infosys technologies ltd

Trade and Merchandise Marks Act, 1958: ss.46 and 56 – Application under, for removal/rectification of entry in the register of trade mark – Held: Can only be preferred by a `person aggrieved’ – The applicant must not only be a `person aggrieved’ on the date of the application but must continue to remain a `person aggrieved’ until such time the application is finally decided – To be a `person aggrieved’, there must be likelihood of some injury or damage to the applicant by such trade mark – In the instant case, while ordering removal of appellant’s mark from the register of trade marks, it was incumbent upon the IPAB to consider and satisfy itself about the locus standi of the applicant to be heard as a `person aggrieved’ – Having not done so, the applications for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB – Trade Marks Act, 1999. Words and phrases: Expression `person aggrieved’ – Connotation of, in the context of s.46 and s.56 of the Trade and Merchandise Marks Act, 1958. The first respondent filed three separate applications before the High Court under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 praying for the removal/rectification of the appellant’s mark `infosys’ from the register of trade mark in respect of Classes 7, 9 and 16. In the meantime, the 1958 Act was repealed by the Trade Marks Act, 1999 and the three petitions for rectification/removal of registered trade marks were transferred to the Intellectual Property Appellate Board (IPAB). In another suit filed by the appellant for infringement of trade mark, an affidavit was filed by the first respondent on July 14, 2004, wherein it was stated that the name of its company was changed from Jupiter Infosys Limited to Jupiter International Limited and no dispute was remaining between the parties under the trade mark. The IPAB allowed the three applications of the first respondent. The instant appeals were filed challenging the order of the IPAB. Partly allowing the appeals, the Court HELD: 1. Whether the application is under Section 46 of the Trade and Merchandise Marks Act, 1958 or under Section 56 or a composite application under both the sections, it is a pre-requisite that the applicant must be a person aggrieved. Section 46(1) enables any person aggrieved to apply for removal of registered trade mark from the register on the ground of non-use as stated in clause (a) and/or clause (b). To be an aggrieved person under Section 46, he must be one whose interest is affected in some possible way and it must not be a mere fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi. The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed – where it is a question of removal from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. Section 56 provides for varying situations in which the person aggrieved may apply for rectification of the registered trade mark from the register. Although both Sections, namely, Sections 46 and 56 require `person aggrieved’ to apply for removal of the registered trade mark from the register or rectification of a trade mark in the register, the expression `person aggrieved’ for the purposes of these two Sections has different connotations. Section 46 speaks for private interest while Section 56 speaks of a public interest. [Paras 27, 28, 30] [332-B-H] Hardie Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd. (2003) 11 SCC 92, relied on. The Royal Baking Powder Company v. Wright, Crossley, and Co. (1898) 15 RPC 677 – referred to. Kerly’s Law of Trade Marks and Trade Names (11th edition) – referred to. 2. It is true that the appellant in opposition to the applications for removal/rectification of trade mark did not specifically challenge in its counter affidavits the locus standi of the first respondent to be heard as a person aggrieved. Obviously, in the absence of any specific objection by the appellant to that effect, no specific issue was framed by the High Court whether the applicant was an aggrieved person. The applications were transferred to the IPAB in terms of Section 100 of the 1999 Act. The IPAB examined the matter in light of the issues that were framed by the High Court although in the written submissions before it, the objection was raised that the first respondent has ceased to have locus standi in view of the subsequent events, particularly, change of the name of the first respondent from Jupiter Infosys Ltd. to Jupiter International Ltd. It was incumbent upon the IPAB to consider and satisfy itself about the locus standi of the first respondent to be heard as a person aggrieved. In the first place, when the first respondent applied 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 is a `person aggrieved’ and the 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. Secondly, during the pendency of the applications, certain events had taken place which had some bearing on the question of locus standi of the first respondent insofar as invocation of Section 46(1) of the 1958 Act is concerned. In the affidavit filed by the first respondent on July 14, 2004 before the Additional District Judge, an unequivocal and categorical statement was made that there was not any more any dispute between the plaintiff (appellant) and defendant (first respondent) under the Trade Mark and that the defendant has already changed the name of the company from “Jupiter Infosys Ltd.” to “Jupiter International Ltd.” The grievance of the 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, the 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. The applications made by the first respondent for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB. The three applications are restored to the file of IPAB for hearing and disposal afresh in accordance with law. [Paras 30, 31, 34] [335-H; 336-A-G; 337-C-E] M/s. Eagle Potteries Private Ltd. v. M/s. Eagle Flask Industries Pvt. Ltd. AIR 1993 Bombay 185; L. Chandrakumar v. Union of India & Ors. (1997) 3 SCC 261; Agha Hyder Hussain & Anr. v. Omar Khayyam Wineries (Pvt.) Ltd. & Anr. AIR 1977 Mad 166; Nestle’s Products (India) Ltd. v. P. Thankaraja & Anr. AIR 1978 Mad 336; Kabushiki Kaisha Toshiba v. Tosiba Appliances Company & Ors. (2008) 10 SCC 766, referred to. Lever Brothers, Port Sunlight Ltd. v. Sunniwite Products Ltd. (1949) 66 RPC 84; The Ritz Hotel v. Charles of the Ritz (1989) RPC 333; Australian Wine Importers’ Trade Mark (1889) 6 RPC 311; In re Apollinaris Company’s Trade- Marks (1891) 2 Ch. 186; Philosophy Di Alberta Ferretti 2003 R.P.C. 15; Keystone Knitting Mills Trade Mark 1929 (1) Ch.D. 92; Motor Terms Company Pty. Limited. v. Liberty Insurance Ltd. (1967) 116 C.L.R.177 – referred to. Case Law Reference: (2003) 11 SCC 92 relied on Para 16 2008) 10 SCC 766 referred to Para 16 AIR 1993 Bombay 185 referred to Para 18 (1949) 66 RPC 84 referred to Para 18 (1989) RPC 333 referred to Para18 (1889) 6 RPC 311 referred to Para 18 (1997) 3 SCC 261 referred to Para 20 AIR 1977 Mad 166 referred to Para 21 2003 R.P.C. 15 referred to Para 21 1929 (1) Ch.D. 92 referred to Para 21 (1967) 116 C.L.R.177 referred to Para 21 AIR 1978 Mad 336 referred to Para 23 (1898) 15 RPC 677 referred to Para 29 AIR 1978 Mad 336 referred to Para 23 CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 5743-5743 of 2005. From the Judgment & Order dated 9.9.2004 of the Intellectual Property Appellate Board at Chennai in TRA Nos. 25 to 27/2003/TM/CH (OP Nos. 764 to 766/01). D. Banerjee, Akhil Sibal, Sushant Singh, Manav Kumar, Anusha Natarajan, Praveen Radhi, P.C. Arya, Gautam Panwani, V.K. Sinha (for S.K. Verma) for the Appellant. Vibhav Gaggar, Ajay Bhargava, Vanita Bhargava, Amit Verma, Saba Grover for the Respondents.

REPORTABLE IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION CIVIL APPEAL NOS. 5743-5745 OF 2005 Infosys Technologies Ltd. …… Appellant Vs. Jupiter Infosys Ltd. & Anr. …… Respondents JUDGMENT R.M. LODHA, J. These three appeals by special leave are directed against the order dated September 9, 2004 passed by Intellectual Property Appellate Board (for … Continue reading →