India: An Assignee Can Claim User As A Subsequent Proprietor Only If The Assignor Had A Right In The Mark

Last Updated: 25 August 2011
Article by Sonam Lhamu Bhutia

In the case of Shyam Traders v Spatial Commercial (P) Ltd. an application for the removal of a trade mark had been filed to stay/ restrain the effect and operation of the registered trademark during the pendency of the rectification application.

M/s Shyam Traders (Applicant) carried on their business of manufacture and trade of pan masala and tobacco mixed pan masala (Gutkha), under the registered trade mark 'SHYAM BAHAR', and on account of it's prior adoption and continuous use by them the Applicants were the proprietors of the said mark.

It was alleged that Spatial Commercial (Respondent) had adopted the impugned trade mark 'SHYAM BAHAR' which was identical and deceptively similar to that of the Applicant's trade mark. Further, that the registration of the trade mark 'SHYAM BAHAR' by the Respondents had been secured by mala fide intentions and by playing fraud upon the registrar of Trade Marks.

In this regard the Intellectual Property Appellate Board (IPAB) in its Order cited that the registration granted to the respondent ought to be removed under the following grounds:

  1. Because the respondent's adoption was dishonest and that the applicants were proprietors of the identical trade mark on the date of application for registration of the impugned trade mark.
  2. Because the impugned trade mark would have caused confusion and deception, as the rival marks were deceptively similar.
  3. Because the impugned trade mark had not acquired any distinctiveness;
  4. Because the impugned registration was contrary to the provisions of sections 9,11 and 18 of the Act.
  5. Because the impugned mark did not have any user at the time of filing of the application for registration.
  6. Because the impugned mark was on the Register without sufficient cause and was wrongly remaining in the Register.
  7. Because it was in the interest of the purity of the Register that the impugned trade mark be removed.
  8. Because there was no special circumstances or any other reason which was in favour of the respondent.
  9. Because the applicant was a person aggrieved and could maintain this action.

The Respondent contented that the Applicant was not a person aggrieved within the meaning of provisions of the Act, and had filed the application out of business jealousy and for the purpose of harassing the Respondent. The respondent further relied on the grounds of rectification and stated that the contents made in the grounds were frivolous. The claim of adoption and use since 1986 was wrong, for the Applicant had concealed the fact that the opposition proceedings were pending as regards the registrations relied on by the applicant.

It was contended on behalf of the Applicant that registration for the impugned trade mark was made in the year 2003 claiming user since 1985 for which no proof had been filed and that the defendant had obtained the impugned registration by fraud. Further, the Applicant had filed a suit in the year 1998 where a compromise was entered into between the parties where the Defendant had given up the rights of the impugned trade mark and admitted the Applicant's proprietorship. By this compromise made and the deed of assignment entered into in 2003 the trade mark 'SHYAM BAHAR' was assigned by S.S Trading in favour of M/s Spatial Commercial Private Limited.

The IPAB observed that the main issue for consideration was to see whether the applicant was a person aggrieved and had locus standi to file and maintain an application for rectification. The Board opined that the Applicant was a person aggrieved since he was engaged in the same trade as the respondent and was likely to be injured in his trade by the registration complained of. With regard to the allegation that respondent had obtained registration by playing fraud, it was noted that when S.S Trading had given up their right in the trade mark as early as 1999, they could not have assigned in the year 2003. Only if the assignor had a right in the mark, the assignee i.e. the present respondent could have claimed user since 1985 as a subsequent proprietor.

It was thus held that having given up the right in the trade mark, S.S Trading had no right to assign the trade mark in favour of the Respondent. The respondent coming to know of the fact that the assignor had given up their right could not have proceeded with the application for registration. The Respondent had, therefore, played fraud on the registrar in obtaining the registration. The impugned mark was thus wrongly remaining on the Register without sufficient cause and had to be cancelled.

The Board accordingly directed the Registrar of Trade Marks to remove/cancel the trade mark 'SHYAM BAHAR' from the register.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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