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Judgment
S. Jagadeesan, J
The short question arising for consideration in this petition is whether the application for renewal and restoration in Form TM-12 and 13 filed by the
second respondent is valid and whether the order of renewal passed by the third respondent on the basis of the said application is legal and in
conformity with the requirements of the statute.
Admittedly, the first respondent is the registered proprietor of the impugned mark. They have failed to renew the same immediately on the expiry of
the registration. Not only the first renewal was not done, even after the expiry of the period for second renewal, the first respondent did not file any
application for renewal. In the meanwhile, the first respondent assigned the trade mark in favour of the second respondent and the second respondent
filed the application for renewal. Hence, the validity of the application filed by the second respondent and the legality of the renewal granted by the
third respondent are questioned.
In respect of the same trade mark an identical question arose in TRA/58/2003/TM/CH, where the respondents are the same but the petitioner was
different. We have elaborately considered the implications and the requirement of the statute and held that the application filed by the second
respondent in Forms TM-12 and 13 is not proper and as such the renewal ordered by the third respondent on the application of the second respondent
as illegal and not in conformity with the requirement of Section 25 (2) of the Trade and Merchandise Marks Act, 1958 which specifically mentions that
the Registrar shall renew the registration on the application of the registered proprietor, the second respondent being not the registered proprietor, their
application in Forms TM-12 and 13 cannot be entertained.
The learned counsel for the first respondent however contended in this petition that the Bombay High Court in the case of R.R. Oomerbhoy Pvt.
Ltd. Vs. Court Receiver, High Court, Bombay reported in 2003(27) PTC 580 (DB) (Bom) held that the Court Receiver was competent to bring an
action for infringement in the place of the registered proprietor and as such, it has to be construed that any third party can file the application for
renewal under Section 25(2) of the Act and it is not necessary that the registered proprietor of the mark alone has to file the application for renewal.
We are unable to accept the said contention of the learned counsel for the first respondent. In Oomerbhoy's case, it is clear that in a suit for
dissolution of the firm, Court Receiver was appointed as receiver of assets of partnership and since the assets include the goodwill and trade mark of
the firm, the Court Receiver becomes the registered proprietor of the trade mark of the firm and on infringement of which he is competent to bring
action for protecting the assets of partnership. Under no imagination we can conclude that the said principle is applicable to the facts of the present
case.
In view of our findings in TRA/58/2003/TM/CH, following the same principle, we have to hold that the renewal granted by the third respondent in
favour of the first respondent in respect of the impugned mark cannot be sustained. Consequently, this rectification petition is ordered and the third
respondent is directed to cancel the renewal granted in favour of the first respondent.
Accordingly, the application is ordered with no order as to costs.
The M.P. No. 30/2005 filed by the second respondent is dismissed.