2009(41)PTC385(Del)
IN THE HIGH COURT OF DELHI
Decided On: 15.07.2009
Appellants: Classic
Equipments (P) Ltd.
Vs.
Respondent: Johnson Enterprises and Ors.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Prathiba M. Singh ,
Adv.
For Respondents/Defendant: Amit S.
Chadha , Sr. Adv., S.K. Bansal and Ajay
Amitabh Suman , Advs.
JUDGMENT
1. The present petition has been filed
for issuance of a writ of certiorari or any other appropriate writ, order or
direction quashing/setting aside the order dated 22.2.2008 passed by the
Intellectual Property Appellate Board (hereinafter, referred to as 'Board') and
the order dated 13.12.2002 passed by the Deputy Registrar of Trade-marks.
2. The brief facts which have given
rise to the controversy between the Petitioner and Respondent No. 1 are as
under:
(A) The Petitioner herein
is a private limited company belonging to the family headed by Shri Muni Lal
Jain. Respondent No. 1 is a partnership firm belonging to the family headed by
Sh. V.K. Jain. Family disputes among the four families comprising the Johnson
group were sought to be resolved and a Memorandum of Partition (for short MoP)
was entered into on 12.03.1999 amongst the four brothers. It is the case of the
Petitioner that the four brothers referred the question of finalization and
settlement of all family matters to two arbitrators vide the letter of appointment
dated 13.05.2001.
The Petitioner herein
assigned to the first Respondent all its rights in the trade mark JOHNSON vide
an Assignment Deed Dated 1.4.1999. The grievance of the Petitioner is that the
first Respondent in breach of the understanding and obligations comprised in
the memorandum of partition (MoP) filed the application for recordal alongwith
deed of assignment with the Trade Marks Registry without disclosing the
memorandum of partition. Petitioner thereupon served upon the first Respondent
a letter of revocation dated 15.05.2000. The further grievance of the
Petitioner is that despite the revocation of the deed of assignment, the
Registrar proceeded to take on record the deed of assignment vide his first
order dated 19.07.2000. A review petition was filed by the Petitioner for
recall of the said order on the ground that the order had been passed in
violation of the principles of natural justice. Review applications were
allowed and hearing on form TM-24 was fixed.
Finally vide orders dated
13.02.2002, the Registrar allowed the request for recordal of subsequent
proprietor made on Form TM 24 dated 17.06.1999 by virtue of assignment of the
registered mark Nos. 195359 and 319955. Aggrieved by the said orders, the
Petitioner filed an appeal before the High Court of Delhi and in terms of
Section 100 of the Trade Marks Act, 1999. The said appeal was transferred to
the Board. The board upon hearing the parties dismissed the appeal.
3. Against the order dated 22.2.2008
passed by the Board, the Petitioner has approached this Court by filing the
present petition. The Petitioner has assailed the order of the Board on the
ground that the Board has erred in holding that there were no disputes with
regard to the validity of the assignment in terms of Section 44 of the Trade
and Merchandise Marks Act, 1958 (corresponding to Section 45 of the Trade Marks
Act, 1999) and accordingly there was no question of the proviso to the said
Section being applicable in the present case. Learned Counsel for the Petitioner
further submits that exercise of jurisdiction of the learned Registrar of
Trade-marks as well as the Board is quasi judicial in nature and not a
mechanical exercise without application of mind and without following the
principles of law. It is strongly urged before this Court that the Board has
failed to appreciate that once the assignment had been revoked and notice of
revocation had been given to the Registrar, assignment could not have been
recorded to the detriment of the Petitioner. Learned Counsel for the Petitioner
submits that the Board has failed to appreciate that the assignment deed dated
1.4.1999 entered into between the Petitioner and Respondent No. 1 suffers from
various legal infirmities, making the document void ab initio and unenforceable
in law. Furthermore, there is a deliberate breach on the part of Respondent No.
1 of the terms of the Memorandum of the Partition dated 12.3.1999 which
according to the Petitioner forms the basis of the deed of assignment dated
1.4.1999 entered into between the Petitioner and Respondent No. 1. The acts of
breach pertain to non-payment of the consideration of Rs. 2.0 lacs as provided
in the Memorandum of Partition and interference with the rights of M/s. Blumac
Electrical India. It is also contended that the deed of assignment sought to
assign goods in excess of those actually entered in the register or envisaged
in the Memorandum of Partition.
