# Spartan Trade Mark Dispute: How a 25-Year Collaboration Became a Battle for Brand Ownership — Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd.
---
## Introduction
The case of *Hardie Trading Ltd. and Another v. Addisons Paint and Chemicals Ltd.*, decided by the Supreme Court of India on September 12, 2003, is a landmark judgment in the field of trade mark law that touches upon some of the most fundamental yet contested questions in intellectual property jurisprudence — what constitutes "use" of a trade mark, when can a registered trade mark be removed from the register for non-use, what are "special circumstances" that excuse such non-use, and critically, whether a former licensee or agent can claim ownership over a trade mark that was always the property of the original proprietor. The case has its roots in a collaboration that began in 1946 between an Australian company and an Indian manufacturer, lasted for over two decades, and then descended into a bitter legal battle spanning nearly three decades across multiple courts in India. The Supreme Court, in this judgment delivered by Justice Ruma Pal, decisively settled the law on each of these issues in favour of the original proprietor, Hardie, and firmly rejected Addisons' attempt to appropriate trade marks that had always belonged to Hardie. The case is a masterclass in trade mark law and serves as an important reminder that a licensee or agent who uses a trade mark on behalf of its principal cannot, by that mere use, claim proprietorship of the mark, however long the arrangement may have lasted.
---
## Factual and Procedural Background
The story of this dispute begins in 1926 and 1927, when a company called James Hardie and Company Private Ltd. — the predecessor in interest of the first appellant, referred to throughout as "Hardie" — obtained registration of trade marks consisting of the words "Spartan" and "Spartan Velox" and a device depicting the rear view of the upper body of a helmeted warrior carrying a shield and spear, referred to as the "Hardie device," in Australia and New Zealand in respect of paints, lacquers, and other surface coatings. These registrations have continued without interruption till today. As far back as 1940, Hardie also took steps to register the words "Spartan" and "Spartan Velax" in India. The words were entered in the Register of Trade Marks at Calcutta in Hardie's name, and the registration was valid for what was then undivided India and other South Asian countries.
On November 6, 1946, Hardie entered into a collaboration agreement with the respondent, Addisons Paint and Chemicals Ltd., referred to as "Addisons," for a period of 20 years. Under this agreement, Addisons was to be Hardie's "Chief Agent" in India and other named territories for selling surface coatings supplied by Hardie. The agreement also envisaged Addisons being the registered user of the trade marks during the period of the agreement and also the setting up of a factory by Addisons at Madras to manufacture the surface coatings according to Hardie's formulae. Addisons undertook that all formulae and technical information supplied to it by Hardie would be treated as strictly confidential. Pursuant to this collaboration agreement, between 1946 and 1949, Hardie's products were marketed in India through Addisons under Hardie's registered trade marks and device. By 1948, Addisons had set up its own factory at Chennai for manufacturing paints, lacquers, and other surface coatings with technical know-how supplied by Hardie, and the products were then sold by Addisons under Hardie's trade mark and device, for which Addisons paid Hardie royalty at agreed rates.
A formal registered user agreement between Hardie and Addisons was executed on July 11, 1963. This agreement contained strict quality supervision clauses and specifically provided that the trade marks shall not be used in conjunction with or in close juxtaposition to any other trade mark and shall at all times be so described as to clearly indicate that they are the trade marks of Hardie and are being used by Addisons only by way of permitted use. The registered user agreement also gave Addisons an option to acquire Hardie's rights in the trade marks for a consideration calculated on the basis of the royalties payable for three years. The registered user agreement was initially for a period of three years and was operative up to August 31, 1968.
In 1967, Hardie had agreed to assign its rights in the trade marks to Addisons for a sum payable in pound sterling. The Reserve Bank of India allegedly refused permission to Addisons to remit the amount. Whatever the reason, the consideration was not paid and the assignment did not go through. In anticipation of the assignment, the registered user agreement had been cancelled on August 31, 1968. However, since the consideration was not paid and the assignment fell through, Hardie requested Addisons to discontinue the use of Hardie's trade marks. After correspondence between the parties, Hardie allowed Addisons to continue using the trade marks and device till December 1971.
