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2006 Supreme(Del) 124
High Court Of Delhi
P.M.DIESELS PVT.LTD. - Appellant
Versus
THUKRAL MECHANICAL WORKS - Respondent
Decided On : 01/18/2006
The interpretation of the non-use period of a trademark, the concept of proprietor, and the prevention of trafficking in trademarks were central to the judgment.
Headnote:
TRADEMARK - Interpretation of Section 46 (1) (b) of the Trade and Merchandise Marks Act, 1958 - [Section 46 (1) (b)] - The court set aside the interpretation given by the Board and remanded the proceedings for a decision on merits in accordance with law. The judgment discussed the use of the trademark, the concept of proprietor, and the prevention of trafficking in trademarks as key legal provisions influencing the court's decision.
Fact of the Case:
The Appellant filed an appeal against an order declining an interim stay. The issue concerned the interpretation of Section 46 (1) (b) of the Trade and Merchandise Marks Act, 1958. The Appellant claimed infringement of its trademark and filed rectification petitions. The Board dismissed the rectification application, leading to the appeal.
Finding of the Court:
The court disagreed with the Board's interpretation and held that the period of non-use of a trademark for 5 years and 1 month prior to the date of the application for rectification does not depend on whether there is one or more proprietor thereof for the time being. The court set aside the Board's order and dismissed the Letters Patent Appeal as infructuous.
Issues: Interpretation of Section 46 (1) (b) of the Act, non-use of trademark, and the concept of proprietor.
Ratio Decidendi: The court's decision was influenced by the interpretation of the non-use period, the concept of proprietor, and the prevention of trafficking in trademarks.
Final Decision: The court set aside the Board's order, dismissed the Letters Patent Appeal as infructuous, and directed the parties to appear before the Board for further directions.
( 1 ) THE Appellant filed an appeal under Clause X of the Letters Patent directed against an order dated 5th July 2005 passed by a learned Single Judge in CM No. 14450 of 2004 in CW No. 19632 of 2004 declining an interim stay to the appellant. When we took up the appeal for consideration on 14th December 2005 we felt that disposal of the appeal and the writ petition would require consideration of the same facts and submissions and, therefore, directed that both the appeal and writ petition be heard together on merits. We heard learned counsels for the parties on 16th December 2005 and 3rd January 2006 when judgment was reserved. This decision will dispose of the appeal as well as the writ petition.
( 2 ) THE issue concerns the interpretation of Section 46 (1) (b) of the Trade and Merchandise Marks Act, 1958 (the Act) and we agree with learned counsel for the Appellants that the Intellectual Property Appellate Board (the Board) has erroneously interpreted the said provision. We, therefore, set aside the interpretation given by the Board and remand the proceedings to it for a decision on merits in accordance with law.
( 3 ) THE Appellant/writ petitioner claims to be in the business of manufacture of diesel engines under a registered trademark Field Marshal since 1963. It also claims to be manufacturing and marketing centrifugal pumps under that trademark since 1974. The Appellant says that it came to know that respondent No. 1 (Thukral) was infringing its trademark in respect of centrifugal pumps in spite of a cease and desist notice and, therefore, the appellant filed Suit No. 2408 of 1985 in this Court in which an interim prayer was made to injunct Thukral from infringing the trademark of the Appellant. A learned Single Judge granted the ad interim ex parte injunction prayed for on 19th December 1985.
( 4 ) DURING the pendency of the suit the Appellant came to know that one M/s jain Industries had also registered a trademark Field Marshal in respect of flour mills, circulation and centrifugal pumps etc. Consequently, on 31st May 1986, the Appellant filed C. O. No. 9/86 in this Court under Sections 46, 56 and 107 of the Act for rectification of the register of trademarks on the ground, inter alia, that M/s Jain Industries had no bona fide intention to use the trademark Field Marshal nor did it use that trademark for a period of 5 years and 1 month prior to the date of the Appellant?s application.
( 5 ) DURING the pendency of C. O. No. 9/86, the Appellant came to know that m/s Jain Industries had purportedly assigned its trademark Field Marshal to thukral on 30th May 1986. In view of this, the Appellant withdrew C. O. No. 9/86 on 16th January 1987 with liberty to file a fresh petition against Thukral on the same cause of action. On 19th January 1987 the Appellant filed a fresh rectification petition being C. O. No. 6/87 in this Court making the same prayer as in C. O. No. 9/86, except that it was now directed against Thukral. This Court clubbed C. O. No. 6/87 with Suit No. 2408 of 1985 and common evidence was recorded in both proceedings.
( 6 ) C. O. No. 6/87 was transferred to the Board with the enforcement of the trade Marks Act, 1999 and registered as TRA No. 99/2004/tm/del (CO 6/87 ). By an order dated 27th October 2004, the Board disposed of the case by dismissing the appellants rectification application. Feeling aggrieved, the Appellant filed CW no. 19632 of 2004 in this Court. A learned Single Judge admitted the writ petition for final hearing but declined to stay the operation of the order dated 27th October 2004 passed by the Board. Against the refusal of the learned Single judge to grant an interim stay, the Appellant preferred an appeal, which we are disposing of by this decision.
( 7 ) FOR the sake of completing the record, we may mention that Suit No. 2408 of 1985 is said to be still pending. However, the ex parte ad interim injunction granted therein on 19th December 1985 has since been vacated o
