Financial Daily from THE HINDU group of publications
Saturday, Dec 11, 2004

News
Features
Stocks
Cross Currency
Shipping
Archives
Google

Group Sites

Industry & Economy - Courts/Legal Issues
Marketing - IPR


`Conditional registration of trademark illegal'

Our Legal Correspondent

Chennai , Dec. 10

THE Registrar of Trade Marks had erred in registering a trademark by imposing conditions as to the area of operation, the Intellectual Property Appellate Board, Chennai has held.

In its recent order, the board averred that the Registrar having upheld the opposition of the respondents under Sections 11 and 12 of the Trade & Merchandise Marks Act, 1958, had no other option but to reject the application of the appellant for registration of the trademark. The Assistant Registrar, Chennai, without discussing the evidence available on record with regard to the claim of the appellants as the earlier user (of the trademark) had granted the relief under Section 12(3) by restricting the area. Since the Assistant Registrar had committed a mistake in taking up the application of the appellants, his order was liable to be set aside.

The appellants, B. Mohamed Yousuff, filed their appeals against the order dated January 30, 2004, of the Assistant Registrar on their application dated September 15, 1992 for registration of the trademark `Maharaja' with the device of man caricature claiming the user of the said trademark since September 12, 1979. The respondents, P. Doraisamy Gounder & others, filed their notice of opposition. The respondents contended that they were using the trademark `Maharaja' in respect of goods raw and polished rice in South India since 1980 onwards. The respondents' mark being well known in the market, the registration of the appellants' mark was likely to cause confusion and deception during the course of the trade. Hence, the registration would offend Section 11 of the Act. The appellants were not the proprietors of the said trademark in accordance with Section 18(1) of the Act.

The appellants submitted while denying the allegations made by the respondents, that they had adopted the mark honestly and independently. After hearing both the sides, the Assistant Registrar found that the objection of the respondents under Section 9 could not be sustained since the trademark `Maharaja' did not have any direct reference to the character and quality of the goods, and as such the mark was distinctive. However, the Assistant Registrar upheld the objection of the respondents finding that the respondents' mark was well known during the course of the trade. Also, the Assistant Registrar upheld the objection of the respondents finding that the respondents were the prior users of the disputed trademark.

So far as the objection with regard to the proprietorship was concerned, the Assistant Registrar overruled the same and found that the appellants were the proprietors of the trademark. Having so found, the Assistant Registrar imposed a condition that the appellants should use the trademark along with the name of the appellants' firm prominently with the address for sale of goods, viz rice in Tamil Nadu only. Consequently, he dismissed the opposition filed by the respondents and allowed the application of the appellants for registration of the trademark.

The Appellate Board, comprising the Chairman, Mr Justice S. Jagadeesan, and Vice-Chairman, Dr Raghbir Singh, said that there was no need for any discussion in regard to the claims of the parties. The respondents had contended that the Assistant Registrar having upheld the opposition of the respondents had no other option but to reject the application of the appellant. The Assistant Registrar without discussing the evidence available on record with regard to the claim of the appellants as the earlier user had granted relief by restricting the area.

The board said that there was absolutely no need for the Assistant Registrar to independently discuss the claim of the appellants and permit them to have the registration by imposing condition. When there was absolutely no evidence with regard to the prior user by the appellants, the findings by the respondents would give a quietus to the issues involved in the application of the appellants. Secondly, the Assistant Registrar had committed a mistake in taking up the application of the appellants without any relevance to the orders passed by him in the application of the respondents.

The appellant, the board said, had registered under the Central Sales Tax and consequently, it could be inferred that the appellant was having trade outside Tamil Nadu. After perusing the bills produced by the appellant, it was found that all the sales of the appellant were fined to Tamil Nadu. If really the appellants wanted to have a claim under Section 12(3) of the Act, then, they could have claimed for their right outside Tamil Nadu. If such plea had been put forth, there could have been some justification for their claim outside Tamil Nadu. Now that the board had held that the appellants could not have registration, their application was liable to be dismissed. The appeals were dismissed.

More Stories on : Courts/Legal Issues | IPR

Article E-Mail :: Comment :: Syndication :: Printer Friendly Page



Stories in this Section
`Conditional registration of trademark illegal'


Industrial growth tops 10 pc in Oct
Labour cost gap widens between India, China
8 pc growth sustainable: Chidambaram
Customs duty cut in ensuing Budget will not hurt domestic industry: PHDCCI
Indo-UK bilateral trade to register 20 pc growth
`Normalcy in Iraq crucial for stability in oil prices'
BPCL sees 6 pc growth in petro product sales
Govt rules out regulatory body for steel sector
Double taxation pact with Mauritius to be revisited
Acting out life's eternal struggle
Nepal seeks joint ventures with Indian textile firms
AP plans Rs 220-crore project to recycle wastewater for industrial use
Broadcasters should not deny content to distributors: TRAI
Employers want ID Act dismantled
Karnataka to expand apparel park
Thiruvananthapuram AIR, DD staff stage sit-in
Kerala: Transfers to be cancelled
Ellora Aurangabad fest begins today



The Hindu Group: Home | About Us | Copyright | Archives | Contacts | Subscription
Group Sites: The Hindu | Business Line | Sportstar | Frontline | The Hindu eBooks | The Hindu Images | Home |

Copyright 2004, The Hindu Business Line. Republication or redissemination of the contents of this screen are expressly prohibited without the written consent of The Hindu Business Line