Dinesh Chandra Vaghani & Ors. vs Union Of India & Ors.
2010 Latest Caselaw 260 Del

         IN THE HIGH COURT OF DELHI AT NEW DELHI



                                    W.P.(C) No. 10633 of 2009


         DINESH CHANDRA VAGHANI & ORS.                 ..... Petitioners
                     Through: Mr. Hemant Singh with Mr. Sachin
                     Gupta and Ms. Pallavi Singh, Advocates.


                           versus


         UNION OF INDIA & ORS.                         ..... Respondents
                       Through: Mr. Shailen Bhatia with Ms. Amita
                       Kapur, Advocates for R-3 & R-4.

         CORAM:
         HON'BLE DR. JUSTICE S.MURALIDHAR

         1. Whether Reporters of local papers may be
              allowed to see the judgment?                       No
         2. To be referred to the Reporter or not?               Yes
         3. Whether the judgment should be reported in Digest?   Yes

                                       ORDER

19.01.2010

W.P.(C) No. 10633 of 2009 & CM No. 9493 of 2009 (for stay)

1. The challenge in this petition is to an order dated 1 st May 2009 passed by

the Intellectual Property Appellate Board („IPAB‟) allowing the application

MP No. 57 of 2007 filed by the Respondent No.3 Amit Arora for a direction

that the statement of case filed by the Petitioner M/s. Milton Plastics Ltd.

(„MPL‟) does not form part of the case file of the impugned rectification

application filed by MPL for removal of the trade mark MILTON registered

in favour of Respondent No.3 under No. 1198540 in class 11 from the

Register of Trade Marks under Section 57 of the Trade Marks Act, 1999

(„TM Act‟). By the said impugned order the IPAB also dismissed the

W.P.(C) No.10633 of 2009 page 1 of 12 Petitioner‟s application MP No. 57 of 2008 on the ground that since the

application filed by Respondent No.3 i.e. MP No. 57 of 2007 had been

allowed the Petitioner‟s application did not survive. Consequently, by the

impugned order the IPAB also dismissed the Petitioner‟s Original

Rectification Application ORA/143/06/TM/DEL as not maintainable.

2. The present petition has been filed by six Petitioners i.e. Dinesh Chandra

Vaghani, Kanaiyalal I. Vaghani, Nilesh I. Vaghani, Chirnajiv I. Vaghani,

Madhup B. Vaghani and M/s. Milton Plastics Ltd. arrayed as Petitioners 1 to

6 respectively. It is stated that Petitioners 1 to 5 had initially set up a

partnership firm under the name of M/s. Milton Plastics („MP‟) in 1997 and

had been carrying on the business of manufacturing and marketing domestic

containers, flask, water jugs, water bottles, tiffins, casseroles, apparatus for

filtration or purifying water, electric food warmers, toasters, mixers, irons,

hair dryers, sandwich makers, oven toasters, grills, juicers, LPG stoves etc.

under the trade mark and trade name MILTON. It is stated that a

registration certificate dated 13th August 1981 was issued under the erstwhile

Trade & Merchandise Marks Act, 1958 in respect of the mark MILTON in

favour of Petitioners 1 to 5 „trading as M/s. Milton Plastics.‟ It is stated that

on 22nd January 1998 a Memorandum of Understanding („MoU‟) was signed

between Petitioners 1 to 5 as partners of MP on one hand and Petitioners 1

to 5 as individuals on the other whereby the proprietary right and the

ownership of the trade mark MILTON and the MP logo was withdrawn from

the partnership firm MP unto Petitioners 1 to 5 in their individual capacity so

as to exclude any other persons who may join the partnership later from

claiming any proprietary right in the said mark and logo. By the same MoU W.P.(C) No.10633 of 2009 page 2 of 12 a licence was granted to MP to continue using the trade mark MILTON and

MP logo in relation to its goods and business.

3. It is stated that on 1st May 1992 the partnership firm MP was converted

into a limited company, MPL. The certificate of incorporation dated 1st May

1992 of MPL has been placed on record. It is stated that MPL thus became a

successor-in-interest of the erstwhile firm MP.

