Bawa Jagmohan Singh And Ors. vs The Registrar Of Trade Marks And ...
2001 Latest Caselaw 1679 Del

JUDGMENT

Mahmood Ali Khan, J.

1. Partnership firm M/s. Bawa Masala Company comprising of petitioner No. 1, respondents 3 to 5 and their father Bawa Sardar Singh as partners was proprietor of certain trade marks registered in their names. Bawa Sardar Singh died in 1993. Form TM-24 was filed for bringing on record the names of petitioner No. 1 and respondents 3 to 5 as registered proprietors of the trade mark. That application remained pending. In the meantime, pursuant to a settlement between petitioner No. 1 on the one hand and respondents 3 to 5 on the other, a MOU was executed by them on 17.8.2000 in accordance with which petitioner No. 1 retired from the partnership concern M/s. Bawa Masala Co. and he was allowed to carry on business of Bawa Masala Co. Pvt. Ltd. Both the partnership firm and the company were using the registered trade marks. Regarding user of trade mark, MOU provided that both the parties will continue to use the same trade mark for their business but the territories were distributed and allotted to them. Respondents 3 to 5 in June 2001 filed a Civil Suit at Tinsukhiya, Assam for grant of relief of injunction against the petitioner No. 1 for restraining him from selling his goods under the registered trade mark in question within the State of Assam. Ad-interim injunction prayed for was declined by the District Judge and the order was confirmed by the Assam High Court. The suit is still pending. Respondents 3 to 5 thereafter in 2001 submitted an application under Section 44 of Trade and Merchandise Marks Act (hereinafter referred to as the Act) read with Rule 71 of the Trade Mark and Merchandise Marks Rules (hereinafter referred to as the Rules) framed there under before the Registrar of Trade Marks for registering the trade mark in their name upon devolution of title on them under deed of dissolution. The Registrar of Trade Marks without issuing notice to petitioner No. 1 and calling upon him to show cause has granted their prayer. The name of petitioner No. 1 as such stands removed from the register of trade marks and respondents 3 to 5 now where the proprietors of the trade marks.

2. The petitioners were aggrieved and have filed this appeal under Section 109(2) of the Act. Along with the petition they submitted an application for stay of the operation of the order dated 13.8.2001 during the pendency of the appeal.

3. Respondents 3 to 5 contested the appeal as well as the application. They have filed reply to the application which is under consideration and have raised various objections to the grant of stay.

4. Inter alia it was contended that one appeal against 11 orders made by the Registrar of Trade Marks is not maintainable and that each of the order should have been appealed against by a separate appeal. The execution of the MOU has not been denied but it is argued that in accordance with it petitioner No. 1 was allowed to use the trade mark in certain territories described in the MOU. It is also argued that stay cannot be granted in favor of the petitioner particularly in view of the provisions of Section 15(c) of Specific Relief Act and also because the petitioner has committed breach of the terms of the MOU and has sold the goods in the territory of Assam which was not allotted to him. It was further argued that the Registrar had considered the deed to dissolution of partnership under which petitioner No. 1 had retired from the partnership and remaining partners respondents 3 to 5 continue to carry on business of the partnership firm. It was also contended that in terms of MOU the petitioner No. 1 was only assigned the right to use the registered trade marks and even petitioner had not asserted any right and ownership in the trade marks in the petition. Some other legal provisions like Rule 99 issues have also been cited and it is submitted that petitioner No. 1 was not entitled to the notice and also a hearing because copy of the dissolution deed of partnership was placed before the Registrar. Citing Ram Niwas through LRs v. Bano and Ors., ; Olga Tellis and Ors. v. Bombay Municipal Corporation and Ors., ; Harmohan Singh v. Gurbax Singh, 2001 PTC 629; The State of Karnataka and Ors. v. S. Venkataraj, AIR 1975 Karri. 119; and Agriculture Produce Market Committee v. Girdharbhai Ramjibhai Chhaniyara and Ors., ; it was argued that petitioner No. 1 was not entitled to an opportunity of hearing and the Registrar on the basis of the documents placed before him was competent to take a decision and has rightly taken the decision in the matter.

