Ashish Mukherjee, Ron Industrial Corporation vs Ranjit Kumar Mukherjee And Sanghamitra Banerjee, Trading As Weldequip And The Assistant Registrar Of Trade Marks

S. Jagadeesan, J

The appellant filed an application No. CAL 703 before the Assistant Registrar of Trade Marks, the second respondent herein, for rectification of

the registered Trade Mark No.460870 B in class 12 of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act), in the name

of Ranjit Kumar Mukherjee and Sanghamitra Mukherjee, trading as Weldequip, the first respondent herein.

During the pendency of the rectification application before the Registrar, an interlocutory application was filed on behalf of one S.R.A. Brakes

Private Limited, claiming to be the registered proprietor stating that the said Weldequip was a partnership and was taken over as ongoing concern by

S.R.A. Brakes Private Limited and now it is recorded as the subsequent proprietor of the trade mark in question in the Register of Trade Marks. The

said S.R.A. Brakes Private Limited further stated in the interlocutory application that the petitioner is not an aggrieved person under the provisions of

Section 56 of the Trade and Merchandise Marks Act, 1958 and the applicant is not trading in any of the goods falling under class 12 of the

classification. The applicant filed the detailed comments with regard to the interlocutory application. However, the Assistant Registrar of Trade Marks

rejected the rectification application filed by the applicant herein on the ground that the application is pre-mature as the same was filed on 18.1.1995

when the mark was registered in the name of the first respondent on 20.4.1995. As against the same, the appellant filed an appeal TMA/2/1999, on

the file of the High Court of Calcutta. By virtue of Section 100 of the Trade Marks Act, 1999, the said appeal was transferred to this Board and

numbered as TA/302/2004/ TM/KOL (RECT).

During our sitting at Kolkata, we heard the appeal on 6.12.2004. The applicant appeared in person. The first respondent was represented through

counsel Ms. Sangita De Mukherjee.

The appellant questioned the authority of the Assistant Registrar in numbering the rectification petition and calling upon the first respondent to file

their reply, when the disputed trade mark was not registered on the date of the application. We find from the impugned order that the applicant filed

the rectification petition on 18.1.1995. The impugned trade mark was registered only on 20.4.1995, i.e., subsequent to the date of filing of the

application. Hence, we asked the appellant to convince us on the fact that the application for rectification was filed subsequent to the registration of

the impugned trade mark. The applicant pleaded ignorance of the date of registration of the impugned trade mark. When the factual statement made

in the impugned order was not disproved, we have to take it that the same is correct.

The applicant sent a letter dated 7.12.2004, which was received by the Registry on 13.12.2004, wherein he has stated that the respondent in the

interlocutory application did not mention about the maintainability of the rectification application and as such the Assistant Registrar allowing the

interlocutory application cannot be sustained. He also mentioned about the expunging of the earlier mark on merits. From the letter we are able to see

that the only contention of the applicant is that in the interlocutory application filed by S.R.A. Brakes Private Limited, the issue of pre-maturity of the

application is not taken and further S.R.A. Brakes Private Limited was not a party to the proceedings and they have not impleaded themselves as

necessary parties. In such a circumstance, the Assistant Registrar ought not to have entertained the interlocutory application filed by S.R.A. Brakes

Private Limited, a third party to the proceedings and allowed on the same sermises.

We have also perused the interlocutory application filed by S.R.A. Brakes Private Limited, who is not a party to the proceedings. If they claim that

they are the subsequent proprietors, they ought to have filed an application to get themselves impleaded in the rectification proceedings, which they

have not done. Further, as rightly pointed out by the appellant, there is no mention about the pre-maturity or the maintainability of the rectification

application in the interlocutory petition filed by the third party. When that be so, the Assistant Registrar ought not to have entertained the interlocutory

application. Even assuming that by mistake the interlocutory application was entertained, we find that the interlocutory application was allowed not on

any of the grounds mentioned therein. The Assistant Registrar has found himself that the application for rectification was filed prior to the registration

of the impugned trade mark and rejected the application for rectification. In that case, he could have done it suo-motu as he is empowered to do so

under the statute without any reference to the interlocutory application filed by a third party to the proceeding. There is no need to allow the said

application also. We are unable to agree with the Assistant Registrar of Trade Marks in entertaining the interlocutory application and allowing the

same. We find there is some force in the contention of the appellant. On this ground if we set aside the impugned order of the Assistant Registrar of

Trade Mark and remit the matter back for fresh disposal, on the facts and circumstances of the case, it will only satisfy the technical objection of the

appellant. Even if we set aside the order on the ground that the interlocutory application filed by the SRA Brakes Limited who is a third party to the

proceedings and also on the ground that the applicant therein did not raise the maintainability of the rectification application, the Assistant Registrar

cannot maintain the rectification petition. When once it is found that the application of the appellant for rectification is pre-mature on the ground that

the application preceded the registration, there is no purpose in remanding the matter back for fresh disposal. As already stated, the applicant is not in

a position to convince us that his application for rectification is subsequent to the date of registration of the first respondent's mark. Once the

application is pre-mature, there is no other option except to reject.

Now that it is brought to the notice that S.R.A. Brakes Private Limited is the subsequent proprietor, the applicant can verify that also and seek for

the rectification of the impugned mark by impleading the necessary and proper parties.

The petition for rectification is maintainable only if the mark is registered. Section 56(1) of the Trade and Merchandise Marks Act, 1958, makes it

clear that the High Court or the Registrar is empowered to make such order as it may deem fit for cancelling or varying the registration of a trade

mark, on an application made by the aggrieved person in the prescribed manner. Hence, it is clear that the cancellation or variation is only in respect of

the registered trade mark. When the application of the appellant is prior to registration of the mark, the application itself is not maintainable. Hence, we

do not find any infirmity in the impugned order of the Assistant Registrar rejecting the application of the appellant for rectification of the impugned

trade mark as pre mature.

The appeal is therefore dismissed as devoid of any merit. No costs. However, we make it clear that the appellant is at liberty to file a petition for

rectification afresh if he desires or is advised so.