4. By an agreement dated 3rd May 1992, a supplementary agreement dated

3rd August 1993 and later by an agreement dated 29th November 1997,

Petitioners 1 to 5 granted a licence to Petitioner No.6 to continue marketing

the goods using the trade mark MILTON. It is stated that MPL has since

been marketing goods under the trade mark and trade name MILTON as a

licence user.

5. It is claimed that Petitioners 1 to 5 being the joint proprietors in terms of

Section 24 TM Act jointly have the statutory right to the exclusive use of the

trade mark MILTON. Consequent upon the above MoU, the Petitioners 1 to

5 filed an application in Form TM-23 under Section 45 of the TM Act on

10th May 1999 with the Registrar of Trade Marks for being registered as

transferees and subsequent proprietors of the trade mark.

6. The Petitioners claimed that they became aware of the adoption of the

mark MILTON by Respondent No.3 and Respondent No.4 M/s. Hydro

Valves, Delhi in respect of LPG gas stoves and water purifiers in September

2002. A lawyer‟s notice dated 16th September 2002 was issued to W.P.(C) No.10633 of 2009 page 3 of 12 Respondent No.3 by the Petitioners calling upon Respondents 3 and 4 to

desist from using the trade mark MILTON in relation to the aforementioned

goods. Within 15 days of receipt of the Petitioners‟ legal notice Respondents

3 and 4 filed civil Suit No.1580 of 2002 against the Petitioners in the civil

court at Tis Hazari, Delhi. The said suit is stated to be pending. On their part

the Petitioners filed civil Suit No. 1216 of 2003 against Respondents 3 and 4

in this Court for infringement. The said suit is also stated to be pending.

7. It is stated that through an application filed by the Respondents 3 and 4

for amendment of written statement in Suit No. 1216 of 2003 the Petitioners

learnt that Respondent No.3 had been issued the impugned registration

certificate dated 13th May 2003 in respect of the trade mark MILTON vide

registration certificate No. 1198540 in class 11. The Petitioners, claiming to

be aggrieved persons filed an application ORA 143/06/TM/DEL before the

IPAB under Section 57 of the Act read with Rule 2 of the Trade Marks

(Applications and Appeals to the IPAB) Rules, 2003 (hereinafter referred to

as the TMAA Rules) and Rule 3 of the Intellectual Property Appellate Board

(Procedure Rules) 2003 (hereinafter referred to as the IPAB Procedure

Rules). The Petitioners filed the rectification application, in two parts i.e.

Form 1 as well as Statement of Case with a supporting affidavit. It is

claimed that an inadvertent error had crept into Form 1 as well as in the

Statement of Case inasmuch as that in Form 1, MPL was shown as the sole

Petitioner whereas in the Statement of Case the names of the Petitioners 1 to

6 were shown.

8. On 30th April 2007, Respondents 3 and 4 filed MP No. 57 of 2007 seeking W.P.(C) No.10633 of 2009 page 4 of 12 directions from the IPAB that the Statement of Case filed by the Petitioners

does not form part of the case file and that the IPAB should deal with only

the case as set up in the Form 1. Respondents 3 and 4 also filed a reply to

Form 1 and not the Statement of Case.

9. In March 2008 the Petitioners filed a reply to MP No. 57 of 2007 and

simultaneously filed MP No. 57 of 2008. The prayer in the latter application

MP No. 57 of 2008 was for correcting the error in the array of parties in

Form 1 and to introduce certain paragraphs therein by way of such

amendment.

10. By the impugned order the IPAB allowed the application MP No. 57 of

2007 filed by Respondents 3 and 4 and consequently dismissed the

Petitioners‟ application MP No. 57 of 2008. The IPAB held that apart from

the discrepancies in Form 1, when compared with the Statement of Case

filed by the Petitioners, there could not be more than one applicant in an

application for rectification. Further Form 1 did not reveal how MPL could

be a party to the proceedings. The statement of case showed that the only

applicant was MPL and applicants 1 to 5 were its Directors. It was observed

by the IPAB that it had already held "in such matters only one Petitioner can

be a person aggrieved and the application can be filed only by one

applicant." It was held that the licencee‟s rights are traceable to the

registered proprietor and therefore there was no question of the licencee

becoming a co-applicant. It was observed that the registered proprietor could

protect his statutory rights independently and initiate rectification

proceedings. Consequently, MP No. 57 of 2007 was allowed and MP No. 57 W.P.(C) No.10633 of 2009 page 5 of 12 of 2008 was dismissed as not surviving. The rectification application was

also dismissed as being not maintainable.