4. It has also been submitted that the
Board has failed to take note of the fact that the Memorandum of Partition provided
for the partition of the family property including the trade-mark rights and
thus the Registrar ought to have held that the deed of assignment was a
corollary to the Memorandum of Partition. Learned Counsel has also strongly
urged before this Court that the finding - the Memorandum of Partition was only
draft Memorandum and thus cannot have an overriding effect over and above the
assignment - was beyond the jurisdiction of the learned Registrar. In support
of the contention that the procedure for registration of assignment by no means
can be regarded as purely an administrative proceedings and that the Registrar
while discharging his duties in such cases performs quasi judicial functions
whereby he decides prima facie rights of the parties and that the procedure for
registration of assignment is not a mere formality in view of the proviso to
Section 45(1). Learned Counsel has relied upon (i) Radha Kishan Khandelwal v.
Assistant Registrar of Trade Marks and Ors. MANU/DE/0059/1969 : AIR 1969 Delhi
324 (para 26) (ii) Cott Beverage Inc. v. Silvassa Bottling Company 2004
(29) PTC 679 (para 19) (iii) Report of Joint Committee Published
in Part-II, Section 2 of the Gazette of India, Extraordinary dated the 26th
March, 1958. (Page 744/26).
5. Learned Counsel for the Petitioner
has further submitted that the Registrar has to exercise his discretion
judicially in furtherance to the cause of the legislative provisions under the
discretionary power. And keeping in view the provisions of Section 45(1) of the
Trade Marks Act, and the proviso thereto, it is the duty of the Registrar to
adjudge that there should be a real and bona fide dispute between the parties
barring any artificial or raising of frivolous issues by one party against the
other, only to stall registration of a bona fide subsequent claim by abusing
the process of law. The Registrar cannot decide complicated questions of fact
and law and he must wait for the decision of the competent Civil Court.
Accordingly, the Registrar only has to ascertain on a prima facie consideration
whether there was any dispute at all and has relied upon (i) Forward Auto
Industries v. Brakes International PTC Suppl. (1) 858
(para 15, 16), (ii) K.L. Rajakrishnan v. Parthas Textiles, Kottayam 1997
PTC (17) 205 (para 29) (iii) Kohimoor Paints Faridabad (P) Ltd. v.
Paramveer Singh and Anr. 1996 PTC (16) 69 (para 6),
(iv) Devendra Kumar and Anr. v. Vitthal Prasad and Ors. 2006 (32)
PTC 835 (para 5).
6. Learned Counsel for the Petitioner
has also laid stress on the definition of the word 'dispute' which according to
her envisages a controversy, a contest by opposing argument and expression of
opposing view of claims. Learned Counsel contends that dispute would mean a
conflict or contest and would arise whenever there are conflicting claims and
in support of this pleas she relies on Brakes International v. Tilak Raj Baqqa
and Anr. 1997 PTC (17) 591 (para 21-24).
7. Learned Counsel has laboured hard in
drawing the attention of the Court on the assignment deed dated 1.4.1999 to
show that the assignment deed has origin in the Memorandum of Partition entered
into by the four brothers of Jain family. She submits that as per Clause 1.1 of
the Addendum to the Memorandum of Partition the Petitioner had assigned the
mark 'JOHNSON' bearing registration No. 197997 B in class 9,319955 in class 11,
and 195359 in class 21, and also various pending applications at that time
pertaining to the mark 'JOHNSON' in various classes, namely, 398343 in class 7,
319954, 398341 and 390169 in class 9, 398342 in class 11, and 319953 in class
21 for wider specification of goods in the respective classes, in favour of
Respondent No. 1. The Clause 1.1 of Addendum to Memorandum of Partition reads
as under:
1.1 In reference to Para 3.3 of
Memorandum of Partition it is further clarified that the Trade Mark
registration will be assigned by Classic Equipments (P) Ltd. to the Head
receiving Trade Mark and Trading items in Group-A, as under:
(a) Trade Mark No. 195359
(in Class-21)--This trade mark registration will be assigned to Group-A in
favour of respective Head.
(b) Trade Mark No. 319953
(in Class 21)--This Trade mark covers the same items as covered in above
Registration No. 195359 (in Class -21). This Trade Mark will be assigned to the
Head receiving enamel Wares and Non-Stick wares in Group-A, to cover the items
of enamel wares and non stick wares subject to a declaration by the Head
receiving Enamel wares, that he will in no circumstances claim any item for
registration except enamel wares and non-stick wares.
