M/S. THUKRAL MECHANICAL WORKS versus P.M. DIESELS PVT. LTD. & ANR.

M/S. THUKRAL MECHANICAL WORKS versus P.M. DIESELS PVT. LTD. & ANR.

A rectification application for non-user under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958 cannot be maintained solely against the assignee of a trade mark if the alleged period of non-user relates to the assignor; the assignor is a necessary party. Trafficking allegations must be proved with the assignor as party. Assignment of a registered mark not yet extinguished by law is valid, and the assignee derives assignor's rights. The Board must adjudicate with all necessary parties present.

Parties
Appellant: M/s. Thukral Mechanical Works; Respondent No.1: P.M. Diesels Pvt. Ltd.; Respondent No.2: Unknown (Anr.)
Jurisdiction
India
Judgment Date
18 December 2008
Procedural Posture
Civil Appeal / Appeal From High Court Decision Referring Rectification to Board; Supreme Court Judgment
Outcome
Appeal allowed; High Court judgment set aside.
Legal Topics
Trade Marks, Trade and Merchandise Marks Act, 1958, Assignment of Trade Marks, Rectification of Register, Non User of Trade Mark
Intellectual Property Trade Marks Trade and Merchandise Marks Act, 1958 Assignment of Trade Marks Rectification of Register Non User of Trade Mark

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Parties

M/s. Thukral Mechanical Works

Appellant

P.M. Diesels Pvt. Ltd.

Respondent No.1

Unknown (Anr.)

Respondent No.2

Procedural Posture

Civil Appeal / Appeal From High Court Decision Referring Rectification to Board; Supreme Court Judgment

Legal Issues

  1. 1 Whether a rectification application under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958 for non-user can proceed in the absence of the original registrant/assignor.
  2. 2 Whether non-user of a trade mark disentitles the registered proprietor/assignee from renewal and/or assignment.
  3. 3 What are the rights of an assignee of a registered trade mark in the period following assignment when non-user is alleged?

Ratio Decidendi

A rectification application for non-user under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958 cannot be maintained solely against the assignee of a trade mark if the alleged period of non-user relates to the assignor; the assignor is a necessary party. Trafficking allegations must be proved with the assignor as party. Assignment of a registered mark not yet extinguished by law is valid, and the assignee derives assignor's rights. The Board must adjudicate with all necessary parties present.

Court Disposition

Appeal allowed; High Court judgment set aside.

Orders

  • Board to determine afresh the rectification application in light of legal principles stated.
  • Costs of Rs.1,00,000/- awarded to appellant.