11. This Court has heard the submissions of Mr. Hemant Singh, learned

counsel for the Petitioners and Mr. Shailen Bhatia, learned counsel for the

Respondents 3 and 4.

12. At the outset this Court must observe that the Respondent IPAB ought

not to have been impleaded as Respondent No.2 in this petition. An

authority whose order is under challenge in a writ petition cannot possibly

be made a party to the writ petition. However since the petition itself has

been finally heard, no order is being passed to strike off the IPAB from the

array of parties.

13. The first question that arises is whether the IPAB was right in its

understanding that an application for rectification could be filed by only one

person in terms of Section 57 of the Act.

14. Section 57(2) states as follows:

"Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit."

W.P.(C) No.10633 of 2009 page 6 of 12

15. Merely because the singular „person‟ is used in the above provision, it

cannot ipso facto mean that it does not include the plural. The word „person‟

is not defined separately under Section 2 of the TM Act. Nevertheless as

long as the context does not indicate otherwise, it is perfectly possible that

the word „person‟ would include „persons‟ as well.

16. There could be many contexts where more than one person could jointly

file an application under Section 57 of the TM Act. For instance, under

Section 24 (2) of the TM Act it is possible that more than one person is

interested in a trade mark and, therefore, such persons may be registered as

joint proprietors of the trade mark. In the Law of Trade Marks and Passing

off by P. Narayanan, Sixth Edition, Eastern Law House (2004) it is pointed

out that an application for registration of a trade mark could be made by

individuals who are partners on behalf of the firm and in the name of such

partners. Likewise, a Hindu Undivided Family („HUF‟) may make an

application in the name of its members as the HUF. Further it is pointed out

that under Section 3 (42) of the General Clauses Act, 1897 the word „person‟

includes any company or association or body of individuals, whether

incorporated or not. It is perfectly possible that even in terms of Section

24(2) where the mark is used or proposed to be used in relation of the goods

connected with the course of trade by two or more persons then they may all

apply for registration in their joint names. Therefore there are contexts

envisaged in the TM Act itself that make it possible for more than one

applicant to join in an application for rectification. Section 18 of the TM

Act which talks of application for registration envisages an application by

"any person claiming to be the proprietor of a trade mark." It does not mean, W.P.(C) No.10633 of 2009 page 7 of 12 therefore, that there cannot be more than one person to apply for

rectification.

17. There is nothing in the TMAA Rules or the IPAB Procedure Rules to

indicate that an application for rectification can be filed only by one person.

Interestingly Form 1 which is appended to the TM Applications and Appeals

Rules reads as under:

"FORM 1

Application for the removal of trade mark from the register or rectification of the register under section 47/57/125 of the Trade Marks Act, 1999

(To be filed in triplicate along with statement of case in triplicate and accompanied by as many copies of each of them as there are registered users under the registration)

In the matter of Trade Mark No. ...............registered in the name of .......................in class.........................I/We...........hereby apply that the entry in the register in respect of the above mentioned Trade Mark may be (removed) (rectified) in the following manner:-

..................................................................... The ground of my/our application are as follows:- .................................................................... No action concerning the trade mark in question is pending in any court or before Registrar of Trade Marks.

All communications relating to this application may be sent to the following address in India:-

W.P.(C) No.10633 of 2009 page 8 of 12 ..................................................................... ..................................................................... Dated this......................day of.................. Place......................

..............Signature of the Applicant (Full Name of the Signatory)"

(emphasis supplied)

The use of the words „I/We‟ and „my/our‟ in Form I indicates that it is

perfectly possible for more than one person to be an applicant in terms of

Form 1. Rule 3 of the IPAB Procedure Rules requires the application to be

filed "by an aggrieved person". In the context in which the said word is

used in Rule 3 it would include „persons‟ as well.

