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2025 Supreme(Mad) 5240
IN THE HIGH COURT OF JUDICATURE AT MADRAS
N. ANAND VENKATESH, J.
Dasaprakash Restaurant And Ice Cream Parlour Pvt. Ltd. – Appellant
Versus
The Deputy Registrar Of Trademarks Intellectual Property Office Building
(T) CMA (TM) No.2 of 2023
Decided On : 16-12-2025
For the Appellant : Mr.Arun C.Mohan
For the Respondent: Mr.C.V.Ramachandramurthy, Mr.Praveen For Mr.G.K.Muthukumar
Mr.S.P.Vijayaraghavan, Mrs.C.Gladys Daniel
Trademark rights, being a family asset, cannot be transferred unilaterally; agreements made by an insolvent party are void.
Headnote:This appeal arises under Section 19(1) of the Trade Marks Act, 1999, challenging an order rejecting the appellant's request for trademark rights over 'Dasaprakash'. The court found the MOU dated 16.01.2001 as non-binding, emphasizing that trademark rights, being a family possession, cannot be unilaterally transferred. The appellant's claims were based on a misunderstanding of the executed agreements and the insolvency status of a key partner inhibiting any lawful rights transfer. The appeal is thus dismissed.
Result: 'The order passed by the 1st respondent dated 20.01.2009, is confirmed and this Appeal stands dismissed. No Costs.'
| Table of Content |
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| 1. the appeal challenges the refusal of trademark rights registration. (Para 1 , 2 , 8) |
| 2. the mou is not legally binding and cannot confer trademark rights. (Para 10 , 12 , 13 , 16) |
| 3. trademark is jointly owned; unilateral transfer is invalid due to insolvency. (Para 14 , 15 , 20) |
| 4. the court reaffirms the decision of the lower authority. (Para 23 , 24) |
JUDGMENT :
N. ANAND VENKATESH, J.
This appeal has been filed under Section 19 (1) of the Trade Marks Act, 1999 (for the sake of brevity, hereinafter referred to as 'the Act') against the order passed by the 1st respondent dated 20.08.2009, rejecting the request made by the appellant on Form TM-24 in respect of registered Trade Mark No.309327 in Class 30.
2.The case of the appellant is that they have obtained rights pertaining to the Trademark through a legally binding and enforceable Memorandum of Understanding (MOU) dated 16.01.2001 between the proprietor of the Trademark “Dasaprakash” and “Hotel Dasaprakash” viz., Mr.Balakrishna Rao and the appellant.
3.As per the MOU, the proprietor agreed to sell/transfer all the Franchise Agreement except the Agreements in Delhi and Madras to a proposed newly incorporated private limited company. The Proprietor was entitled to open any restaurant in India or abroad as per a family settlement and by virtue of the same, he wanted to transfer that right to use the name of “Dasaprakash” to the appellant Company. A sum of Rs.50 Lakhs along with 40% shareholding in the Company was given in favour of the proprietor and the proprietor agreed to transfer all the Franchisee Agreements pertaining to operations at Agra, Lucknow, Kanpur, Jaipur and Chandigarh.
4.The very next day, on 17.01.2001, the appellant Company was incorporated and the said Balakrishna Rao was inducted as a promoter-shareholder and as a director of the appellant Company.
5.On 11.11.2001, it is alleged that the said Balakrishna Rao by concealing the fact that he had moved a petition to declare himself as an Insolvent and that an interim order also was passed in that petition, entered into an Agreement with the appellant. In this Agreement, the Assignor/Transferor acknowledged the receipt of Rs.32.5 Lakhs by way of cheque and a sum of Rs.17.5 Lakhs was also set off towards liabilities.
6.On the strength of the above Agreements, the appellant applied for registration of the Marks “Dasaprakash”, “Dasa” and symbol “D” with a crown in the name of the appellant. After due examination of the application, the Registrar of the Trademarks granted registration of the Trade Mark symbol “D” with a crown and entered the same in the Register of Trademarks.
7.On 25.09.2003, the interim order that was passed was made absolute by the High Court by declaring the Assignor/Transferor as Insolvent.
8.During January 2009, the appellant decided to record their rights over the Trademark assigned/transferred to the appellant vide MOU. Hence, an application was filed requesting the Registrar to record the rights of the subsequent co-proprietor in the place of the Assignor/Transferor in Form TM-24. The Registrar of Trademarks received objections and conducted hearing and ultimately, by the impugned proceedings dated 20.08.2009, the application was refused to be entertained. Aggrieved by the same, the present appeal has been filed before this Court.
9.This Court has carefully considered the submissions made on either side and also the materials available on record.
10.The specific case of the appellant is that they have obtained rights pertaining to the Trademark “Dasaprakash” vide MOU dated 16.01.2001 entered into with one of the co-proprietors of the Trademark viz., K.Balakrishna Rao. This MOU dated 16.01.2001, stricto sensu cannot be called as an Agreement and at the best, it can only be termed as an Agreement to enter into a future Agreement. This is in view of the fact that the appellant Company itself came into existence only on 17.01.2001. Therefore, as an entity, the appellant Company could not ha