(c) Trade Mark No. 197997B
(in Class-9)--This trade mark registration will be assigned to Group-A in
favour of respective Head.
(d) Trade Mark No. 319955
(in Class-11)--This trade mark registration will be assigned to Group-A in
favour of respective Head.
(e) Trade Mark No. 197998B
(in Class-11)--This trade mark will be a retained by Classic Equipments (P)
Ltd. to cover the item of instant geyser.
8. It is contended by counsel for the
Petitioner that the very fact that this Assignment Deed, dated 01.04.1999,
entered into between the Petitioner and Respondent No. 1 owed its origin to the
Memorandum of Partition entered into by the four brothers and/or that the
latter was the basis/foundation of the former, is clearly and precisely set out
in the recital of the said Assignment Deed which amongst other things, inter
alia contained in the following:
WHEREAS the
said Assignor has agreed that the said Assignee to transfer to him the
exclusive use and benefits of the said trade marks as a result of family
settlement.... (emphasis added)
9. It is urged before this Court that
it is well settled that if a transaction is contained in more than one
document, which are executed contemporaneously between the same parties, then
they must be interpreted together with a view to find out the manifest
intention of the parties and they have the same legal effect for all purposes
as if they are one document.
10. Per contra, it is submitted by
learned senior counsel for the Respondent that this Court while exercising
jurisdiction under Articles 226 and 227 of the Constitution of India would not
reverse a concurrent finding of fact which even a Civil Court in second appeal
would not do.
11. Learned senior counsel for the
Respondent submits that the role of the Registrar under Section 45 of the Trade
Marks Act, 1999 is limited. He cannot go behind the terms of the assignment and
he is only required to satisfy himself that in fact upon true constructions of
the assignment deed there is in fact an assignment. In support of this
submission counsel has placed reliance on (1928 (1) Chancery Division). Learned
Counsel submits that it is only in case of dispute about the validity of the
assignment between the parties, namely, the assignor and the assignee, the
Registrar may refuse to register the assignment until the rights of the parties
have been determined by a competent court. However, Learned Counsel does not
dispute that the power of the Registrar under Section 45 of the Trade Marks
Act, is quasi judicial in nature whereby he decides prima facie rights of the
parties, namely, the assignor and the assignee, for which counsel relies upon
MANU/DE/0059/1969 : AIR 1969 Delhi 324 more particularly paragraph 26 at page
329. He also submits that his power under Section 45 is to be guided and
regulated by Chapter 4, Rules 68 to 79 of the Trade Marks Rule, 2002.
12. Learned Counsel for the Respondent
has strongly urged before this Court that the deed of assignment can be
compared to any other contract and the Registrar under Section 45 has to prima
facie satisfy himself as to the validity/formation of the contract and
questions with regard to the working of the contract are irrelevant for
according satisfaction by the Registrar. Learned Counsel also submits that the
dispute about the validity of the assignment can be raised only on the
following principal grounds:
(A) If one or more
essential ingredients of a contract are absent.
(B) That the assignment is
invalid because of the provisions contained in Chapter V. i.e. Section 37 to 45
of the Trade Marks Act.
(C) Violates Section 40
which prohibits creation of multiple exclusive rights as a result of
assignment.
(D) Violates Section 41
which prohibits an assignment which would result in creation of exclusive
proprietary rights in different person in different parts of India for the same
Trademark.
13. Learned senior counsel for
Respondent No. 1 further submits that in the present case there is no dispute
with regard to the validity of the contract of assignment nor violation of
Sections 40 and 41 of the Trade-Mark Act have been pleaded or raised by the
Petitioner. During the course of hearing Learned Counsel for the Petitioner in
support of her plea with regard to pendency of the disputes which were raised
has submitted that a suit filed by the Respondent against M/s. Blumac
Electrical India is pending for revocation of assignment and another suit filed
by M/s. Blumac Electrical India, is also pending. To contradict this plea of
the Petitioner, Learned Counsel for the Respondent submits that none of the
disputes sought to be raised are a subject matter in any of the proceedings
which are pending nor the validity of the assignment Deed has been challenged.
