Filatex-Vct Pvt Ltd vs The Registrar Of Trademarks
2023 Latest Caselaw 11566 Mad

                                                     1

                             5IN THE HIGH COURT OF JUDICATURE AT MADRAS
                                            DATED: 30.08.2023
                                                  CORAM
                              THE HONOURABLE MR.JUSTICE SENTHILKUMAR
                                            RAMAMOORTHY
                                          (T)CMA(TM)/63/2023
                                          (OA/3/2017/TM/CHN)

                  Filatex-VCT Pvt Ltd
                  Kochuveli Industrial Area,
                  Titanium P.O.,
                  Trivandrum, Kerala - 695021
                  (earlier known as Chacko Varghese V.C. Varghese,
                  Trading as Filatex, P.B. No. 6,
                  Titanium P.O., Industrial Area,
                  Trivandrum – 695021.                                    ... Appellant


                                                    -vs-

                  1.The Registrar of Trademarks
                    Trade Marks Registry
                    Chennai
                  2.Filatex India Limited
                    42, Community Centre,
                    New Friends Colony,
                    New Delhi - 110 065                                   ... Respondents


                  PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed
                  under Section 91 of the Trademarks Act, 1999, prays (i) to set aside the
                  impugned order dated 28th November 2016 passed by the
                  Respondent No.1 and to allow the interlocutory petition dated 30th
                  April 2013 and to allow the two TM-16's, both dated 5th February
https://www.mhc.tn.gov.in/judis
                                                          2

                  2009 filed by Appellant in Application No.721175 in Class 17 to amend
                  the name and address of the Appellant as Filatex -VCT Private
                  Limited and to amend in the counter statement the trading style of the
                  Appellant as Filatex – VCT Private Limited to allow the evidence in
                  support of application filed by the Applicant; (ii) stay the operation
                  and effect of the impugned order dated 28th November 2016 pending
                  final disposal of this appeal; and (iii) stay all further proceedings
                  before the Respondent No.1 in the matter of Application No.721175
                  and the in the matter of Opposition No. MAS-730498 pending final
                  disposal of this appeal .
                                  For Appellant     : Mr.K.Premchandar for
                                                      for M/s.Anand and Anand

                                  For Respondents   : Mr.R.Subramanian, CGSC, for R1
                                                      Mr.Arun C. Mohan for R2
                                                     **********

                                                    JUDGMENT

The appellant challenges an order dated 28.11.2016 by which

the request to amend the name of the applicant in opposition

proceedings was rejected.

2. Application No.721175 was filed by the partnership firm,

which was trading as M/s.Filatex, for registration of the mark

'FILATEX' in relation to rubber thread. The second respondent herein https://www.mhc.tn.gov.in/judis

opposed such registration by filing notice of opposition MAS - 730498.

After filing the counter statement in response thereto, on 11.11.2008,

the appellant filed Form TM-16 for amendment. This application was

rejected by the impugned order.

3. Learned counsel for the appellant has placed before me the

Memorandum of Association of “FILATEX – VCT Private Limited,

which provides that the company was incorporated inter alia to take

over the assets and liabilities of the partnership firm, M/s.Filatex. The

appellant asserts that the private limited company uses the mark

'FILATEX' after its incorporation and not the partnership firm.

4. On examining the impugned order, it is evident that the

Assistant Registrar of Trademarks recognized that Form TM-16 was

filed with supporting documents. In spite of noticing the same, the

application was rejected solely on the ground that it was made

belatedly about five years after the private limited company was

formed.

5. Learned counsel for the second respondent opposes the

appeal by pointing out that the appellant has not taken any steps to https://www.mhc.tn.gov.in/judis

amend the name of the applicant in Application No.721175.

6. The application filed by the appellant in Form TM-16 is

largely consequential to the transfer of assets (including the mark) and

liabilities of the partnership firm to the private limited company.

Therefore, such application should not have been rejected solely on

the ground of delay. Consequently, the impugned order is set aside.

7. As a corollary, the appellant is permitted to carry out the

amendment in the opposition proceedings. It is also open to the

appellant to file an appropriate application to amend the name of the

applicant in Application No.721175 and such application may be dealt

with in the manner known to law.

8. In the result, (T)CMA(TM) No.63 of 2023 is allowed on the

terms indicated above without any order as to costs.

                                                                                30.08.2023

                   Index                 : Yes/No

                   Internet              : Yes/No

                   Neutral Citation: Yes/No
https://www.mhc.tn.gov.in/judis


                                  SENTHILKUMAR RAMAMOORTHY, J

                                                               kal




                                               (T)CMA(TM)/63/2023
                                              (OA/3/2017/TM/CHN)




                                                        30.08.2023


https://www.mhc.tn.gov.in/judis