RAJIV SAHAI ENDLAW, J.

1. Though the plaintiff has instituted the suit for permanent injunction restraining infringement of trade mark THEOBID in relation to medicinal and pharmaceutical preparation and passing of by using the trade mark THEOBID-D, also in relation to medicinal preparations, the counsel for the plaintiff for interim relief has argued only on the basis of infringement of registered trade mark and not on the basis of passing of.

2. The first question to be decided therefore is whether, prima facie, the plaintiff is the registered proprietor of the trade mark and entitled to maintain an action for infringement. The question has arisen because the trade mark is stated to be registered in the name of M/s Natco Fine Pharmaceuticals Private Limited vide registration No. 440830 dated 26th July, 1985 and valid till 26th July, 2016; that the said trade mark was assigned to the plaintiff alongwith its goodwill vide deed of assignment dated 31st October, 1998. The plaintiff claims to have applied in Form TM 24 dated 25th July, 2000 to the Registrar of Trade Marks for entering the name of the plaintiff as the subsequent proprietor of the said trade mark.

Section 45 of the Trade Mark Act, 1999 is as under:

“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 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.”

The same corresponds to Section 44 of the Trade and Merchandise Marks Act, 1958

3. It is contended by the counsel for the defendant on the basis of –

a) Section 2(1) (v) defining registered proprietor in relation to a trade mark, as meaning the person for the time being entered in the register as proprietor of the trade mark;

b) Section 28 providing that the registered proprietor of the trade mark shall have the exclusive right to the use of the trade mark and to obtain relief in respect of infringement thereof;

c) Section 29 also referring to a Register Trade Mark; and

d) Section 45(2) prohibiting the court from admitting into evidence any document as proof of assignment of trade mark unless the same is registered that the plaintiff inspite of assignment deed in its favour but without being registered with the Registrar as the proprietor of the trade mark is not entitled to maintain an action for infringement of the registered trade mark.

4. Reliance in this regard is placed by the counsel for the defendant on Soundarapandian Match Works v M Jayarama Chetty PTC (Suppl) (2) 145 (Mad) and Shaw Wallace & Co Ltd v Superior Industries Ltd 2007 (35) PTC 782 (Del).

5. In the first of the aforesaid judgments, a learned Single Judge of the Madras High Court held that having regard to the rigour of Section 44 of the Old Act, as long as the registration of the ass

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