18. Consequently, this Court is unable to concur with the view expressed by

the IPAB that an application for rectification can be filed only by an

individual applicant and that more than one applicant cannot join in the

making of such an application for rectification. However it is clarified that

if the IPAB were to require each such applicant to pay a separate fee, that by

itself, cannot be said to be unjustified. The IPAB may issue necessary

instructions to clarify the above legal position so that hereinafter no

application for rectification by an applicant is rejected only because it has

been filed by more than one person.

19. The above position in the law does not imply that every person who has

joined in an application for registration or rectification is, by that fact alone,

entitled to be granted registration or the prayer for rectification. It is for the

W.P.(C) No.10633 of 2009 page 9 of 12 individuals who have joined in the application to satisfy the IPAB in that

regard. All that this Court has explained is that the mere fact that more than

one person has joined in making an application for rectification will not by

itself constitute a ground for rejection of such application.

20. Turning to the facts of the present case, the sequence of events shows

that the registration was initially granted to Petitioners 1 to 5 „trading as

MP". Thereafter, under the MoU, the proprietorship in the trade mark was

transferred from the firm MP to the five individual partners i.e. Petitioners 1

to 5 who in turn gave a licence to the firm MP. Consequent upon the MoU

dated 22nd January 1988 form TM-23 appears to have been submitted for

entering the names of Petitioners 1 to 5 as subsequent proprietors of the

trade mark in question. According to the Petitioners no decision on Form

TM-23 has been taken by the Registrar of Trade Marks. Learned counsel for

the Respondents points out that if the Register of Trade Mark has not yet

been corrected to note the transfer of the proprietorship in the mark from the

firm MP to the individual partners i.e. Petitioners 1 to 5, then the locus of the

Petitioners 1 to 5 or even the Petitioner No.6 MPL to seek rectification

would itself be in doubt.

21. This Court does not wish to adjudicate on this question since in the

considered view of this Court it is now for the IPAB to take re-examine the

matter. With this Court not agreeing with the IPAB on the reasons given by

it in the impugned order for rejecting the rectification application, it

becomes necessary for the IPAB to once again consider the application MP

No. 57 of 2007 and MP No. 57 of 2008 as well as the Original Rectification W.P.(C) No.10633 of 2009 page 10 of 12 Application ORA No. 143/06/TM/DEL afresh. The IPAB will take into

account the decision, if any, by the Registrar of Trade Marks on Form TM-

23 submitted by Petitioners 1 to 5. If no decision has been taken as yet, a

direction is issued to the Registrar of Trade Marks to take a decision thereon

within a period of four weeks from today. The consequence of the decision

of the Registrar of Trade Marks on TM-23 will be for the IPAB to consider.

Further the IPAB will also consider the effect of the conversion of the firm

M/s. MP into the company M/s. MPL and the consequent transfer of the

rights of MP as licencee of the trade mark to M/s. MPL. The documents

placed on record by the Petitioners in the present proceedings, if not already

produced before the IPAB, are permitted to be produced by it before the

IPAB for that purpose.

22. Learned counsel for Respondents 3 and 4 pointed out that the power of

attorney executed in favour of Petitioner No.5, a copy of which has been

produced, has been executed only by Petitioners 1, 2 and 3 and not by

Petitioner No.4. Learned counsel for the Petitioners states that there is a

separate power of attorney executed by Petitioner No.4 in favour of

Petitioner No.5. Copies of both sets of power of attorneys are permitted to be

produced by the Petitioners before the IPAB for its appreciation.

23. This Court is, therefore, not deciding the merits of either MP No. 57 of

2007 or MP No. 57 of 2008. It is for the IPAB to decide both applications

afresh. Consequently, the impugned order is set aside. The two applications,

MP No. 57 of 2007 filed by Respondents 3 and 4 and MP No. 57 of 2008

filed by the Petitioners as well as the Original Rectification Application W.P.(C) No.10633 of 2009 page 11 of 12 ORA No. 143/06/TM/DEL shall stand revived and will be listed now before

the IPAB on 10th March 2010.

24. The writ petition is allowed in the above terms.

25. A certified copy of this order be delivered to the Registrar of Trade

Marks as well as the IPAB within one week.

26. A copy of this order be given dasti to the learned counsel for the parties.

                                                       S. MURALIDHAR, J
JANUARY 19, 2010
dn




W.P.(C) No.10633 of 2009                                             page 12 of 12