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1980 Supreme(Del) 155
High Court Of Delhi
K.R.BERI AND COMPANY - Appellant
Versus
METAL GOODS MFG.COMPANY , PRIVATE LIMITED - Respondent
First Appeal Order 19 of 1972
Decided On : 05/15/1980
AMARJIT SINGH, ANUP SINGH, N.K.ANAND, O.P.Sharma, PARVIN ANAND
The use of a trademark by an unregistered person cannot be equated to use by the registered proprietor for the purpose of Section 46 of the Trade and Merchandise Marks Act, 1958.
Headnote:
TRADE AND MERCHANDISE MARKS ACT - SECTION 46, 48, 56 - REMOVAL OF TRADE MARK FROM REGISTER - PERMITTED USE OF TRADE MARK - REGISTERED USER - INTERPRETATION.
Fact of the Case:
The appellant filed a petition under Section 56 of the Trade and Merchandise Marks Act, 1958, seeking cancellation of four registered trademarks of the respondent. The appellant alleged that the respondent had ceased to use the trademarks for more than five years and had abandoned them, making them liable for removal from the register. The respondent countered the allegation, maintaining that no grounds for cancellation under Sections 46 or 56 of the Act had been established.
Finding of the Court:
The High Court held that the appellant's statement that the respondent had permitted another company, M/s. Cinni Pvt. Ltd., to use the trademarks did not amount to an admission that the respondent had not used the trademarks themselves within the relevant period. The court found that the appellant had failed to establish that the respondent had not used the trademarks for a continuous period of five years or longer, as required under Section 46(1)(b) of the Act.
Issues: 1. Whether the use of a trademark by an unregistered person can be equated to use by the registered proprietor for the purpose of Section 46 of the Trade and Merchandise Marks Act, 1958? 2. Whether the appellant had established that the respondent had not used the trademarks for a continuous period of five years or longer, as required under Section 46(1)(b) of the Act?
Ratio Decidendi: 1. The court held that the use of a trademark by an unregistered person cannot be equated to use by the registered proprietor for the purpose of Section 46 of the Act. Section 48(2) of the Act provides that only the permitted use of a trademark by a registered user shall be deemed to be use by the proprietor. This provision excludes any argument that use by a person other than the registered user can be deemed to be use by the registered person. 2. The court found that the appellant had failed to establish that the respondent had not used the trademarks for a continuous period of five years or longer. The appellant's statement that the respondent had permitted another company to use the trademarks did not amount to an admission that the respondent had not used the trademarks themselves within the relevant period.
Final Decision: The High Court allowed the appeal, set aside the order of the lower court, and remitted the case back to the lower court for deciding the same in accordance with law and merits.
( 1 ) THIS is an appeal against the order of Prakash Narain, J. , by which he dismissed the petition filed by the appellant, under Section 56 of the Trade and Merchandise Marks Act 1958, (hereinafter to be called the Act ).
( 2 ) THE appellant filed the petition on the allegation that four registered trade marks in the name of respondent No. 1 be cancelled. The appellant s case is that he manufactures and sells cycle bells for more than 15 years under its distinctive trade mark "five 50". Respondent No. 1 has four registered marks with the trade mark of "0" and "fifty". It was alleged that in 1958 the respondent No. 1 had sought to prevent the appellant from using their trade mark as "five 50" but that injunction was refused. It is maintained that the respon dents have ceased to use the trade mark and have abandoned the said trade mark for more than 5 years preceding one month from the date of petition and therefore the same is liable to be removed from the register.
( 3 ) WHAT brought the appellant to court was a threatened action by one M/s. Cinni Pvt. Ltd. , for allegedly using the trade mark "five 50" alleging that they had a right in it. The respondent countered the allegation and maintained that no ground had been made out under Section. 46 or 56 of the said Act. It appears that the learned Judge examined Mr. Dheer, partner of the appellant firm, who made a statement in court which is as follows:
"about 7 or 8 months back we first came to know that the respondent has ceased to use their registered trade mark. We came to know about 7 or 8 months back that the respondent had given their marks tor use to M/s. Cinni Pvt. Ltd. We came to know that the marks had been given for use to M/s. Cinni Pvt. Ltd. , about a year back".
( 4 ) ON this statement the learned Judge framed the following issue:
"whether in view of the statement made on behalf of the petitioner today, the present petition is maintainable?"no evidence was taken and the learned Judge basing himself on the statement of Dheer held that it was the appellant s own case that the trade mark was given for use to M/s. Cinni Pvt. Ltd. , by the respondent and therefore it cannot be said that a period of 5 years and one month had elapsed from the date of filing of the petition and the trade mark could not be taken off the register. The appellant being aggrieved has come up in appeal.
( 5 ) THE main contention of the appellant as put by Mr. Anand, their learned counsel is that the learned Judge was in error in deciding the case merely on the statement of Mr. Dheer as the matter was not such which could be decided without taking evidence,
( 6 ) SECTION 56 of the Act empowers the High Court, on being moved, to cancel the registration of a trade mark on the ground of any contravention or failure to observe a condition entered on the register in relation thereto.
( 7 ) SECTION 46 of the Act provides that a registered trade mark may be taken off the register in respect of any of the goods on the grounds (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . or (b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any properietor thereof for the time being.
( 8 ) SECTION 48 provides that a person other than the registered proprietor of a trade mark may be registered as the registered user thereof. Sub-section (2) of Section 48 reads as under:
"the permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purpose of Section 46 or for any other purpose for which such use is material under this Act or
