Ramesh L. Vadodaria vs Assistant Registrar Of Trade Marks And Anr.

S. Jagadeesan, J

The appellant has filed this appeal against the Order of the Assistant Registrar of Trade Marks, dated 11,7.1994, arising out of a suo-motu

proceeding initiated by him under Section 56(4) of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act), for rectification

of the registered Trade Mark No. 415740 in class 83 in the name of Sri Madhukar L. Vadodaria, Shri Hiten J. Patel and Mrs. Indra A. Lakhani,

trading as M/s. Electro Appliances, and in the matter of assignment thereof in the name of Shri Ramesh L. Vadodaria, vide entry dated 18.1.1994, on

the Register of Trade Marks.

The case of the appellant is that the Trade Mark ""CRYSTAL"" registered under No. 415740, in respect of spoons, forks, kitchen knives and other

table cutlery of all kinds included in Class 8 was registered in the name of S/Shri Madhukar L. Vadodaria, Hiten J. Patel and Mrs. Indira A. Lakhani,

trading as M/s. Electro Appliances. The three partners executed a deed of assignment in his favour on 2.9.1992 and as per the terms of the

assignment deed, the assignment is effective from 31.3.1992. Subsequent to the assignment deed, the partnership concern Electro Appliances seems

to have undergone some changes by induction of two new partners and retirement of two partners viz., Shri Hiten J. Patel and Mrs. Indira A. Lakhani

were retired. One of the newly inducted partners one Shri Hemang M. Patel, made a representation to the Registrar of Trade Marks, stating that the

two partners retired on 21.7.1992 as per the partnership retirement deed and the partnership concern had undergone a change by the induction of Shri

Hemang J. Patel and Damji L. Vadodaria with effect from 1.4.1992, in the place of the retired partners. Subsequent to the change in the partnership,

the retired partners, alongwith one other partner had executed a deed of assignment in favour of the appellant and the assignment deed being executed

by the persons who are no longer the partners of the firm, the assignment deed, in favour of the appellant is invalid. Consequently, the appellant cannot

derive any right from out of the said assignment deed. However, on the basis of the assignment deed, the Registrar of Trade Marks has entered the

name of the appellant as the assignee of the Trade Mark in respect of the products which the firm is entitled to manufacture. On the basis of the said

representation of the said Shri Hemang J. Patel, the Registrar of Trade Marks initiated proceedings under Section 56(4) of the Act, and passed the

impugned Order finding that the assignment deed dated 2.9.1992 had not been executed by all the partners or the registered proprietors of the firm and

hence is not a valid document and that the entry in the Register indicates the extent of assignment and what has been revealed in the assignment deed

dated 2.9.1992, and that the mode of assignment effected by assignment dated 2.9.1992 are contrary to the provisions of the Act and directed

expunging of the entry dated 18.1.1994, in respect of the assignment of the registered trade Mark No. 415740 in favour of the appellant.

Aggrieved by the said Order, the appellant preferred the Appeal No. 6/1994, on the file of the High Court of Gujarat at Ahmedabad and the same

was transferred to this Board pursuant to Section 100 of the Trade Marks Act, 1999, and numbered as TA/250/2004/TM/AMD.

The learned counsel for the appellant Shri Yagnesh J. Trivedi raised the following contentions:

The Registrar of Trade Marks had initiated the proceedings for rectification only on the basis of the representation sent by Shri Hemang M. Patel

and hence, it cannot be construed as the proceedings initiated suo-motu by the Registrar.

When one of the Partners of the firm made a representation to the Registrar for rectification raising the plea that the assignment in favour of the

appellant is not valid, the said partner ought to have filed an application as prescribed under Section 56(1) of the Act. In the absence of the application

in the prescribed form, the Registrar ought not to have initiated any proceeding for rectification.

The Registrar has totally failed to consider that the assignment deed in favour of the appellant, though executed on 2.9.1992, by the three partners

of the firm, stating that the assignment is with retrospective effect from 31.3.1992, ; during which period, the assignors were the partners.