It is Submitted that the suit filed by the Respondent against M/s. Blumac
Electrical India was not between the assignor and the assignee. With regard to
the suit fried by the Respondent against the M/s. Blumac Electrical India,
plaint was returned on 25.9.2000 for lack of jurisdiction. As far as the
revocation of assignment is concerned, it is strongly pleaded that any subsequent
revocation of an assignment cannot be a dispute with regard to the validity of
the assignment. It has been strongly urged by Mr. A.S. Chadha, Senior Advocate
that the assignment is a permanent transfer and after executing a deed of
assignment an assignor, ceases to have any right, title or interest in the
property assigned and in case of dispute, the assignor must approach the Civil
Court to get the assignment cancelled under Section 31 of the Specific Relief
Act. Learned Counsel submits that the assignment has been defined by the
Supreme Court in MANU/SC/0195/1989 : AIR 1989 SC 1141 paragraph 10. Learned
Counsel further relies on MANU/DE/0002/1992 : AIR 1992 Delhi 4, more
particularly paragraphs 6 and 7, in support of his argument that on assignment
of the trademark the assignee becomes the proprietor of the mark from the date
of the execution of the assignment deed. Thus, an application to the Registrar
to register the assignee as the registered proprietor is only an act in
furtherance of the assignment. Registration of the name of the assignee as the
registered assignee does not confer title on him, it is merely evidence of his
title. It is further submitted that an assignment is irrevocable.
14. Counsel for the Respondent further
submits that in the present case, the Petitioner/Classic has never invoked the
jurisdiction of any Civil Court to seek cancellation of the assignment deed.
The assignment deed is dated 01.04.1999. The letter alleging breach and as such
giving a purported cause of action to Classic to seek cancellation is dated
15.05.2000. Assuming though not admitting that to be the latest date when the
facts entitling the Plaintiff to have the instrument cancelled first became
known to Classic under Article 59 of Limitation Act - the 3 years have long
expired.
15. While responding to the argument
raised by the counsel for the Petitioner that the Respondent has made a breach
of the terms of the assignment, as the Respondent has interfered with the
rights of the M/s. Blumac Electrical India, Learned Counsel for the Respondent
submitted that the suit filed by M/s. Blumac Electrical India dated 11.7.2006
is an afterthought and was not pending at the time when the order dated
13.12.2002 was passed by the Registrar. M/s. Blumac Electrical India has in
fact neither filed any objections for opposing the registration of the
assignment and even otherwise the M/s. Blumac Electrical India is a mere
licensee and has not claimed to be the proprietor of the mark. It is also
contended by counsel for the Respondent that all the family disputes were
referred to an arbitrator and admittedly an award dated 13.5.2001 was made and
no dispute with regard to assignment of trademark was raised before the
Arbitrator. It is also contended that submission of the Petitioner is incorrect
that the Memorandum of partition and assignment were contemporaneously executed
in view of the fact that the Memorandum of Partition was executed on 12.3.1999
and the deed of assignment was executed on 1.4.1999. Learned Counsel has also filed
the both sides of the stamp paper to show that the stamp papers for the deed of
assignment were purchased by the Petitioner on 23.3.1999.
16. As far as the plea raised by counsel
for the Petitioner with regard to non-payment of Rs. 2.0 lacs, counsel for
Respondent No. 1 submits that Petitioner has concealed the Annexure to the MoP
which shows that Rs. 2.0 lacs were duly adjusted from the account of Respondent
No. 1 on 12.3.1999 itself.
17. I have heard Learned Counsel for the
parties, who have taken me through the records of this case.
18. Counsel for both the parties have
submitted that while registering an assignment, the Registrar performs quasi
judicial functions, whereby he decides prima facie rights of the parties. In
view of this stand taken by counsel for the parties, it is not necessary for me
to discuss the various judgments relied upon by both the counsel, in support of
this submission.
19. It is no longer res integra that the
powers of the High Court: under Articles 226 and 227 of the Constitution of
India, are very wide, however, the same are to be exercised not as a Court of
Appeal, and the High Court should be slow to interfere unless there is grave
miscarriage of justice.
