Proper opportunity for barring a decree for rectification or removal of registered trade mark.

LAKSHMANAN J.

Original Petition No. 358 of 1982 was filed by Fatima Tile Works, Marathakkara, Trichur, Kerala, under section 56 read with section 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter called "the Act"), for rectification of the register or removal of the registered trade mark granted in favour of one Madura Co. Ltd. and later assigned in favour of Sudarsan Trading Company (hereinafter called "STC"). Original Petition No. 309 of 1983 was filed by Standard Tile Factory (Pvt.) Ltd., Karuvannur, Trichur district, represented by its managing director, Mr. Balan against STC, Calicut, and against the Deputy Registrar of Trade Marks, Madras 6, under section 56 read with section 107 of the Act for rectification of the register or removal of the registered trade mark.

The contesting respondent in both the original petitions is Sudarsan Trading Co. (STC), Calicut 1.

The short facts are as follows :

The trade mark in question was registered under No. 2763 in Part A of the register as of the date July 29, 1942, in class 19 in respect of bricks and tiles, roofing tiles, ceiling tiles, ventilators, skylights, all being made from clay and/or fireclay materials in the name of Madura Co. Ltd., trading as Feroke Tile Works, Calicut, South India.

Pursuant to a request in form TM-24, dated May 16, 1969, and order thereon dated June 28, 1969, STC, the first respondent was registered as subsequent-proprietor of this mark, as from April 23, 1967, by virtue of the deed of assignment, dated August 23, 1968. In the certificate dated April 23, 1976, issued by the senior examiner of trade marks, Trade Marks Registry, Bombay, it is mentioned that the registration of the aforesaid trade mark which has been renewed from time to time will remain in force for a period of seven years from July 29, 1985, and may be renewed at the expiration of that period and of each succeeding period of seven years. As stated above, the trade mark was registered under No. 2763 in Part A of the register as on July 29, 1942 (clause 19), originally in the name of Madura Co. Ltd., trading as Feroke Tile Works, Calicut. The registration was renewed for a period of 15 years from July 29, 1949. Again it was renewed from time to time. According to the petitioner, the first respondents registration of the trade mark under No. 2763 under clause 19 is liable to be expunged on the following grounds :(a) The first respondent has been guilty of improper assignment or transmission of the registered trade mark in favour of Eastern Clay Works, Calicut 1 ;

(b) Eastern Clay Works have not applied to the Registry notifying their assignment in terms of sections 41 and 44 of the Act ;

(c) The first respondent-STC has not been using the mark registered by them and on the ground of non-user, the registration is liable to be cancelled in terms of section 46 of the Act, by parting with the trade mark rights in favour of Eastern Clay Works ;

(d) Only the registered user is entitled to maintain a suit against the petitioner herein and inasmuch as Eastern Clay Works is not the registered user of the trade mark in question, the petitioner, as the aggrieved person, is entitled to maintain the above original petition in this court for rectification in terms of section 56 of the Act ;

(e) The trade mark registered in the name of STC is liable to be removed on account of dishonesty on the part of STC and in the public interest.

Therefore, the petitioner filed the above petition (O. P. No. 358 of 1982) for a decree directing cancellation or expunging the registered trade mark with the device "umbrella" under No. 2763 registered in the name of the first respondent from the register of trade marks in the office of the Deputy Registrar of Trade Marks, Shastri Bhavan, Madras 6.

The petitioner in Original Petition No. 309 of 1983 has also made similar allegations in his original petition and prayed for a decree directing cancellation or expunging of the registered trade mark with the devic