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 proceeding.
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.
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.
