Introduction:This case concerns the legal complexities arising from a trademark ownership dispute between former partners of a business. The matter delves into issues surrounding the alteration of the registered address of a trademark, the validity of administrative orders passed by the Trade Marks Registry, and the procedural integrity of such modifications. The High Court of Delhi was approached through a writ petition by the registered proprietor of the trademark “AMBIKA,” seeking rectification of the address entry in the trademark register which had been unilaterally changed at the instance of a former partner.
Factual Background:Ambika Industrial Corporation, the petitioner firm, is a longstanding user and registered proprietor of the trademark “AMBIKA” in relation to cycles and their parts. The mark has been in use since 1981, with multiple registrations filed under various classes, particularly Classes 12, 28, and 35. The dispute arises from the involvement of Respondent No. 2, Rakesh Kumar, who was formerly a partner of the petitioner firm. He retired from the firm through a retirement deed dated 1st April 1987, relinquishing all his rights, title, and interest in the firm. Despite this retirement, Respondent No. 2 later attempted to interfere with the records of the Trade Marks Registry concerning the trademark “AMBIKA.”
The petitioner firm had obtained registration of the trademark under application number 381350. A TM-24 form was submitted on 30th April 1998, requesting entry of subsequent proprietors, which was allowed by the Registry on 30th November 2006. Subsequently, the petitioner firm also instituted a civil suit, CS(COMM) 63/2018, against Ambika Exports Pvt. Ltd., a company wherein Respondent No. 2 is a director. An ad-interim injunction was passed by the Delhi High Court restraining the use of “AMBIKA” or deceptively similar marks by the respondent’s entity.
Procedural Background:The controversy arose when Respondent No. 2 filed a Form TM-34 on 23rd September 2013, seeking change of address of the registered proprietor of the trademark to his own address at 110-R, Modern Town, Ludhiana. The Trade Marks Registry allowed this request through an order dated 13th July 2018. The petitioner firm, on discovering this development through an RTI application, filed a review petition against the said order. Although a hearing was initially scheduled, it was adjourned on the request of Respondent No. 2 and never rescheduled, despite multiple reminders from the petitioner. Consequently, the petitioner filed the present writ petition seeking restoration of the original address in the register of trademarks.
Legal Issue:The core legal issue before the Court was whether the Trade Marks Registry acted lawfully and within its jurisdiction in allowing the change of address of the registered proprietor of a trademark on the basis of an application by a person who was no longer associated with the proprietor firm.
Discussion on Judgments:No external judicial precedents or case laws were cited by either party or referred to by the Court in the present matter. The case was determined purely on the basis of the factual matrix, administrative conduct of the Trade Marks Registry, and the proprietary status as per the Register of Trade Marks.
Reasoning and Analysis of the Judge:The Court observed that the petitioner firm continues to be the registered proprietor of the trademark “AMBIKA.” It was not in dispute that Respondent No. 2 had retired from the firm in 1987. Despite the respondent's claim to co-ownership, that dispute was pending adjudication in a civil suit and did not justify a unilateral change in the registered address by the Trade Marks Registry. The Court noted that the order passed by the Registry did not provide any rationale or legal basis for the address change, especially when it was initiated by someone with no legal authority in the firm. The Court held that such a change without notice to the registered proprietor and without any inquiry into the validity of the request was both procedurally and substantively unjustified.
Final Decision:The Court quashed the impugned order dated 13th July 2018 passed by the Trade Marks Registry and directed restoration of the registered address of the trademark “AMBIKA” to its position prior to the said order. To maintain fairness and transparency, the Court also directed that all future communications regarding the trademark by the Registry be marked to both the petitioner firm and Respondent No. 2. The writ petition was accordingly disposed of with directions for compliance to be conveyed to the Trade Marks Registry.
Law Settled in This Case:The case affirms that any administrative change in the Trade Marks Register, particularly relating to address or ownership of a registered trademark, must be based on proper authority, transparency, and rationale. Unauthorized and unilateral actions by third parties without proper notice or standing cannot form the basis of valid alterations in the official records maintained by the Trade Marks Registry. Furthermore, mere pending civil disputes regarding ownership do not empower a former partner to act as a proprietor for administrative purposes unless judicially recognized.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
