Judgment:
Kalyan Jyoti Sengupta, J.
1. The application has been taken out by respondent Nos. 1 and 1A for granting leave to enter into permitted user and/or Registered user agreement of the trade marks registered under the numbers 1285, 92083 (by mistake in the prayer mentioned as 92088), 129959, 129960, 146830, 147188, and 214080.
2. This application is necessitated to be made because of the judgment and order dated 13th September, 1990 passed in the aforesaid matter by His Lordship the Hon'ble Mr. Justice Ajit Kumar Sengupta (as His Lordship then was). In this case there is a short history which I feel it to be narrated.
3. The Cycle Corporation of India (hereinafter referred to as Corporation) originally initiated the aforesaid proceedings in connection of which the present application has been made by the respondents, for removal of 12 trademarks of the respondent nos. 1 and 1A from the Registrar of Trade Marks under sections 32, 46, and 56 of the Trade and Merchandise Marks Act, 1958.
4. The above application was heard and dismissed but while dismissing this matter His Lordship the Hon'ble Mr. Justice A.K. Sengupta (as his lordship than was) was pleased to pass the following order :-
'However it is made clear that the respondents shall not assign or grant licence/permitted user of the trade marks in question in favour of anyboby in India without leave of this Court nor the petitioner will claim any right for alleged use of the marks.'
5. Against the aforesaid judgment and order both parties had taken up the matter to higher up for redressal of their respective grievances by filing appeal and cross objection respectively, having been affected thereby. The Division Bench of this Court, however, dismissed both the proceedings that is to say the Corporation's appeal and the cross objection taken by the applicants herein by two separate judgments and order delivered on two different dates. The Corporation filed SLP and it too was dismissed.
6. Now the judgment and order of Justice Sengupta dated 13th September, 1990 has now become conclusive in view of dismissal of SLP as above on 10th May, 1996.
7. Meanwhile, the applicants herein in or about January 1993 had filed an application for modification and/or clarification of the aforesaid portion of the Judgment and order whereby prayer was made for restraining or granting licence/permitted user of the aforesaid trade marks be varied and/ or modified and leave be granted to the petitioners to grant leave. That application is till pending.
8. Thereafter, on or about 22nd September, 1995 another application was made by the applicants herein for the reliefs as follows:-
'Leave he granted to the applicants to grant licence and/or enter into permitted user and/or registered user agreement of the above trade marks in favour of Tube Investment of India Ltd. of Madras (now Chennai).'
9. The aforesaid second application, however, was allowed by the learned trial Judge on remand made by the appellate Court upon initial order of learned trial Judge being set aside, but the benefit of the order could not be derived in view of the fact that said Tube Investment having ultimately backed out as submitted by Mr. Chakraborty. The present application has been taken out for the same identical relief for obtaining leave to assign and/or allow the user of the registered trade mark now this time in favour of third party, viz., Avery Cycle Industries Ltd. of G.T. Road, Dhandari Kalam, Ludhiana or any other bicycle manufacturer in India.
10. Mr. Goutam Chakraborty, learned Senior Advocate, appearing in support of this application contends that his clients have agreed to enter into an agreement with Avery Cycle Industries Ltd. under the provision of the Trade and Merchandise Marks Act, 1958 allowing it to use the registered trademark in relation to manufacture of the goods classified in the said registered trademarks.
11. He contends that this Court should grant leave as a matter of course without any exception. Because of the aforesaid prohibition his client cannot assign and/or allow user of the trade mark to third parties. The petitioner's above right is statutory one. The Corporation has nothing to say about this since their application has been dismissed. In fact he contends that Corporation has no locus standi to oppose this application. He also contends that their contentions and objections have been overruled previously.
12. Mr. Das, learned senior advocate while opposing this application contends the present application does not lie as no Lis is pending. So the applicants should come with appropriate proceedings. The judgment and order of the learned trial Judge has since been accepted by the Supreme Court as such it is not open for the applicants to apply to this Court for obtaining instant relief. Moreover, he contends that another application on the self-same and identical point has been pending. So this application does not lie.
13. He contends that the applicants have not been able to substantiate that they are the registered owner of the mark in relation to which leave has been asked for. Moreover, there is no ground or material stated in the petition for obtaining relief. He contends mere agreement to enter into an agreement is not an actionable right. In support of his contention he relies on two Calcutta decisions reported in : AIR1960Cal752 and 1998(1) CWN 109 and also Supreme Court decisions reported in : [1986]3SCR1029 , 1997(2) CHN 172 (paragraphs 24 & 25) and : AIR1997SC257 .