On November 3, 1971, Addisons applied for registration of a device consisting of a frontal view of a standing helmeted warrior holding a shield and spear — a different warrior device from Hardie's rear-view warrior. On November 11, 1971, Addisons informed Hardie that with effect from December 1, 1971, it would discontinue the use of Hardie's trade marks and had made arrangements to market its products under its own brand name. This was followed by several newspaper advertisements by Addisons publicly announcing that its products would no longer be sold under the old trade marks but under the brand name "Addisons" with the pictorial representation of the standing warrior. On December 6, 1971, Hardie itself applied for registration of the composite marks of "Spartan" and the Hardie device in respect of surface coatings, but this application was withdrawn on April 26, 1974.
In November 1976, Addisons obtained registration of its standing warrior device. In the same year, it filed three applications before the Registrar of Trade Marks at Mumbai for registration of Hardie's actual trade marks — the words "Spartan" and "Spartan Velox." These applications were rejected on the ground of identity and deceptive similarity with Hardie's already registered trade marks. Between 1972 and 1977, negotiations took place between Hardie and the second appellant, Hansa Paints and Chemicals, referred to as "Hansa," for appointing Hansa as the registered user of Hardie's trade marks in India. A registered user agreement was ultimately executed between Hardie and Hansa on March 31, 1977.
About two months after this, on May 30, 1977, Addisons applied in Calcutta for rectification of the Register of Trade Marks by seeking deletion of Hardie's registered trade marks under Section 46(1) of the Trade and Merchandise Marks Act, 1958, on the ground of non-use for a continuous period of five years or more. On November 18, 1977, Addisons filed two more applications for registration of Hardie's actual device — the rear-view warrior — along with three additional applications for registration of the word "Spartan" and "Spartan Velox" and the device in Class 2 and Class 3.
In November 1978, Hardie and Hansa filed two suits — Suit Nos. 835 and 836 of 1978 — in the Calcutta High Court, seeking an injunction restraining Addisons from dealing in paints and other surface coatings under Hardie's trade marks or device. Interlocutory applications were filed which were disposed of by a consent order on February 22, 1979. The consent order allowed Hardie and Hansa to continue to use Hardie's registered trade marks and device, and allowed Addisons to use its own standing warrior device, until the disposal of the suits. Importantly, Addisons also voluntarily undertook to the court that it would not use the mark "Spartan" or Hardie's device of the warrior-rear until the disposal of the suit. Those suits are still pending.
In December 1979, Addisons filed a civil suit in the Madras High Court against Hansa, seeking an injunction restraining Hansa from selling paints in containers identical or deceptively similar to Hardie's trade marks. The rectification application filed by Addisons before the Joint Registrar of Trade Marks at Calcutta was allowed by order dated September 12, 1985, resulting in Hardie's trade marks being expunged from the Register of Trade Marks. Both Hardie and Hansa appealed to the Calcutta High Court before a learned Single Judge. The appeal was dismissed on July 6, 1990, and on a further appeal the Division Bench confirmed the Single Judge's order on August 22, 1997. This decision of the Division Bench became the subject matter of SLP No. 206 of 1998 before the Supreme Court.
Separately, Addisons applied before the Madras Registrar for registration of Hardie's device in its own name. On June 19, 1989, the Assistant Registrar at Madras allowed Addisons' application for registration of Hardie's device. Appeals preferred before the Madras High Court were dismissed by a learned Single Judge and, before the Division Bench, there was a difference of opinion. The Third Judge sided with the minority and the majority decision against Hardie became the subject matter of Civil Appeals Nos. 5307 to 5311 of 1993. Further, on June 2, 1992, the Registrar at Madras allowed Addisons' applications for registration of the words "Spartan" and "Spartan Velox." This was challenged in Civil Appeal Nos. 5312 and 12A-E of 1993. When the Supreme Court granted leave in October 1993, it directed status quo to be maintained, and that status quo continued operative throughout.
