The information available at the
Trademark Registry records is for the public to know about the
marks that are registered and it is the general presumption, that
the information so made available is true and correct unless any
evidence to the contrary is adduced. Therefore, an act of not
informing about an assignment of trademark to the Trademark
Registry may result in misleading the Registry about vital facts
and at the same time affect the decision of an ongoing legal
In the case of Hygienic
Research Institute Private Limited v M/s Solvay Pharmaceutical
Marketing and Licensing decided by the IPAB (Circuit Bench,
Mumbai), a similar situation arose. RK Dewan & Co. ,
represented the Appellant (Hygienic Research) and filed an
opposition against the registration of the mark 'SILKIS' as
it was deceptively similar to its client's mark
'SILKISS'. Further, RKD's lawyer argued that the goods
as well as the channel of trade were the same therefore, increasing
the likelihood of confusion in the mind of an average consumer with
imperfect recollection. The Appellant's opposition notice was
responded to by Respondent 1 (Solvay Pharma) in the form of a
counterstatement. Respondent No. 1 also filed evidence in support
of its Trademark Application (in 2002). The Deputy Registrar of
Trademarks (DR), upon examining the documents submitted to it by
the parties, dismissed the Appellant's opposition. This order
was appealed before the IPAB . The Respondent No.1 had assigned its
trademark to another party in 1996; however, this material fact was
brought to the notice of the DR only after the opposition
proceedings had been concluded after being informed of this
material information, the DR suo motu invoked Section 12
of the Act (concurrent use).
The Respondent No. 1 relied on a
previous IPAB decision wherein the merger of an entity during the
opposition proceedings was allowed as an amendment in the status of
the proprietor of the mark. The IPAB rejected Respondent No.
1's analogy of comparing the situation of a merger with that of
an assignment. It was held that in the case of a merger both
the parties were sailing in the same boat whereas, in case of
an assignment, the assignor no longer had any role to play, it is
the assignee that shall have the rights thereon from the date of
assignment. The IPAB also rejected the DR's order of invoking
Section 12, of the Act, as this was seen as inventing special
circumstances in a case and was a flagrant violation of the
principles of natural justice. The decision of DR was set aside and
the DR was instructed to decide the matter afresh.
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