2010 Supreme(SC) 1069

2010 (8) Supreme 239
SUPREME COURT OF INDIA
Aftab Alam and R.M. Lodha, JJ.
Infosys Technologies Ltd. — Appellant
versus
Jupiter Infosys Ltd. & Anr. — Respondents
Civil Appeal Nos. 5743-5745 of 2005
Decided on : 9-11-2010

IMPORTANT POINT
Pre-requisite for exercise of power under Section 46(1) of Trade and Merchandise Marks Act, 1958 is that the applicant is a person aggrieved.

Headnote:Trade Marks Act, 1999-Section 100-Trade and Merchandise Marks Act, 1958 - Sections 46 and 56-Appeals against order passed by Intellectual Property Appellate Board whereby it ordered removal of appellant’s mark ‘Infosys’ from register of trade marks in respect of computer stationery, computer manuals, printed matter for computer, instructional and teaching materials, computer hardware and peripherals and machine and machine tools-Plea of appellant that an application for rectification, whether under Section 46 or Section 56 of the 1958 Act, can only be preferred by a person aggrieved, the applicant must not only be a person aggrieved on date of application but must continue to remain a person aggrieved until such time as rectification application is finally decided- Contention of appellant that respondent 1was not shown to have ever traded or intended to trade in any goods covered by appellant’s registrations under Classes 7 and 16 and as such respondent1 was not a ‘person aggrieved’ with regard to appellant’s registrations under these two classes-In the first place, when respondent 1applied for rectification/removal in respect of three registrations in Classes 7, 9 and 16, it must have shown in respect of each of them that it was a ‘person aggrieved’ and IPAB must have separately considered in respect of each registration the locus standi of the first respondent as the considerations for each entry might not have been common- During the pendency of applications, certain events had taken place which had some bearing on the question of locus standi of respondent1 insofar as invocation of Section 46 (1) of the 1958 Act was concerned- In the affidavit filed by respondent 1 an unequivocal and categorical statement had been made that now there was no dispute between appellant and respondent1 under the Trade Mark and that defendant had already changed the Trade Mark namely “Jupiter International Ltd.” in place of “Jupiter Infosys Ltd.”-Grievance of applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided- If during the pendency of such application, applicant’s cause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest- In the circumstances, held that applications made by respondent1 for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB in accordance with law Appeals allowed in part. (Paras 33 to 35)

        Trade and Merchandise Marks Act, 1958 - Sections 46 –Scope and ambit of-In terms of Section 46(1), not only applicant has to show that he is an aggrieved person as his interest is being affected but the IPAB must also be satisfied, before it directs removal of registered trade mark, that applicant is an aggrieved person before it invokes the power in directing the removal of registered trade mark- This is so because pre-requisite for exercise of power under Section 46(1) is that the applicant is a person aggrieved. (Para 32)

       Facts of the Case :

        Present Appeals have been filed against order passed by Intellectual Property Appellate Board whereby it ordered removal of appellant’s mark ‘Infosys’ from register of trade marks in respect of computer stationery, computer manuals, printed matter for computer, instructional and teaching materials, computer hardware and peripherals and machine and machine tools. Plea of appellant that an application for rectification, whether under Section 46 or Section 56 of the 1958 Act, can only be preferred by a ‘person Aggrieved, the applicant must not only be a person aggrieved on date of application but must continue to remain a person aggrieved until such time as rectification application is finally decided- Contention of appellant that respondent 1was not shown to have ever traded or intended to trade in any goods covered by appellant’s registrations under Classes 7 and 16 and as such respondent1 was not a ‘person aggrieved’ with regard to appellant’s registrations under these two classes.

       Findings of the Court :

        In the first place, when respondent 1applied for rectification/removal in respect of three registrations in Classes 7, 9 and 16, it must have shown in respect of each of them that it was a ‘person aggrieved’ and IPAB must have separately considered in respect of each registration the locus standi of the first respondent as the considerations for each entry might not have been common- During the pendency of applications, certain events had taken place which had some bearing on the question of locus standi of respondent1 insofar as invocation of Section 46 (1) of the 1958 Act was concerned. In the affidavit filed by respondent 1 an unequivocal and categorical statement had been made that now there was no dispute between appellant and respondent1 under the Trade Mark and that defendant had already changed the Trade Mark namely “Jupiter International Ltd.” in place of “Jupiter Infosys Ltd.”.Grievance of applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided. If during the pendency of such application, applicant’s cause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest. In the circumstances, held that applications made by respondent1 for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB in accordance with law.

       Appeals allowed in part

       Result : Appeals allowed in part.