---
## The Dispute
The dispute before the Supreme Court involved three sets of closely connected questions. The first was whether Hardie's trade marks — the words "Spartan" and "Spartan Velox" registered in India since 1946 — could be removed from the Register of Trade Marks on the ground of non-use for a continuous period of five years or more under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958. The second was whether Addisons was entitled to registration of Hardie's warrior device in its own name, given the history of the collaboration. The third was whether the Madras Registrar's grant of registration of the words "Spartan" and "Spartan Velox" in Addisons' name could be sustained once the question of Hardie's marks being on the Register was resolved. Running through all three questions were deeper issues — the meaning of "use" of a trade mark, the role of "special circumstances" as a defence against non-use, the significance of a licensee or agent using a trade mark on behalf of the proprietor, and the equitable considerations that arise when a former agent attempts to appropriate the principal's intellectual property.
---
## Reasoning and Analysis of the Judge
**On who qualifies as a "person aggrieved" under Section 46**, Justice Ruma Pal drew an important distinction that had been missed by the courts below. Sections 46, 56, and 69 of the Trade and Merchandise Marks Act, 1958 all use the phrase "person aggrieved," but the phrase carries a different meaning in each context. Under Section 56, which deals with situations where the initial registration was wrongly made — such as a wrong entry, an entry made without sufficient cause, or absence of an entry — the interest of the public in maintaining a pure register justifies a wider interpretation of "person aggrieved." For this broader purpose, the House of Lords in *In re Powell's Trade Mark*, (1894) 11 RPC 4, had held that anyone in the same trade as the registered proprietor whose legal rights might be limited by the existence of the registration would have locus standi. However, for an application under Section 46, which is based not on any public mischief arising from a wrongful entry but purely on subsequent non-use of a validly registered mark, a stricter test must apply. The applicant must show that in some practical, non-fanciful sense it might be damaged or injured if the trade mark is allowed to stand on the Register, and must show "something approaching a sufficient or proper reason" for seeking expungement. Mere antagonism toward the registered proprietor is not enough. Justice Ruma Pal found that the courts below had erred in applying the broader Powell's test to what was a Section 46 application, but did not decide the issue afresh since the appellants had pressed the case primarily on the second and third aspects of Section 46 — non-use and special circumstances.
**On the meaning of "use" of a trade mark under Section 46(1)(b)**, the central question was whether "use" necessarily required physical sale of goods bearing the trade mark, or whether it encompassed something broader. The Joint Registrar, the Single Judge, and the Division Bench of the Calcutta High Court had all proceeded on the basis that "use" meant use of the trade mark on goods in respect of which the trade mark was registered — that is, actual sale of goods bearing the mark. Since neither Hardie nor Hansa had sold any goods bearing the trade mark during the relevant period of April 30, 1972 to April 30, 1977, they concluded there was non-use.
Justice Ruma Pal disagreed. She examined Section 2(2)(b) of the Trade and Merchandise Marks Act, 1958, which defines "use in relation to goods" to mean use of the mark "upon, or in any physical or in any other relation whatsoever, to such goods." The words "any" and "whatsoever" qualifying "other relation" give the definition a significantly broader scope than mere physical use or sale. Referring to *Hermes Trade Mark*, (1972) RPC 425, Justice Ruma Pal noted that in an English case involving an identical statutory formulation, the court had held that "other relation" covered use of the mark in advertisements, invoices, orders, and so on, and that "use in the course of trade" was wide enough to embrace the steps necessary for the production of goods as well as the actual placing of them on the market. The court in *Hermes* had found that the insertion of advertisements and placing of orders for parts during the relevant period, even without actual sale, constituted sufficient use.