14. Having heard the respective contentions of Mr. Chakraborty and Mr. Das. Preliminary question raised by Mr. Das needs to be addressed first. The objection of maintainability of the application for the reason that no lis is pending, is in my view wholly baseless for simple reason, previously an application was allowed by the Hon'ble Mr. Justice Shyamal Kumar Sen (as His Lordship then was) and the same was accepted by the parties. It appears this point was specifically taken and dealt with by Justice Sen overrulling this objection. So this point is now hit by the principle of res judicata. Still then I wish to add further that for the purpose of granting leave to the applicant the Court retains its jurisdiction and/or power and this can be done in exercise of power under Section 151 of the Code of Civil Procedure in this proceeding itself. When the Court in exercise of discretion has passed the aforesaid order putting an embargo upon the applicants in matter of assignment and/or transfer of user to third party which is statutory right, only the Court can lift embargo in the same proceeding in exercise of its same inherent power. In my view the Court only for this purpose retains seisin over the matter though main controversy in the matter has been brought to end. In this case there is no other authority and nor any law under which the petitioner can be granted relief. Therefore, objection is overruled.
15. Next contention of Mr. Das is that mere agreement to enter into agreement do not form any basis or material to ask for the relief. I am unable to accept this submission as the agreement contemplated under Section 49 of the Act itself is an instrument for creating right or interest viz. assigning and/or permission for user of the trademark. This agreement is my view is not the agreement in the sense what Mr. Das says. So the analogy of agreement for sale of immovable property or for that matter movable property are not applicable here. Moreover, the applicants do not want to enforce any agreement for obtaining specific relief, rather prays for leave of this Court to apply for granting permissive user under statute that could have been done so as matter of course but for the said restriction. Another important point which may not be ignored is that this objection is hit by the principle of constructive res judicata as this point ought to have been taken in earlier proceedings. So all the decisions cited by Mr. Das are wholly inappropriate here.
16. Mere pendency of another proceedings does not stand in the way In disposing of the present application. So it was done by Justice Shyamal Kumar Sen previously. It is true that at present I do not find any material excepting statement for granting leave. More so, the leave obtained previously was not availed of on the plea that third party backed out. Leave cannot be granted on mere asking but for bonafide transaction. I hold, accordingly, the petitioners deserve leave being granted provided they substantiate bonafide. In order to ascertain bonafide of the petitioner condition should be imposed as mentioned hereinafter.
17. Mr. Das, learned counsel, appears when the judgment is being delivered and submits that since the registration of some of the marks have lapsed and the same are no longer valid and subsisting, there is no point in granting leave. He wants to renew his further submission that the applicants are not even proprietor of some of the marks. Under such circumstances, no order should be passed.
18. In my view, the aforesaid points are not to be dealt with by me. This Court has put an embargo having considered the applicants are the registered owner of the aforesaid marks. Justice Shyamal Sen has passed similar orders, so these points shall be scrutinised and decided by the authority concerned as mentioned under Section 49 of the Trade and Merchandise Marks Act, 1958. I am concerned in this case that whether the leave should be granted to enable the applicants to apply under the aforesaid section. However, the aforesaid contention and objection recorded by me shall obviously be taken into account by the authorities concerned and they will deal with the same. Mr. Chakraborty, learned counsel, however, denies and disputes the submissions of Mr. Das.
19. Under such circumstances, I grant leave to the applicants to apply to the concerned authority in accordance with law under Section 49 of the Trade & Merchandise Marks Act, 1958 to enter into agreement with Avery Cycle Industries Ltd. as stated in the prayer. This leave, however, will remain in force for a period of eight weeks from date. In the event the applicants take step by making application as above within the aforesaid time then this leave will remain absolute. I make it clear that if no such application is made within the aforesaid time then the leave will stand revoked upon expiry of eight weeks from date. This condition is put, because previously similar leave was obtained and that was proved to be infructuous for any reason whatsoever, in order to prevent repetition of the same mistake, as leave is always granted for meaningful purpose not for futility.
20. I make it clear because of this order it may not be construed any decision on merit has been rendered by this Court. This is for the authority concerned to take not of everything.
21. However, a notice of making of this application as above shall be served upon the Advocate-on-Record of Mr. Das in writing at least one week before making the same.
There will be no order as to costs.
All parties to act on a xeroxed certified copy of this dictated order upon usual undertaking.