5. During the course of arguments, counsel for respondents 3 to 5 has fairly stated that petitioner No. 1 and respondents 3 to 5 are real brothers and that respondents 3 to 5 do not repudiate the MOU entered into between them and petitioner No. 1 regarding user of the registered trade marks. Therefore, they still have no objection if petitioner No. 1 continues to use the registered trade mark in terms of the MOU within Ihf, territorial limits of the provisions allotted to him for selling the goods etc.

6. Conversely, counsel for the petitioner has cited K.L. Rajakrishnan v. Parthas Textiles, 1997 PTC (17) 205(DB); Kohinoor Paints Faridabad (P) Ltd. v. Paramveer Singh and Anr., 1996 PTC (16) 69; Radha Kishan Khandelwal v. Assistant Registrar of Trade Marks and Ors., and Surjit Matham and Ors. v. Jagdish Matham and Ors., 2001 PTC 352 (Delhi) in support of his argument that petitioner No. 1 was entitled to be served with a notice and a reasonable opportunity of hearing before his name was removed from the register of trade marks on the application of respondents 3 to 5. He also referred to Rule 44 which provides for registration of assignment and transmissions. The proviso to this section states that where the validity of assignments or transmission is in dispute between the parties the Registrar may refuse to register the assignment and transmission until the rights of the parties have been determined by a competent court. According to him, respondents 3 to 5 had filed a civil suit of injunction against petitioner No. 1 in an Assam Court and there was a dispute between the parties and as such he had a right to be heard in the matter. He also controverter the arguments of the counsel for respondents 2 to 5 that Rule 99 of Rules was applicable as Form TM-24 was filed which is not submitted under this rule and applies only to the application under Section 57(1). He referred to the application submitted by the petitioner which showed that the application was filed under Section 44 and Rule 71. Their application was for entry and transmission and requires From TM-24 to be submitted which was in fact submitted in this case. He referred to various averments made in the petition which showed that he had claimed proprietorship of registered trade marks. Referring to the case law he stated that the principles of natural justice were required to be followed before the name of petitioner No. 1 was removed. However, counsel for the petitioner was silent as to the rights to petitioner No. 2 to file this appeal.

7. At this stage only a prima facie view may be taken. Petitioner No. 1 continued to be the proprietor of the registered trade mark and his name appeared in the register of trade marks from 1982. His name was removed by the order impugned in this appal. The order has been passed under Section 44 of the Act. It was passed on the basis of copy of the dissolution deed of the partnership by which petitioner No. 1 retired from the partnership. MOU was not placed before the Registrar. Petitioner No. 1 had a valuable right in the registered trade mark and he could have been deprived of this right only in accordance with the provisions of the Act. Petitioner No. 1 in accordance with the proviso to Section 44 prima facie deserves to be given an opportunity of hearing which has not been granted. Rule Audi Altenn Partem seems to have been violated by the Registrar in these proceedings.

8. The proprietor of a registered trade mark acquires certain rights in the trade mark which are prima facie different from a mere right to use the trade mark. Counsel for respondents 2 to 5 have submitted at the Bar that they are not opposed to the using of the registered trade mark in question by petitioner No. 1 within the limits of the territories allotted to him under the MOU. But they have not stated that other rights which accrued to the proprietor of the trade mark will also be available to the petitioner under the provisions of the Act.

9. There is prima facie case in favor of the grant of such a stay order. The petitioner will also suffer irreparable loss in case operation of the impugned order of the Registrar is not stayed as he would not be able to exercise the powers of proprietor a registered trade mark. On the other hand, respondents 3 to 5 who have no objection to the user of the registered trade mark by the petitioner No. 1 within the limits of territories allotted to him will not suffer any irreparable loss or injury if the stay is granted. The injury suffered by the petitioner may also not be compensated adequately by costs in case the order of the Registrar remains in operation.

10. For all the above reasons the operation of the order of the Registrar of Trade Mark dated 13.8.2001 is stayed during the tendency of this petition. (At the same time both the parties have admitted that they are bound by the terms of the MOU entered into between them. Therefore, stay granted in these proceedings will be read subject to the terms and conditions of MOU which have been agreed to between the parties and if will not permit the parties to violate the terms and conditions of the MOU dated 17.8.2000 and encroach upon each others territories.

With the above observations the application is disposed of.