An even more recent example was *Bon Matin Trade Mark*, (1989) RPC 536, where a French manufacturer's trade mark registered in the United Kingdom in 1979 was sought to be removed in 1984 on the ground of five years' non-use. The only use prior to the application was the issue of price lists and promotional literature on two occasions, and the first sale of goods did not take place until three years after a distributor was eventually found. The English court held that the proprietor's genuine and sustained efforts to establish a market in the United Kingdom constituted sufficient use. Justice Ruma Pal found that the Indian statute's definition, with the additional words "any" and "whatsoever," gave an even wider meaning than its English counterpart, and concluded that the word "use" in Section 46(1) may encompass actions other than actual sale.
**On whether an intention to abandon is a necessary part of non-use**, Justice Ruma Pal held that the courts below had committed a fundamental error by conflating two distinct legal concepts. Non-use under Section 46(1)(b) is not simply a matter of counting five years of inactivity; it requires that the non-use reflects a lack of bona fide use, which necessarily involves an examination of the proprietor's intention. The intention to abandon the trade mark is a necessary component of the non-use that justifies removal. This was recognised as early as 1884 by Chitty J. in *Mouson & Co. v. Boehm*, 26 Ch.D. 398, where the owner of a trade mark for soap who had not actively sold the soap for several years was nevertheless held not to have abandoned the mark because he had retained the mark, had not broken the moulds used to make goods bearing the mark, and had continued sending price lists. Chitty J. held that there was no absolute non-use for any sufficient time, taken in connection with all the circumstances, to show an intention to abandon.
The same principle was affirmed by the United States Supreme Court in 1911 in *Baglin v. Cusenior Co.*, 221 US 580, where the court held that the loss of trade mark rights by abandonment requires a finding of intent to abandon, and that while intent may be inferred from facts, the facts must be adequate to support the finding. Justice Ruma Pal also cited *American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another*, MANU/SC/0204/1985 : AIR 1986 SC 137, where the Supreme Court of India had held that both the intention of the proprietor not to use the trade mark at the time of registration and the actual non-use subsequent thereto had to be proved to justify removal under Section 46(1)(a). The court in that case had found that even though goods had not been sold during the alleged period of non-use, the proprietor's steps to enter into a collaboration agreement, obtain licences, and procure samples were sufficient to negate the allegation of non-use.
Justice Ruma Pal further clarified that the courts below had wrongly read Section 46(3) — which provides that an applicant cannot rely on non-use which is shown to be due to special circumstances in the trade — as if the only way to negate non-use was by proving special circumstances. She held that there is a clear distinction between the "intention to abandon" which forms part of the "no bona fide use" concept under Section 46(1), and the "intention to use" under Section 46(3) which is a separate defence inferred from special circumstances. The proprietor can defeat an application for rectification either by showing it had no intention to abandon the mark or, alternatively, by proving that special circumstances existed that excuse the non-use. Both are independent avenues of defence, not a single cumulative condition.
Applying these principles to the evidence on record, Justice Ruma Pal found that from as early as October 6, 1971, before the relevant period even began, Hardie and Hansa were in active negotiations for a registered user agreement under which Hansa would in effect do what Addisons had been doing. The correspondence showed several meetings, a draft registered user agreement prepared by February 6, 1973, and final approval by Hardie given by letter dated October 15, 1973. The delay in executing the agreement was caused by three hurdles — first, the need to give Addisons one month's notice to cease using the trade marks, which expired on December 1, 1971; second, a lack of communication between Hardie's attorneys and Hansa; and third, the refusal of the Reserve Bank of India in 1976 to approve payment of royalty in Australian dollars under Section 28 of the Foreign Exchange (Regulation) Act, 1973. On November 26, 1976, Hardie's attorneys advised that pursuing the royalty payment route would be futile and recommended revising the agreement. The original draft was revised and the registered user agreement was finally executed on March 31, 1977 — within the relevant five-year period. This evidence, which was not disbelieved by any of the courts below, clearly negated any intention on Hardie's part to abandon the trade marks. There was therefore no "absolute non-user" of the trade marks during the relevant period.
