2008 Supreme(SC) 1912

2009(1) Supreme 382
SUPREME COURT OF INDIA
S.B. Sinha and Cyriac Joseph, JJ.
M/s. Thukral Mechanical Works — Appellant
versus
P.M. Diesels Pvt. Ltd. & Anr. — Respondents
Civil Appeal No. 7404 of 2008
(Arising out of SLP (C) No.6145 of 2006)
Decided on : 18-12-2008

IMPORTANT POINT = The non-user for a long time would disentitle a registered proprietor from renewal of the registration.

Headnote:(a) Words and Phrases – For the time being – It may mean ‘the moment or existing position’ – In the context of Article 366(22), it predicts that there shall be a Ruler of the Indian State, that if the first recognized Ruler dies, or ceases to be a Ruler, a successor shall be appointed, and that there shall not be more Rulers than one at a given time. (Para 18)

        (1992) 3 SCC 576; AIR 1971 SC 530 – Relied upon.

        (b) Trade and Merchandise Marks Act, 1958 – Section 46 – A registered proprietor of a trade mark should not be permitted to circumvent the law of user of the trade mark for a long time by assigning the same from time to time – The non-user for a long time would disentitle a registered proprietor from renewal of the registration. (Para 22)

        (c) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) – If the assignee has obtained assignment for bona fide use, he may not be fastened with any liability owing to non-user on the part of his predecessor – Mistake of the predecessor should not be visited with non-use of the present registered owner. (Para 23)

        (d) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) r/w section 48 – Whether Section 46(1)(b) read with Section 48 of the Act would bring within its purview, not only a registered proprietor but also the proprietor who had otherwise acquired a right would depend upon the facts and circumstances of each case – In cases of intermittent use also, clause (b) shall apply. (Para 24)

        2008 (8) SCALE 354; (2003) 11 SCC 92 – Relied upon.

        (e) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) and section 56 – An application alleging speculative assignment may be maintainable in terms of Section 56 of the Act but strictly not in terms of Section 46(1)(b) thereof and that too in the absence of the original registered proprietor. (Para 27)

        (f) Judicial propriety – Consent does not confer jurisdiction – And, any order passed without jurisdiction would be a nullity. (Para 28)

        (g) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) – Infringement of trade mark is a question of fact – The Tribunal should not have proceeded on presumptions. (Para 29)

        (h) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) – Survival or otherwise of cause of action by reason of assignment cannot be determined in a proceeding under Section 46(1)(b). (Para 29)

        (i) Trade and Merchandise Marks Act, 1958 – Section 46(1)(b) – As it takes away somebody’s right, it deserves strict construction – The right of a registered trade mark is not lost automatically on the expiry of five years and one month because it does not provide for a ‘sun set’ law – It has to be adjudicated upon – A title to a trade mark derived on assignment cannot be equated with a defective title acquired in any other property. (Para 30)

        (j) Trade and Merchandise Marks Act, 1958 – Section 56 – If an assigner’s title is not extinguished for non-user of the trade mark for a period of five years, any assignment made shall be valid. (Para 33)

       Facts of the case :

        1. First Respondent is the registered proprietor of a trade mark ‘Field Marshal’ for Diesel Engines since 1964. One M/s. Jain Industries got the trade mark ‘Field Marshal’ registered under clause (7), inter alia, for Flour Mills, Centrifugal Pumps, couplings for machines, pulleys included in class 7 and valves (parts of machines). The said registration was renewed for the periods 13.5.1972 and 12.5.1979; 13.5.1979 and 12.7.1986 and 13.7.1986 and 12.7.1993.

        2. Appellant is said to have commenced its business of manufacturing and selling centrifugal pumps also under the mark ‘Field Marshall’.

        3. Respondent No.1 filed a suit in the Delhi High Court for grant of a decree of permanent injunction being Suit No.2408 of 1985 alleging infringement of the said mark and/or claiming right of passing off in respect thereof. An ex parte order of injunction was passed on 19.12.1985 against the defendant (appellant herein).

        4. During the proceedings in the above suit, M/s. Jain Industries by a deed of assignment assigned the said trade mark along with its goodwill in favour of the appellant.

        5. First Respondent filed an application under Section 46, 56 and 107 of the Act, contending that M/s. Jain Industries having not used the trade mark in respect of Centrifugal Pumps for a period more than five years and one month, the mark should be taken off the register. It claimed user of the said mark since 1963 and sought for rectification of the register by expunging the expression ‘circulation and centrifugal pumps’ from the specification of goods.

        6. High Court vacated the interim injunction and the defendants were permitted to use their registered trade mark.

        7. The second rectification application filed by the first respondent, however, was transferred to the Intellectual Property Appellate Board. The said application was dismissed.

        8. Appeal against this dismissal was dismissed by the High Court.

       Finding of the Court :

        Impugned judgment cannot be sustained.

       Result : Appeal allowed with cost.