The Deed of Retirement as well as the reconstitution of the Partnership firm were executed only on 3.9.1992, a day subsequent to the Deed of

Assignment and both the documents were ante-dated, which is clear from the date mentioned by one of the witnesses in the Deed of Reconstitution of

the firm, viz., 3.9.1992.

On the contrary, Shri P.M. Thakkar, the learned senior counsel for Respondent No. 2, contended that the Registrar of Trade Marks owe a duty to

maintain the Register with correct entries. If he gets and information with regard to any mistake in the entries or any wrong entries in the Register,

depending upon the genuineness of the information, using his discretion, it is open to him to initiate suo-motu proceedings under Section 56(4) of the

Act. If any application under Section 56(1) is filed, the Registrar has no discretion, but to initiate the proceedings by issue of notices. In this case,

though it is open to the partners of the 2nd respondent to file an application under Section 56(1), one of the partners has chosen to send a

representation to the Registrar bringing out the wrong entry in the made in the Register of Trade Marks at the instance of the appellant herein on the

basis of an invalid document. The Registrar initiated proceedings by issuing notices to the respective parties as contemplated under the Act. Both the

parties were heard through their counsel and ultimately, the impugned Order was passed. Hence, there is no infirmity in the Order of the Registrar and

it cannot be said that the Registrar has committed an error or illegality in initiating the proceedings under Section 56(4) of the Act.

He further added that the entry in the Register of Trade Marks is not in conformity with the terms of the Assignment Deed relied upon by the

appellant, even assuming for the purpose of argument that the Deed of Assignment is valid. In such circumstances, certainly the entry in the Register

of Trade Marks cannot be said to be in conformity with the Assignment Deed and on this ground also, the entry had been expunged which is quite in

conformity with Section 56(1) of the Act.

The learned Senior Counsel further contended that the Registrar had expunged the entry dated 18.1.1994, on the ground that the appellant cannot

be a valid Assignee in respect of the products mentioned in the Assignment Deed as it is contrary to the terms of Section 39 of the Act. Hence, there

is absolutely no infirmity in the Order of the Registrar calling for any interference by this Appellate Board.

We have carefully considered the contentions of both the learned counsel.

So far as the first contention raised by the learned counsel for the appellant that the proceedings cannot be said to be considered as a suo-motu

proceedings under Section 56(4) of the Act is concerned, we are unable to agree. It is true that Sub-section (1) of Section 56 of the Act contemplates

the aggrieved person to file an application for rectification. But, that does not mean that he has no right to bring it to the notice of the Registrar of

Trade Marks, about the wrong entries in the Register maintained by him. Sub-section (4) of Section 56 empowers the Registrar to initiate suo-motu

action, whenever he comes to know about the wrong entries or mistaken entries are in the Register maintained by him. He may get such knowledge

either by himself or through some information. When he comes across certain factors or by way of some representation. Such representation may be

by a person who is not interested in the Trade Mark, but may be interested in the trade. It may also be by a person who is interested in the Trade

Mark itself. When the Registrar becomes aware about such wrong entries, he is duty bound to make an enquiry by issuing notices to the parties. In

this case, the Registrar had issued notices to the respective parties, i.e., the appellant and the Partners of the 2nd respondent firm.

What is contemplated under Section 56 is that the Registrar is empowered to remove any mark or expunge any entries from the Register, when he

finds that the remaining of the same is wrong or mistake. The only procedure contemplated is that the parties must be heard before every such Order

of removal or otherwise any correction in the Register is made. Though the learned counsel for the appellant very much contended that no notice was

served, he himself has pointed out to the notice issued by the Registrar for which the appellant also sent a reply dated 31.3.1994. Thereafter, for

subsequent hearings, the records reveal notices were served and there is no dispute that the appellant was represented by counsel and contested the

proceedings. Hence, we are of the view that there is no merit in the contention of the learned counsel for the appellant that the procedure

contemplated under the Act, i.e., issue of notices to the respective parties was not followed. Apart from this, so far as the proceedings initiated by the