20. In the case of Shamshad Ahmad v.
Tilak Raj Bajaj MANU/SC/3997/2008 : (2008) 9 SCC 1, the Apex Court has
re-visited the law with regard to the power of the High Court under Articles
226 and 227 of the Constitution of India and while taking into consideration
various judgments has held that no doubt the power of the High Court under
Articles 226 and 227 are very wide and extensive over all Courts and Tribunals,
the same are to be exercised not as a Court of Appeal and can neither review or
re-apprise the evidence, but ordinarily should interfere where there is grave
miscarriage of justice or flagrant violation of law:
38. Though
powers of a High Court under Articles 226 and 227 are very wide and extensive
over all courts and tribunals throughout the territories in relation to which
it exercises jurisdiction, such powers must be exercised within the limits of
law. The power is supervisory in nature. The High Court does not act as a court
of appeal or a court of error. It can neither review nor reappreciate, nor
reweigh the evidence upon which determination of a subordinate court or
inferior tribunal purports to be based or to correct errors of fact or even of
law and to substitute its own decision for that of the inferior court or
tribunal. The powers are required to be exercised most sparingly and only in
appropriate cases in order to keep the subordinate courts and inferior
tribunals within the limits of law.
39. In Chandavarkar Sita Ratna Rao v.
Ashalata S. Guram MANU/SC/0531/1986 : (1986) 4 SCC 447 this Court stated: (SCC
p. 458, para 16)
16. ...unless
there was any grave miscarriage of justice or flagrant violation of law calling
for intervention it was not for the High Court under Articles 226 and 227 of
the Constitution to interfere. If there is evidence on record on which a
finding can be arrived at and if the court has not misdirected itself either on
law or on fact, then in exercise of the power under Article 226 or Article 227
of the Constitution, the High Court should refrain from interfering with such
findings made by the appropriate authorities.
40. Even prior to Chandavarkar
MANU/SC/0531/1986 : (1986) 4SCC 447 in Bathutmal Raichand Oswal v. Laxmibai R.
Tarta MANU/SC/0504/1975 : (1975) 1 SCC 858 dealing with the supervisory power
of a High Court under Article 227 of the Constitution, Bhagwati, J. (as His
Lordship then was) stated: (Bathutmal Raichand Oswal case 2 SCC 864 -65,
para 7)
7. ...If an
error of fact, even though apparent on the face of the record, cannot be
corrected by means of a writ of certiorari it should follow a fortiori that it
is not subject to correction by the High Court in the exercise of its
jurisdiction under Article 227. The power of superintendence under Article 227
cannot be invoked to correct an error of fact which only a superior court can
do in exercise of its statutory power as a court of appeal. The High Court
cannot in guise of exercising its jurisdiction under Article 227 convert itself
into a court of appeal when the Legislature has not conferred a right of appeal
and made the decision of the subordinate court or tribunal final on facts.
(emphasis supplied)
41. In State of Maharashtra v. Milind
MANU/SC/0724/2000 : (2001) 1 SCC 4 : 2001 SCC (L and S) 117
this Court observed: (SCC p. 29, para 33)
33....The
power of the High Court under Article 227 of the Constitution of India, while
exercising the power of judicial review against an order of inferior tribunal
being supervisory and not appellate, the High Court would be justified in interfering
with the conclusion of the tribunal only when it records a finding that the
inferior tribunal's conclusion is based upon, exclusion of some admissible
evidence or consideration of some inadmissible evidence or the inferior
tribunal has no jurisdiction at all or that the finding is such, which no
reasonable man could arrive at, on the materials on record.
42. In State v. Navjot Sandhu
MANU/SC/0396/2003 : (2003) 6 SCC 641 : 2003 SCC (Cri) 1545 this Court
reiterated: (SCC pp. 656-57, para 28)
28. Thus, the
law is that Article 227 of the Constitution of India gives the High Court the
power of superintendence over all courts and tribunals through-out the
territories in relation to which it exercises jurisdiction. This jurisdiction
cannot be limited or fettered by any Act of the State Legislature. The
supervisory jurisdiction extends to keeping the subordinate tribunals within
the limits of their authority and to seeing that they obey the law. The powers
under Article 227 are wide and can be used to meet the ends of justice. They
can be used to interfere even with an interlocutory order. However, the power
under Article 227 is a discretionary power and it is difficult to attribute to
an order of the High Court, such a source of power, when the High Court itself
does not in terms purport to exercise any such discretionary power. It is
settled law that this power of judicial superintendence, under Article 227,
must be exercised sparingly and only to keep subordinate courts and tribunals
within the bounds of their authority and not to correct mere errors. Further,
where the statute bans the exercise of revisional powers it would require very
exceptional circumstances to warrant interference under Article 227 of the
Constitution of India since the power of superintendence was not meant to
circumvent statutory law. It is settled law that the jurisdiction under Article
227 could not be exercised 'as the cloak of an appeal in disguise'. (emphasis
supplied)
21. The entire controversy between the
parties revolves around Section 45 of the Trade Marks Act, 1999, which is
reproduced below:
45. Registration of assignments and
transmissions.--(1) Where a person becomes entitled by assignment or
transmission to a registered trade mark, he shall apply in the prescribed manner
to the Registrar to register his title, and the Registrar shall, on receipt of
the application and on proof of title to his satisfaction, register him as the
proprietor of the trade mark in respect of the goods or services in respect of
which the assignment or transmission has effect, and shall cause particulars of
the assignment or transmission, to be entered on the register:
Provided that where the
validity of an assignment or transmission is in dispute between the parties,
the Registrar may refuse to register the assignment or transmission until the
rights of the parties have been determined by a competent court.
