending an application under section 45.
30. I am however unable to accept Mr. Kane's submission that section 134 is
an answer to Mr. Bookwalla's submission. Section 134 is not relevant to this aspect of
the matter at all. Section 134 reads and under :-
134. Suit for infringement, etc. to be instituted before District Court.--(1) No suit--
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a ''District Court having jurisdiction'' shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.--For the purposes of sub-section (2), ''person'' includes the registered proprietor and the registered user.
31. Section 134 does not deal with the question as to who can file a suit for
infringement. It deals essentially with the question of jurisdiction and the court within the 19
territorial jurisdiction in which an action for infringement may be filed. The section
stipulates the forum for institution inter-alia of infringement proceedings. The section
does not deal with the rights of the person bringing the action.
32. The suit is therefore maintainable pending the application filed by the
plaintiff and defendant no. 2 under section 45.
33. Mr. Bookwalla then submitted that leave under Clause of 14 of the Letters
Patent cannot be granted as the application under section 45 was itself invalid and
consequently the registration of the plaintiff as the subsequent proprietor of the trade
mark after the filing of the suit was also illegal and the suit is liable therefore to be
dismissed on the ground of non-joinder of a necessary party namely Shaw Wallace
Distilleries Ltd. This submission was based on the premise that the application under
section 45 was signed only by the second defendant whereas it ought also to have been
signed by Shaw Wallace Distilleries Ltd. as it was a joint owner of the trade mark.
34. The submission was based on the terms of the said Deed of Assignment
dated 27.5. 2005. In support of this contention Mr. Bookwalla relied upon the fact that
defendant no. 2 and Shaw Wallace Distilleries Ltd were described: "together the
Assignor's" in the Deed of Assignment and upon recital (C) and clause 8 (d) of the Deed
of Assignment which read as under :-
(C) Certain Trade Marks were owned by Shaw Wallace & Company Ltd. which inadvertently assigned them to Shaw Wallace Distilleries Ltd.. Consequent to a supplementary deed of modification dated 26 May 2005 (the "Deed of Modification"), the ownership of these Trade Marks now vests in Shaw Wallace and Company Ltd.
8. The Assignors shall as soon as possible after the Commencement Date and at the expense of the Assignors : 20
(d) in the event that the Indian Trade Mark Registry does not accept the deed of modification that evidence that the trade marks which were inadvertently assigned to Shaw Wallace Distilleries Limited now vests in Shaw Wallace & Company Limited, and accordingly refuses to update the Indian Trade Mark Register to show Shaw Wallace & Company Limited has the proprietor of this trade marks subsequent to the deed of modification, the assignors shall as soon as possible after such refusal and at the expense of the assignors use their best endeavours to execute a Deed of Assignment of the trade marks which were inadvertently assigned by Shaw Wallace & Company Limited to Shaw Wallace Distilleries Limited assigning these trade marks back to Shaw Wallace & Company Limited."
The submission is that if defendant no. 2 and Shaw Wallace Distilleries
Ltd are the assignor's jointly, the application under section 45 having been made only by
defendant no. 2 is defective. He further submitted that the suit having been based on a
defective assignment is not maintainable.
35. The error in the submission arises from picking and choosing a recital and
a part of a clause rather than reading the document as a whole. In choosing only two
small portions out of the document Mr. Bookwalla proceeded on the basis that the suit
mark is covered by recital (C) to wit, the suit mark was one of the marks which was
inadvertently assigned by defendant no. 2 to Shaw Wallace Distilleries Ltd. A reading of
the document as a whole establishes that there were various marks some of which were
owned by defendant no. 2 and some by Shaw Wallace Distilleries Ltd. It is only some of
the marks which were owned by defendant no. 2 that were inadvertently assigned to
Shaw Wallace Distilleries Ltd. This is clear from the other recital's themselves which
read as under :-
(A) Certain Trade Marks were owned by Raj Breweries Ltd., which merged with Maharashtra Distilleries Limited vide Order of the High Court, Jabalpur, dated 27th Feb., 2002 & Order of the High Court of Judicature at Bombay, Mumbai, dated 12th Dec., 2001, with effect from 1st July, 2000. Consequent to the merger, Raj Breweries Ltd. does not exist and Maharashtra Distilleries Ltd. owns such Trade Marks. The name of Maharashtra Distilleries Ltd. was changed to Shaw Wallace Distilleries Ltd. with effect from 12 th May, 2003.
(B) Certain Trade Marks were owned by Bengal Distilleries Company Limited, which merged with Shaw Wallace & Company Ltd. with effect from January 01, 1966. Consequent to the merger, Bengal Distilleries Ltd. does not exist and Shaw Wallace & Company Ltd. owned such Trade Marks.
(D) The Assignors are the owners of the Assigned Rights (which term is defined below).
(E) By a licence agreement dated 20 December 2000 (the "Liquor License Agreement") Shaw Wallace & Company Ltd. has granted in favour of Shaw Wallace Distilleries Ltd. a license to use, inter alia, the trade marks relating to Haywards in relation to alcoholic liquor.
(F) At the request of Shaw Wallace & Company Ltd.,Shaw Wallace Distilleries Ltd. has entered into a supplementary agreement dated 27 May 2005 whereby the Liquor License Agreement is modified such that the provisions relating to Haywards trade marks consisting of or including the name HAYWARDS are deleted. Shaw Wallace Distilleries Ltd. has agreed to such modification inter alia, in consideration of the execution of the New Trade Mark License (as defined below).
(G) The Assignors wish to assign all their right, title and interest in and to the Assigned Rights to the Assignee for the consideration specified below.
(H) The Assignee has agreed to grant Shaw Wallace Distilleries Ltd. a royalty free licence unlimited in time to use certain of the Assigned Rights on the terms and conditions set out in the licence agreement between the Assignee and Shaw Wallace Distilleries Ltd. to be entered into on the same date as the date of this Agreement (the "New Trade Mark Licence").
(I) The New Trade Mark Licence records the termination of the trade mark licence agreement in relation to the Assigned Rights between Shaw Wallace & Company Limited and Shaw Wallace 22
Breweries Limited dated 21 May 2003 (the "SWBL Trade Mark Licence").
Clause 4 defines "Trade Marks" to mean :
"(f) all trade marks whether or not registered, and applications for registered trade marks consisting of or including the words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000;
(g) any trade marks which are confusingly similar to words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000; and
(h) any and all rights in or to the name words HAYWARDS and/or H2K including the names HAYWARDS 2000 and
owned by or applied for on behalf of the Assignors or any of their Affiliates from time to time anywhere in the world including those registered trade marks and applications for registered trade marks, details of which are set out in Schedule 1."
36. It is thus clear that all the trade marks which are the subject matter of the
Deed of Assignment were not inadvertently assigned by defendant number 2 to Shaw
Wallace Distilleries Ltd. There is no pleading to this effect in any event. It is not open
therefore to raise this contention which is a pure question of fact. Had this contention
been raised in the pleadings the plaintiff would have had an opportunity of meeting the
same. To allow the contention to be raised without a pleading would deprive the plaintiff
of this opportunity. The contention is therefore rejected.
37. The petition is therefore made absolute in terms of prayer (a). The costs
shall be costs in the cause.