Registrar under Section 56(4) also we see no infirmity as we have already held that the Registrar, as the custodian of the registered marks, is duty

bound to maintain the Register with correct entries. If any mistake is pointed out, without going into the technicalities, he has to find out the truth or

otherwise in the representation or the genuineness of his own awareness. He has to find out the same by issue of notice to the concerned parties and

holding a full fledged enquiry. In such circumstances, we are of the view that the objection raised by the learned counsel for the appellant that one of

the Partners Shri Hemang M. Patel of the 2nd respondent firm made a representation without following the procedure prescribed under Section 56(1)

of the Act and as such, the representation ought not to have been entertained by the Registrar to initiate suo-motu proceedings under Section 56(4) of

the Act is only too technical. The Registrar being the quasi judicial authority and discharges the judicial functions, when he considers the claims of rival

parties, he is not expected to stand on technical formalities, Maintenance of unsubtle Register of Trade Marks and rendering of justice must be the

predominant factor and as such, we do not find any substance in the argument of the learned counsel of the appellant.

Insofar as the second contention of the learned counsel for the appellant that the Assignment Deed in favour of the appellant though dated

2.9.1992, executed by the original Partners S/Shri Madhukar L. Vadodaria, Hitesh J. Patel and Mrs. Indira A. Lakhani, by virtue of the recital in the

said Assignment Deed, that the appellant is to hold the trade mark as an Assignee absolutely from 31.3.1992, the appellant has become the Assignee

not on 2.9.1992 but much earlier as on 31.3.1992, is concerned, in our view, there cannot be any assignment with retrospective effect unless there is

some oral agreement between the parties earlier in point of time and under written agreement, the parties had confirmed such terms of oral agreement

were acted upon. The later written document is only to confirm the rights of the parties arising and accrued in accordance with the earlier oral

agreement. A reading of the Assignment Deed does not reveal any such earlier agreement between the parties. When the Assignment Deed

executed on 2.9.1992 assigning the right in the trade mark in favour of the appellant, it is not clear as to how he can become an assignee as early as

on 31.3.1992, especially when the written document alone confers the right. Under no imagination, it can be considered to be the assignment earlier to

the date of the document. When that be so, the claim of the appellant that he is deemed to be an assignee since 31.3.1992 cannot be accepted.

Even assuming that the document dated 2.9.1992 confers a right of assignment in favour of the appellant, what is the right assigned in his favour is

to be considered. A recital in the document is to the effect that the assignee has no right, title to use 'CRYSTAL' brand for kitchen knives and kitchen

wares and one cutlery set model ""FEMINA"" as per attached leaflets. The further recital is that the assignor is the absolute owner and have all rights

for CRYSTAL brand for kitchen knives, kitchen wares and Femina model cutlery sets. The Deed of Assignment further adds that the appellant is the

absolute owner and have all rights for CRYSTAL brand for spoons, forks and other table cutlery of all kinds included in Class 8 except kitchen knives,

kitchen wares and Femina cutlery sets. The assignment specified by mentioning that the assignor hereby assigns into the assignee all rights, title in and

to the said trade mark together with the goodwill of the spoon, forks and other table cutlery of all kinds included in Class 8 in respect of the said trade

mark. Only on the basis of this Assignment Deed, the appellant made a request to the Registrar of Trade Marks to enter his name as proprietor of the

trade mark in respect of the goods assigned in his favour. At page 34 of the typed set of documents, the certificate issued by the Registrar of Trade

Marks entering the name of the appellant is available. In the certificate the following products are mentioned: spoons, forks, kitchen knives and other

table cutlery of all kinds included in Class 8. Definitely the inclusion of kitchen knives in the certificate is not in conformity with the deed of

assignment. When that be so, the entry made on 18.1.1994 on the request of the appellant on Form No. TM 24, dated 17.1.1994, cannot be said to be

in conformity with the assignment deed and as such, the entry is liable to be expunged.