(2) Except for the purpose
of an application before the Registrar under Sub-section (1) or an appeal from
an order thereon, or an application under Section 57 or an appeal from an order
thereon, a document or instrument in a respect of which no entry has been made
in the register in accordance with Sub-section (1), shall not be admitted in
evidence by the Registrar or the Appellate Board or any court in proof of title
to the trade mark by assignment or transmission unless the Registrar or the
Appellate Board or the court, as the case may be, otherwise directs.
22. Keeping in mind the principles laid
down and the restraints of writ jurisdiction, I shall examine the impugned
order. A bare reading of Section 45 of the Trade Marks Act would show that it
is not for the Registrar to adjudicate upon dispute between the assignor and
the assignee. The Registrar is to register the title on receipt of the application
and on proof of the title. Proof of the title is the first requirement for
registration by the Registrar. Thus, the Registrar must satisfy himself,
whether the document suffers from any legal infirmity with regard to its
validity or formation, and also whether the assignment is invalid or violates
any of the provisions of the Trade Marks Act. The Registrar may also satisfy
himself whether the documents have been executed by misrepresentation or fraud.
The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment
dated 1.4.1999 clearly records "there are no acts specified in the Deed of
assignment which are required to be performed before transfer was to be
completed. At least no such clauses in the assignment Deed have been brought to
our attention by Learned Counsel for the assignor/Appellant". Thus it can
be said that there is no error apparent on the face of the Deed of Assignment
dated 1.4.1999.
23. The proviso to Section 45(1) of the
Trade Marks Act, 1999 further reposes a duty on the Registrar to adjudge that
there should be a real and bona fide dispute between the parties, and the event
of their being any, the Registrar may, in his discretion, refuse to register
the assignment until such time the rights of the parties are determined by a
competent Civil Court.
24. It is not in dispute that the
Petitioner has signed and executed the assignment deed dated 1.4.1999. In terms
of Section 45 of the Trade Marks Act, in case the assignment or transmission is
in dispute the Registrar may refuse to register the assignment, until the
rights of the parties have been determined by a competent court. In this case
the Respondent approached the Registrar for registration of the assignment.
However, the Petitioner revoked the assignment deed dated 1.4.1999 on
15.5.2000, a copy of the revocation was duly sent to the Registrar of Trade
Marks by registered AD post on 27.6.2000. According to the Petitioner,
Respondent deliberately acted in breach and in contravention of the terms of
the Memorandum of Partition and terminated the registered user agreement
entered into between the Petitioner and Blue Mack Electronics India, and thus
the revocation was justified. The Petitioner can surely not be a Judge of its
own cause. Assuming the Respondent acted in breach and in contravention of the
terms of Memorandum of Partition and terminated the Registered User Agreement
with Blue Mack, the Petitioner should have approached the competent court of
jurisdiction, as the Registrar cannot adjudicate the dispute between the
parties, although he must wait until rights of the parties have been determined
by a competent court. Counsel for the Petitioner has been unable to show that a
single a dispute was pending in any court of law relating to the cancellation
or validity of the assignment Deed. In fact Petitioner has been unable to show
pendency of any dispute between the Petitioner (assignor) and Respondent No. 1
(assignee).
25. In fact the only two proceedings are
stated to be pending being Suit No. 294/2000 dated 5.9.2000 by Respondents
against Blue Mac and Suit No. 1399/2006 filed by Blue Mac dated 11.7.2006, (not
between the Assignor or assignee).
26. Assignment has been defined in
Section 2(a) of the Trade and Merchandise Marks Act, 1958 corresponding to
Section 2(b) of the Trade Marks Act, 1999 as under:
2(a)
"assignment" means an assignment in writing by act of the parties
concerned.