**On special circumstances**, quite apart from the absence of any intention to abandon, Justice Ruma Pal also found that the courts below had erred in rejecting Hardie's plea of special circumstances under Section 46(3). Hardie had placed on record the Import Trade Control Policy for April 1972 to March 1974 and April 1974 to March 1975, which showed that paints, distempers, varnishes, and lacquers could only be imported by actual users — that is, manufacturers or producers of paints and lacquers in India. Since Hardie had no factory in India, it could not import its goods into the country. Even actual users who did import paints for their own use were required to use the imported goods only for producing goods specified for export, thereby keeping the domestic market for domestic producers.
The Joint Registrar had rejected this defence on the ground that the non-use was due to considerations of Hardie's own business interests and not to circumstances affecting the trade in general. The Single Judge had held that the reasons were "economic, commercial and other factors which were applicable only to the appellants." The Division Bench focused on a paragraph in an affidavit by one Andrew Buttress of Hardie, where it was stated that even assuming there was no import restriction, it was not economically possible for Hardie to put more goods on the market immediately. The Division Bench found that economic viability or market conditions was outside the concept of special circumstances.
Justice Ruma Pal rejected all three findings. She relied on *Aktiebolaget Manus v. R.J. Fullwood and Bland, Ltd.*, (1949) 66 RPC 71, where the English court had held that prohibitive tariffs that were practically effective to keep out foreign-manufactured machines constituted special circumstances. This case was remarkably similar in its facts — a Swedish company's milking machines had been imported through an agent, the import stopped, the agent claimed the trade mark as its own, and the question was whether the non-use by the Swedish company was justified. The answer was yes, because special circumstances prevailed. Justice Ruma Pal also cited the observation of Chitty J. in *Mouson & Co. v. Boehm* that a man who has a trade mark may properly have regard to the state of the market and the demand for goods, and that it would be absurd to suppose he lost his trade mark by not putting more goods in the market when it was glutted. She further referred to *BALI Trade Mark (Rectification Ch.D.)*, (1966) RPC 387, where Justice Ungoed Thomas had held that what had to be considered was not merely the existence of an absolute prohibition to import but the existence of conditions making impracticable the ordinary usages of international trade, and that a trade mark must be understood and applied in a business sense. The House of Lords had subsequently affirmed this decision in *Berlei (U.K.) Ltd. v. Bali Brassiere Co., Inc.*, (1969) 2 All ER 812. This view had been accepted as good law in India by the Calcutta High Court in *A.J. Vulcan v. V.S. Palanichamy*, AIR 1969 Cal 43, and in *Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Others*, MANU/WB/0158/1988.
Justice Ruma Pal held that economic impracticability amounts to special circumstances. The import trade control policy created conditions that were not peculiar to Hardie alone but were generally applicable to all foreign manufacturers of paints and lacquers. It was not Hardie's personal commercial choice that kept it from the market — the regulatory environment made it impossible as a practical business matter for Hardie to operate in India without first establishing a factory, which would have required an enormous investment.
**On the critical factual point about Addisons' use of the trade marks**, Justice Ruma Pal emphasised a point of the utmost legal significance. Between 1946 and 1971, Addisons had been using Hardie's trade marks and device, but it had done so first as Hardie's chief agent under the collaboration agreement and then as the registered user under the registered user agreement. Under Section 48(2) of the Trade and Merchandise Marks Act, 1958, the permitted use of a trade mark by a registered user is deemed to be use by the proprietor thereof, and is deemed not to be use by the registered user. This statutory fiction meant that for all purposes under Section 46, Addisons' use of the trade marks from 1946 to 1971 was legally treated as Hardie's use, not Addisons' use. Addisons had therefore never "used" the trade marks on its own account at any time. This was reinforced by the Supreme Court's own earlier decision in *Cycle Corporation of India Ltd. v. T.I. Raleigh Industries Pvt. Ltd.*, MANU/SC/0886/1996 : AIR 1996 SC 3295.