The next contention of the learned counsel for the appellant is that the two partners S/Shri Hiten J. Patel and Mrs. Indira A. Lakhani, having

executed the assignment deed alongwith Shri Madhukar L. Vadodaria, had decided to opt out of the partnership and brought out a change in the

partnership of the firm on 3.9.1992. The change in the partnership being subsequent to the Deed of Assignment in favour of the appellant, on the date

of the assignment deed, the three who are the executants of the assignment deed are the partners and as such, the assignment deed is valid. It is

further contended that even assuming that there was a change in the partnership concern as early as on 21.7.1992, as put forth by the 2nd respondent,

even then, since the deed of assignment dated 2.9.1992 assigned the trade mark in respect of the products mentioned in the assignment deed in favour

of the appellant with effect from 31.3.1992, the change in the partnership put forth by the 2nd respondent is subsequent to 31.3.1992. On this ground

also, the assignment deed in favour of the appellant is valid as it takes back to 31.3.1992 much earlier than the change in the partnership concern put

forth by the 2nd respondent.

Earlier, we have discussed with regard to the validity of the retrospective assignment pleaded by the learned counsel for the appellant and we have

held that there cannot be a retrospective assignment unless the deed of assignment relates to the confirmation of an earlier transaction supposed to

have taken place between the parties. Such a plea is not raised and the assignment deed also does not specify about such an earlier agreement

between the parties. In that case, the assignment deed can be valid from 2.9.1992 on which date as put forth by the 2nd respondent, there was a

change in the partnership and the partners of the firm as on that date had not signed the assignment deed. Hence, we have to conclude that the

assignment deed set in motion by the appellant to get the entry of his name in the Register of Trade Marks is not legal and valid and consequently, the

Registrar is right in expunging the entry made at the request of the 2nd respondent pursuant to the invalid assignment deed.

Yet another contention of the learned counsel for the appellant that the retirement deed of the two partners, i.e., Shri Hitesh J. Patel and Mrs.

Indira A. Lakhani as well as the reconstitution of the firm was only on 3.9.1992. This argument was advanced by the learned counsel on the basis of

the date available below the signature of one of the witnesses in the document evidencing the reconstitution of the firm. However, the deed dated

21.7.1992, wherein it has been mentioned that the partners were retired with effect from 31.3.1992. When the deed is dated 21.7.1992 and about eight

persons have signed, the witnesses alongwith the inducted partners and' the retired partners and none of them had put their date below their signature,

the only one witness had put the date below his signature may be highly improbable. Even assuming that one of the witnesses alone had given the date

below the signature and the others were cautious enough not to mention the date, then the only date available below the signature of one of the

witnesses could have been struck off or erased. The availability of the date also raises a doubt as to manipulation when none of the signatories

mentioned the date below their signature. The only date below the signature of one of the witnesses pointed out by the learned counsel for the

appellant do not tempt us to conclude that the document might have been concocted subsequent to the date of assignment in favour of the appellant

just to deprive him of his rights under the assignment deed. Hence, we do not find any merit in this argument also.

Yet another argument advanced by the learned counsel for the appellant is that after the reconstitution of the firm, the new partners, by a

document dated 3.9.1992, had confirmed the assignment made by the erstwhile partners and as such, it is not open to the newly inducted partners of

the second respondent to go back from such confirmation of assignment in favour of the appellant. This contention also deserves no merit for the

simple reason that one of the newly inducted partners Shri Hemang J. Patel did not sign the confirmation document dated 3.9.1992. When all the

partners have not joined in the execution of the confirmation deed in favour of the appellant, the said document is not a valid and legal one confirming

the assigned right in favour of the appellant. Hence, this contention also fails.

In view of the above findings, we do not interfere with the well considered impugned Order of the Registrar of Trade Marks. Accordingly, the

appeal is dismissed. No costs.