27. The expression
"assignment" has been considered by the Supreme Court in Nand Kishore
Prasad v. State of Bihar MANU/SC/0138/1978 : AIR 1978 SC 1277, wherein at para
10 it was observed "Assignment", it has been stated in Black's Law
Dictionary. Special Deluxe Ed., p. 106, "is a transfer or making over to
another of the whole of any property, real or personal, in possession or in
action, or of any estate or right therein". It has further been stated as
"The transfer by a party of all its rights to some kind of property,
usually intangible property such as rights in lease, mortgage, arrangement of
sale or partnership".
28. The distinction between a license
and assignment has been stated in Chapter 20 of Law of Trade Marks by passing
off by P. Narayana Sixth Edition. The relevant portions of the paragraph 20.02
are extracted hereunder:
20.02
Distinction between licensing and assignment Property in a trade mark consists
in the exclusive right to use the mark in relation to some goods, subject of
course to the right of honest concurrent user by others Assignment is a
permanent transfer of this right to use, while licence is a temporary transfer of
this right, either exclusively or non-exclusively "...licence could be
revoked, whereas an assignment is irrevocable.
29. Once an Assignment Deed has been
executed, the assignor ceases to have any right, title or interest in the
property assigned. It is not open to the assignor to cancel the assignment by
means of a communication. The Deed of assignment can only be cancelled under
the provisions of Specific Relief Act. It was not for the Registrar to give a
finding whether the assignment stood revoked, simply on the basis of a letter
of the Petitioner that the Respondent had failed to comply with the terms of
the partition. Even otherwise as per the case of the Petitioner while
contravening the terms of the Memorandum of Partition Respondent No. 1 terminated
the registered user agreement entered into between Petitioner and the Blue Mack
Electronics India. This would show that Blue Mac Electronics India was the
party aggrieved by the action of the Respondent No. 1 and it would be for Blue
Mack to initiate suitable action against the Respondent.
30. It is not open for the Registrar to
go behind the terms of the assignment and he is only required to satisfy
himself about the construction of the assignment Deed and whether there is in
fact an assignment. I am supported in this view by the decision in 1928 (1)
Chancery Division entitled "In re the Application of Cranbux
Limited", in particular the following observations:
Upon the
application, in pursuance of Section 33 of the Trade Marks Act, 1905, as
amended by Section 11 of the Trade Marks Act, 1919, by a person entitled by
assignment to a registered trade mark to register his title, the registrar in
the investigation of the title is not entitled to go behind the terms of the
agreement, and will adequately discharge his duties if he satisfies himself
that, upon the true construction of the assignment, there is an assignment of
the trade mark in connection with the goodwill within the territorial limits to
which the Act extends, of the business concerned in the goods for which the
trade mark is registered.
31. In this case no proceedings were
initiated by the Assignor before any competent Court of jurisdiction for
determination of its rights, or with respect to the validity or cancellation of
the assignment Deed, thus no rights could have been determined by a competent
Court and accordingly there was no occasion for the Registrar to refuse to
register the assignment until the rights of the parties had been determined by
a competent Court disputes with regard to assignment of trademark was raised
before the Arbitrator, who was appointed by the parties to resolve the family
disputes as well.
32. In order to rely on the proviso II
of Section 45(1) of the Trade Marks Act, it is incumbent on the Petitioner to
show that prima facie a dispute exists between the assignor and the assignee
and secondly the assignor must place on record sufficient material to show that
the assignor has taken steps to get the disputes resolved through Court or is
likely to take steps within a reasonable time to get the disputes adjudicated.
In this case except the letter of cancellation, assignor did not place any
material on record before the Registrar till the assignment Deed was registered
or any material to show that any steps had been taken or were in the process of
being taken in the Court of Law. No doubt in case of a dispute between assignor
and assignee the Registrar may refuse to register the assignment until rights
of the parties have been determined by the Competent Court. Although no time
limit has been fixed, yet the Registrar can await for the decision only if some
dispute is pending adjudication in a competent Court. Thus, it cannot be said that
mere revocation of an assignment Deed is a dispute with regard to the validity
of an assignment. Taking into consideration that there is no legal infirmity in
the Deed of assignment, the Petitioner has not approached the Civil Court for
cancellation of the assignment Deed and in the absence of any material on
record to show that any dispute is pending between assignor or assignee with
respect to assignment deed, I find no infirmity in the impugned Order. The
petition is without any merit and the same is accordingly dismissed.