After 1971, Addisons had publicly disassociated itself from the marks through newspaper advertisements and had not attempted to use the trade marks or device in any manner. In fact, Addisons had itself admitted in the written statements filed in the infringement suits pending in Calcutta that it had not used the trade marks from 1963 to 1977. Moreover, under the consent order dated February 22, 1979 passed by the Calcutta High Court, Addisons had voluntarily undertaken that it would not use the mark "Spartan" or Hardie's warrior device until the disposal of the suit, and had reiterated this undertaking on April 30, 1982. The suit was still pending. There was therefore no use by Addisons of the marks on its own account either before or after 1971.
**On Addisons' claim to register Hardie's device in its own name**, Justice Ruma Pal found that the Madras High Court had committed several serious errors. The High Court had proceeded on the erroneous premise that once the objections of Hardie and Hansa were overruled, Addisons' application for registration would follow automatically. It had also held that Hansa's use of the device subsequent to the 1979 consent order was "by brute use in controversial circumstances" and could not be treated as bona fide use. Justice Ruma Pal found both these conclusions to be fundamentally wrong. First, an application for registration under Section 18 of the Act requires independent scrutiny. The applicant — here Addisons — had to affirmatively prove that it was the proprietor of the device and that it had used or had a bona fide intention to use the device. Merely defeating the opponent's objections does not entitle the applicant to registration. Second, Hansa's use of the device from September 1979 onwards was expressly sanctioned by the consent order, and it was perverse to describe a use authorised by a court order as "brute use in controversial circumstances." Third, there was no dispute that the device was invented by Hardie or its predecessor prior to 1926 and had been registered in Hardie's name in Australia and New Zealand continuously thereafter. Hardie had also sold products in India under the device between 1946 and 1949. The principle that the manufacturer who is the first to use a device as a trade mark can alone claim property over it as a trade mark was affirmed by reference to P. Narayanan's *Law of Trade Marks (Trade Marks Act 1999) and Passing Off*, 5th Edition, page 34.
Justice Ruma Pal agreed with the dissenting judgment of Swamidurai J. in the Madras High Court that Hardie had manufactured goods and was the first to market them under its registered trade mark and device in India, and that the consent order had been correctly construed. She further noted that had the Court upheld Addisons' claim even on other grounds, this would have been an appropriate case for the Registrar to exercise his discretion under Section 18 to reject Addisons' application — because Addisons had not only failed to adduce positive proof of any intention to use the device but had actually consciously and publicly abandoned it in 1971. When Addisons applied for registration of the device in December 1977, it had been seven years since that conscious abandonment and there was no evidence of any steps taken in between to use the device. Moreover, Hansa's continued use of the device from 1979 onwards for so many years had made the device distinctive of Hansa's products, and allowing registration in Addisons' name would deceive the public.
**On the registration of the words "Spartan" and "Spartan Velox" in Addisons' name by the Madras Registrar**, Justice Ruma Pal disposed of this set of appeals on a short but conclusive ground. Since the Supreme Court had held that Hardie's trade marks could not have been removed from the Register, and since those registrations continued in Hardie's name, the question of registering identical marks in Addisons' name simply could not arise. There was no plea of bona fide concurrent use under Section 12 of the Act, and the Madras Registrar's order of June 2, 1992 allowing Addisons' application was accordingly set aside.
---
## Final Decision of the Court
The Supreme Court allowed all the appeals. In SLP (C) No. 206 of 1998, the decisions impugned — the orders of the Joint Registrar of Trade Marks at Calcutta, the Single Judge, and the Division Bench of the Calcutta High Court — were set aside, and Hardie's trade marks were restored to the Register of Trade Marks. In Civil Appeal Nos. 5307-5311 of 1993, the decision of the Madras High Court allowing Addisons' application for registration of Hardie's device was set aside. In Civil Appeal Nos. 5312 and 12A-E of 1993, the order of the Registrar at Madras dated June 2, 1992 granting registration of "Spartan" and "Spartan Velox" in Addisons' name was set aside. The status quo order previously granted by the Supreme Court was dissolved as a consequence of the appellants' success. The first two sets of appeals were allowed with costs, and the last set was allowed without any order as to costs.
