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2007 Supreme(Del) 108
147 (2008) DELHI LAW TIMES 373
DELHI HIGH COURT
G.S. Sistani, J.
SHAW WALLACE & CO. LTD. & ANR. – Plaintiffs
versus
M/S. SUPERIOR INDUSTRIES LTD. – Defendant
CS (OS) No. 1204 of 2003
Decided on : 16.1.2007
For the Plaintiffs:Mr. Manmohan Singh, Advocate.
For the Defendant:Mr. Amarjit Singh and Mr. Gurprit Singh, Advocates.
The proposed plaintiff No.3 would be a proper and necessary party to contest the suit until the Registrar of Trade Marks records the title in favor of the assignee.
Headnote:
Trademark Assignment - Impleadment of Party - Trade Marks Act, 1999, Section 45 - The court allowed the impleadment of plaintiff No.3 in the suit, holding that the proposed plaintiff No.3 would be a proper and necessary party to contest the suit until the Registrar of Trade Marks records the title in favor of the assignee.
Fact of the Case:
The plaintiff filed an application for impleadment of plaintiff No.3 during the pendency of the suit, seeking to restrain the defendants from infringement of trade mark, copyright, passing off, damages, rendition of accounts, and delivery.
Finding of the Court:
The court allowed the impleadment of plaintiff No.3 as a party to the suit, directing the plaintiff to file an amended memo of parties within two weeks and affidavits by way of evidence within eight weeks.
Issues: The primary issues were the maintainability of the application under Section 45 of the Trade Marks Act, 1999 and the substitution of parties under Order 22 Rule 10 of the Code of Civil Procedure.
Ratio Decidendi: The court held that the proposed plaintiff No.3 would be a proper and necessary party to contest the suit until the Registrar of Trade Marks records the title in favor of the assignee, and allowed the impleadment of plaintiff No.3 as a party to the suit.
Final Decision: The court allowed the application for impleadment of plaintiff No.3 and directed the plaintiff to file amended memo of parties within two weeks and affidavits by way of evidence within eight weeks.
I.A. No. 4986/2005:
G.S. Sistani, J. (Oral)- This is an application filed by the plaintiff under Order 22 Rule 10 read with Order 1 Rule 10 and Section 151, CPC.
2. The plaintiff has filed the present suit for permanent injunction, restraining the defendants from infringement of trade mark, copyright, passing off, damages, rendition of accounts and delivery, etc. against the defendants. The issues in the suit have been framed.
3. The present application has been filed during the pendency of the suit. The plaintiff No.1, who was the proprietor of various trade marks, including subject trade mark, HAYWARDS 5000 SUPER STRONG BEER in Clause 32 registered under No. 436774 have been assigned the Trade Mark to the SKOL Breweries Limited, corporate office at Jalahaiii Camp Road, Yeshwantpur, Bangalore, by virtue of deed of assignment dated 27.5.2005. It is submitted by learned Counsel for the plaintiff that after the deed of assignment dated 27.5.2005 simultaneously both the parties i.e. the assignee and the assignor have filed TM-23 before the Registrar of Trade Marks on 27.5.2005 itself, in compliance with the provisions of Section 45 of the Trade Marks Act, 1999. He further submits that as of now to the best of his knowledge no objections have been filed before the Registrar, Trade Marks. The Registrar, Trade Marks is yet to register the assignment in favour of SKOL Breweries Limited. Pending the final registration, he has moved this application for impleadment of SKOL Breweries Limited as plaintiff No.3 to the suit.
4. Learned Counsel for the defendant has objected to this application primarily on the grounds: (i) that till the time the provisions of Section 45 of the Trade Marks Act, 1999 are complied with and even to the extent that till the Registrar, Trade Marks records satisfaction and in fact registers the assignment in favour of the assignee, the present application is not maintainable; and (ii) that under the provisions of Order 22 Rule 10 of the Code of Civil Procedure there can only be a substitution which would mean that only plaintiff No.3 should be permitted to continue with the suit and the name of the plaintiff Nos. 1 and 2 ought to be deleted, as also admittedly the plaintiff has stated in para 8 of the application that by virtue of sale deed of assignment dated 27.5.2005, the plaintiff Nos. 1 and 2 would only remain as formal parties.
5. I have heard learned Counsel for the parties. Prima facie the plaintiff No. 3 and the plaintiffs have filed TM-23 which is, an application jointly filed by the assignor and the assignee. The suit is at the stage where the issues have been framed and the evidence is yet to be led.
6. During the course of hearing it was put to the learned Counsel for the plaintiff whether the question with regard to the admissibility of the assignment would be kept open or not, he has fairly conceded that since the suit is not at the final stage, the question of admissibility of the deed of assignment be kept open, subject to the plaintiff No.3 being added as a party.
7. Keeping in view that the suit has been instituted by the plaintiff Nos. 1 and 2, the plaintiff Nos. 1 and 2 are certainly proper parties. As even otherwise, admittedly, the assignment has yet not become final as the Registrar, Trade Marks has not recorded his satisfaction, no useful purpose would be served, if their names are deleted, at this stage. In any case, they may not be necessary party, but are considered to be proper parties in the suit. Learned Counsel for the defendant has drawn my attention to a decision of a Single Bench of this Court in Jagatjit Industries Limited v. Registrar of Trade Marks, 2000 PTC 16, to canvass his point that till the Registrar, Trade Marks, records his satisfaction and registers the title in favour of the assignee, such an application would not be maintainable in the Court.
8. In the present case considering the statement made by learned Counsel for the plaintiff that till the time Registrar ent
