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2013 Supreme(Mad) 4019
High Court of Judicature at Madras
R. SUBBIAH, J.
M/s. Nico Quality Products Rep. By Its Partner K.C. Vijay, Chennai
Versus
M/s. N.C. Arya Snuff & Cigar Co Rep. by Its Partner S. Chandrasekaran, Chennai & Others
O.A.Nos.667 & 668 of 2013 in Civil Suit No.605 of 2013
Decided On : 03-12-2013
Advocate Appeared:
For the Petitioner:M/s. K. Harishankar, Advocate.
For the Respondents:M/s. G. Rajan, Advocate.
Headnote:
TRADEMARKS - INFRINGEMENT - INTERIM INJUNCTION - ASSIGNMENT - REGISTRATION - STAMP DUTY - CONDITIONS PRECEDENT - APPLICABILITY OF SECTION 42 OF THE TRADE MARKS ACT, 1999 - SUFFICIENCY OF STAMP DUTY - APPLICABILITY OF SECTION 35 OF THE STAMP ACT, 1899 - APPLICABILITY OF RULE 72 OF THE TRADE MARKS RULES, 2002 - APPLICABILITY OF SECTION 45 OF THE TRADE MARKS ACT, 1999 - APPLICABILITY OF SECTION 49 OF THE REGISTRATION ACT, 1908.
Fact of the Case:
The applicant, a partnership firm, claimed to have acquired 10 trademarks from the 1st respondent, also a partnership firm, by way of an assignment deed executed by one of the partners of the 1st respondent. The applicant filed two applications seeking interim injunctions, one to restrain the respondents from infringing the trademarks and the other to restrain them from passing off their products using the applicant's trademarks. The respondents denied the validity of the assignment deed and contended that it was forged and fabricated. They also argued that the assignment was not registered within the time limit prescribed under Section 42 of the Trade Marks Act, 1999, and that the deed of assignment was not duly stamped as required under Section 35 of the Stamp Act, 1899.
Finding of the Court:
The Court held that the applicant had failed to make out a prima facie case for the grant of interim injunctions. It found that the assignment deed was not registered within the time limit prescribed under Section 42 of the Trade Marks Act, 1999, and that the deed of assignment was not duly stamped as required under Section 35 of the Stamp Act, 1899. The Court also held that the applicant was not the prior user of the trademarks and therefore, could not seek an injunction to restrain the respondents from passing off their products using the applicant's trademarks.
Issues: 1. Whether the assignment of trademarks was valid and enforceable? 2. Whether the applicant had made out a prima facie case for the grant of interim injunctions?
Ratio Decidendi: 1. The Court held that the assignment of trademarks was not valid and enforceable as it was not registered within the time limit prescribed under Section 42 of the Trade Marks Act, 1999, and the deed of assignment was not duly stamped as required under Section 35 of the Stamp Act, 1899. 2. The Court held that the applicant had failed to make out a prima facie case for the grant of interim injunctions as it had not established the validity of the assignment deed and was not the prior user of the trademarks.
Final Decision: The Court dismissed the applications for interim injunctions.
R. Subbiah, J.
1. Original Application No.667 of 2013 has been filed seeking for grant of interim injunction restraining the respondent, its men, agents, servants or person acting on its behalf from infringing the applicant's registered trademarks bearing numbers 454103, 454106, 454109, 592763, 180448, 180449, 559308, 178484, 179074 and 194656 in Class 34, in any manner either by using the applicant's word mark and/or logo or otherwise in relation with the products manufactured and marketed by the respondents, pending disposal of the suit.
2. Original Application No.668 of 2013 has been filed seeking for grant of interim injunction restraining the respondent, its men, agents, servants or persons acting on its behalf from passing-off the products manufactured and marketed by them using the applicant's trademark or any other mark deceptively similar or closely resembling the applicant's mark, in any manner either by using the applicant's word mark and/or logo described in the Schedule to the Judge's Summons or otherwise in relation with the products manufactured and marketed by the respondents, pending disposal of the suit.
3. The applicant herein is the plaintiff and the respondents herein are the defendants in the suit.
4. The case of the applicant/plaintiff is as follows:-
4(a). The applicant/plaintiff viz., M/s. Nico quality Products is a partnership firm and they are carrying on business of marketing and supply of Snuff and Cigar products in India and abroad. The 1st respondent/1st defendant is also a partnership concern, having three partners viz., 1)S.Chandrasekaran, 2)S.Thara & 3)V.Anuradha. The 1st respondent/D1-firm was originally the owner and proprietor of Trade Marks Nos.454103, 454106, 454109, 592763, 180448, 180449, 559308, 178484, 179074 and 194656 in Class 34 in the name of 'N.C.Arya Snuff & Cigar Co”. One of the partners of the 1st respondent/D1-firm viz., V.Anuradha was authorized vide., Authorization Letter dated 27.10.2011 by the other two partners, to act on behalf of the 1st respondent/D1-firm to enter into any lawful deed of assignment to assign the above said trademarks owned by the 1st respondent/D1-firm in favour of a prospective purchaser. Based on the said letter of authorization the said V. Anuradha, partner of the 1st respondent/D1-firm, had transferred and assigned the above said trademarks in favour of the applicant herein for consideration of Rs.75 lakhs under the Assignment Deed dated 15.12.2011 on behalf of the 1st respondent/D1-firm, the receipt of which was acknowledged by the 1st respondent/D1. Further, it was agreed between the applicant/plaintiff and the 1st respondent/D1 that the 1st respondent/D1 would be allowed to market and supply the snuff and cigar stock already produced by them within 12 to 18 months from the date of execution of the said Assignment Deed and thereafter, all the rights will remain with the applicant/plaintiff, who would then be the exclusive manufacturer and seller of snuff and cigar products under the said trademarks.
4(b). Subsequent to the assignment of the aforementioned trademarks in favour of them, the applicant/plaintiff conducted a market survey and also contacted dealers/distributors for commencing manufacture and sale. The applicant/plaintiff commenced their business of manufacturing and marketing the snuff and cigar products under the trademarks assigned to them from August-2013. In compliance with the trademark law, on 19.08.2013 the applicant/plaintiff submitted Form TM-24 to the Registrar of Trademarks, Guindy, Chennai, requesting to register the applicant/plaintiff as the subsequent proprietor of the said trademarks, which were assigned to the applicant/plaintiff. At that juncture, the applicant/plaintiff came to know that the 1st respondent/D1-firm was continuing to manufacture and sell the products under the trademarks, which were already assigned to the applicant/plaintiff, even after expiry of the grace period given to them to clear the stocks