---
## Points of Law Settled in the Case
This judgment settled several points of trade mark law of lasting importance. The Court definitively held that the word "use" in Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958, is not confined to actual physical sale of goods bearing the trade mark but encompasses use "in any other relation whatsoever" to such goods, including use in advertisements, promotional literature, orders for goods, price lists, and other steps taken in the course of trade toward placing goods on the market. The Court also settled that an intention to abandon the trade mark is a necessary component of the non-use that justifies removal under Section 46(1), and that this is a separate and independent element from the special circumstances defence under Section 46(3). A proprietor can resist removal either by proving absence of intent to abandon or by proving special circumstances, or both — the two defences are not hierarchical but alternative. The Court further settled that even economic impracticability — such as import restrictions making it commercially unfeasible for a foreign manufacturer to place goods on the Indian market — can constitute "special circumstances in the trade" within the meaning of Section 46(3), provided the circumstances are not peculiar to that manufacturer alone but are generally applicable to all foreign manufacturers in the same trade. Importantly, the judgment also reinforced the statutory fiction under Section 48(2) that the permitted use of a trade mark by a registered user is deemed to be use by the proprietor, and therefore a licensee or agent who uses a trade mark on behalf of its principal acquires no proprietary rights over the mark through such use. Finally, the Court made clear that an application for registration under Section 18 must be judged on its own independent merits and is not automatically granted merely because the opponent's objections are overruled.
---
*Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.*
*Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi*
---
## Case Details
**Title:** Hardie Trading Ltd. and Another Vs. Addisons Paint and Chemicals Ltd.
**Date of Order:** September 12, 2003
**Case Number:** Civil Appeal Nos. 5307-11, 5312 and 12A-E/1993 and 7294 of 2003 (Arising out of SLP (C) No. 206/1998)
**Neutral Citation:** MANU/SC/0705/2003; AIR 2003 SC 3377; (2003) 11 SCC 92; 2003 (27) PTC 241 (SC)
**Name of Court:** Supreme Court of India
**Name of Hon'ble Judges:** Justice Ruma Pal and Justice B.N. Srikrishna
---
## Suggested SEO Titles for Legal Journal
1. Hardie Trading Ltd. v. Addisons Paint: Supreme Court on Non-Use of Trade Mark, Special Circumstances and Registered User — A Complete Legal Analysis
2. Can a Former Licensee Claim Ownership of a Trade Mark? The Supreme Court's Answer in Hardie Trading v. Addisons Paint 2003
3. What is "Use" of a Trade Mark under Section 46 of the Trade and Merchandise Marks Act? The Definitive Supreme Court Ruling in Hardie v. Addisons
4. Special Circumstances and Trade Mark Non-Use: How Import Restrictions Saved Hardie's Spartan Trade Mark in India — Supreme Court 2003
5. Spartan Trade Mark Dispute: The 57-Year Legal Battle Between Hardie Trading and Addisons Paint Explained — (2003) 11 SCC 92
6. Section 46 Trade Marks Act 1958 — Removal for Non-Use: Landmark Supreme Court Judgment in Hardie Trading v. Addisons Paint and Chemicals
7. Registered User Cannot Claim Trade Mark Ownership: Key Lessons from Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd. (2003)
---
## SEO Tags
Hardie Trading Ltd v Addisons Paint and Chemicals, 2003 11 SCC 92, AIR 2003 SC 3377, Supreme Court of India trade mark, Section 46 Trade and Merchandise Marks Act 1958, non-use of trade mark India, removal of trade mark register India, special circumstances trade mark non-use, registered user trade mark India, Section 48 Trade and Merchandise Marks Act, bona fide use trade mark India, Spartan trade mark India, Spartan Velox trade mark, collaboration agreement trade mark India, trade mark rectification India, import restriction special circumstances trade mark, abandonment of trade mark India, person aggrieved Section 46, Section 18 Trade and Merchandise Marks Act registration, Justice Ruma Pal Supreme Court, Hermes Trade Mark 1972 RPC, Bon Matin Trade Mark 1989 RPC, Aktiebolaget Manus RPC 1949, BALI Trade Mark 1966 RPC, Mouson v Boehm 1884, Berlei Bali Brassiere 1969, American Home Products v Mac Laboratories, Cycle Corporation India v TI Raleigh, trade mark owner vs licensee India, intellectual property rights India, trade mark proprietorship agent India, paints lacquers trade mark dispute India, Madras High Court trade mark, Calcutta High Court trade mark rectification, Foreign Exchange Regulation Act Section 28, AdvocateAjayAmitabhSuman, IPAdjutor
---
## Headnote
**Hardie Trading Ltd. and Another v. Addisons Paint and Chemicals Ltd.** — (2003) 11 SCC 92 : AIR 2003 SC 3377 : 2003 (27) PTC 241 (SC) : MANU/SC/0705/2003 — Supreme Court of India — Civil Appeal Nos. 5307-11, 5312 and 12A-E/1993 and 7294 of 2003 (arising out of SLP (C) No. 206 of 1998) — Decided September 12, 2003 — Before Justice Ruma Pal and Justice B.N. Srikrishna.
The trade marks "Spartan," "Spartan Velox," and the device of a helmeted rear-view warrior were owned by Hardie, registered in India since 1940, and used in India through Addisons as its chief agent and later registered user from 1946 to 1971. The collaboration ended in 1971 with Addisons publicly renouncing the marks. Hardie negotiated a fresh registered user agreement with Hansa, executed in March 1977. Addisons applied in May 1977 for rectification of the Register under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958, alleging five years' continuous non-use. The Joint Registrar allowed the application and the Calcutta High Court affirmed it. Addisons also obtained registration of Hardie's device in its own name from the Madras Assistant Registrar. The Supreme Court allowed Hardie's appeals, holding: (i) the word "use" in Section 46(1)(b) encompasses use in any relation to goods including advertisements, price lists, orders, and pre-marketing steps, and is not confined to actual sale of goods bearing the mark, as defined in Section 2(2)(b) which includes use "in any physical or in any other relation whatsoever" to the goods; (ii) an intention to abandon the trade mark is a necessary component of non-use for the purposes of Section 46(1), and is an independent element separate from the special circumstances defence under Section 46(3); (iii) Hardie's evidence of sustained negotiations with Hansa for a new registered user agreement from 1971 to 1977, culminating in the registered user agreement on March 31, 1977, clearly negated any intention to abandon; (iv) the Import Trade Control Policy for 1972-1975 which restricted the import of paints and lacquers to actual manufacturers or producers, and which Hardie — having no factory in India — could not satisfy, constituted special circumstances in the trade within Section 46(3), as economic impracticability amounts to special circumstances; (v) Addisons' use of the trade marks from 1946 to 1971 was, by virtue of the statutory fiction in Section 48(2), deemed to be Hardie's use and not Addisons' use, so Addisons never "used" the marks on its own account; (vi) Addisons had publicly disassociated itself from the marks in 1971 and had voluntarily undertaken before the Calcutta High Court in 1979 not to use the marks till disposal of the suits — showing conscious abandonment; (vii) Addisons' application for registration of Hardie's device under Section 18 could not succeed automatically upon overruling Hardie's objections; independent proof of proprietorship and bona fide use or intention to use was required, which was absent; and (viii) since Hardie's marks could not be removed from the Register, the grant of registration of identical marks to Addisons at Madras was unsustainable in the absence of any claim of bona fide concurrent use under Section 12. All appeals allowed. Hardie's trade marks restored. Addisons' registrations set aside.
No comments:
Post a Comment