Siddhartha JaIn Vs. M/S. Seth Industrial Corporation and Another - Court Judgment

SooperKanoon Citationsooperkanoon.com/1117845
CourtIntellectual Property Appellate Board IPAB
Decided OnSep-04-2009
Case NumberM.P.No.118/2009 IN TRA/114/2004/TM/DEL
JudgeHON’BLE SHRI Z.S. NEGI CHAIRMAN & HON’BLE SHRI SYED OBAIDUR RAHAMAN TECHNICAL MEMBER
AppellantSiddhartha Jain
RespondentM/S. Seth Industrial Corporation and Another
Excerpt:
(circuit bench sitting at delhi) honble shri syed obaidur rahaman, technical member: this is an application for amendment of rectification petition filed by the applicant for cancellation of the registered trade mark nos.245305, 564427 and 564785 of the respondent no.1 before the honble high court of delhi under c.o. no.05/2002 which are now transferred to this appellate board. the applicant has taken several grounds for rectification of the registered trade marks including grounds of non-user of such registered trade marks by the respondent no.1. 2. the miscellaneous petition for permission to amend the rectification application was taken up for hearing at circuit bench sitting at delhi on 08th july, 2009. shri. m.l. mangla and shri manish singhal appeared on behalf of the applicant and shri gurvinder singh and ms. supreet kaur appeared on behalf of the respondent no.1. 3. learned counsel for the applicant submits that the amendment sought for is necessary to show and bring on record the history and sequence of proprietorship pertaining to trade mark. the applicant state that in para 4 of the rectification application, the details of the predecessor and use of the mark inadvertently and erroneously not mentioned. the para 2a is now sought to be inserted to incorporate the above referred omitted particulars which read as under:- “2.a. that the trade mark “neelam” in respect of ‘cycle tyres, tubes and rims was originally adopted by the mother of applicant namely smt. prabhawati jain trading as m/s. neelam international traders. the said trade mark/trade name “neelam” was adopted y the said predecessor smt. prabhawati jain from the name of her daughter “neelam”. the said predecessor used the said trade mark “neelam” in respect of the said goods since 1969 till 1999 through itself as well as through her husband shri naresh chand jain who was also the exclusive licensee of the said predecessor from 1974 till 1992 as well as through the applicant from 1992 till 1999. thereafter, by virtue of deed of assignment dated 17.02.1999, the said trade mark “neelam” in respect of ‘cycle tyres, tubes and rims was transferred by the said predecessor smt. prabhawati jain to her son sh. siddharth jain (the present applicant-for-rectification) along with the goodwill of the business in which the said trade mark “neelam” was being used by the said predecessor. thus, the applicant became the proprietor of the said trade mark “neelam” in respect of ‘cycle and rickshaw tyres, tubes and rims. 4. learned counsel for the applicant relied on the following judgments: (i) 2003 (27) ptc 175 (sc) – lakha ram sharma vs. balar marketing private limited-where it was held that while considering whether the amendment is to be granted or not, the court does not go into the merits of the matter and decide whether or not the claim made therein is bonafide or not. that is a question which can only be decided at the trial of the suit. merely because an amendment may take the suit out of the jurisdiction of that court is no ground for refusing that amendment. therefore, there is no any justifiable reason on which the high court has refused this amendment. accordingly, the impugned order is set aside and that of the trail court is restored. (ii) ipab order no.184/2008 dated 17th december 2008 – m.p. no.214/2009 in ta/187/2003/tm/del [c.m(m) no.70 of 2002] mr. jawahar lal aggarwal vs. registrar of trade marks, new delhi and m/s. capital meters limited – where the amendment application was allowed subject to payment of rs.2000. (iii) 1997 ptc (17) savitri industries vs. minda industries – where it was held that the application filed by the plaint under order vi rule 17, order xxii rule 10 read with section 151 of the code of civil procedure, 1908 is allowed subject to payment of cost all the above mentioned judgments are in favour of amendment of plaint. 5. thereafter the counsel for the applicant submits that this amendment sought for bonafide, in the interest of justice, equity and goods conscience it is a formal amendment, how he came to in position of the owner of trade marks. no change of nature and character of plaint so that the amendment application be allowed. 6. learned counsel for the respondent no.1 vehemently opposed the application and submits that this application is not bonafide and in rectification application there is no provision of amendment. in support of this contention, counsel for the respondent no.1 referred the following judgments:- (i) 2006 (33) ptc 140 (ipab) anand bansal vs. shiva tobacco company and anr. it was held that the object of rule is to allow all amendments, at any stage of the proceedings, which may be necessary for the purpose of determining the real question of controversy between the parties subject to that it does not cause injustice or prejudice to the other side. it is a settled principle of law that subsequent events to the institution of the suit, so far they are in consonance with the original cause of action should be permitted to be brought on record by way of amendment and where it was found that by permitting the proposed amendments neither the nature of the suit nor the cause of action would change, held, amendment could be allowed. no amendment of plaint can be allowed, if because of lapse of time some right has vested in the other part and the effect of amendment would tantamount to the taking away that right. it was also held that no amendment can be allowed after the trial has commended, unless the court comes to the conclusion that in spite of due diligence, the party could not have raised the matter before the commencement of trial. (ii) (2006) 12 supreme court cases 1 ajendraprasadji n. pandey and another vs. swami keshavprakeshdashji n. and others where it was held that no facts were pleaded nor were any grounds raised in the amendment application to even remotely contend that despite exercise of due diligence those matters could not be raised by the appellants. the amendment application was dismissed on the ground that the appellants had not been able to show in context of the proviso to order vi rule 17 cpc that before the commencement of the trial, the appellants could not have raised the matter in spite of due diligence. all these judgements are against the amendment of plaint. 7. learned counsel also submits that when the trial is started, the amendment should not be allowed. therefore, this amendment application be rejected. 8. in view of the above submissions and judgments submitted by the both the parties, we are of the view that the amendment is a formal amendment and there is no major change of the plaint just a formal change, how he get the mark in his favour, at the time of preparing the plaint they are not elaborately discuss, how they have came to this position of owner of this trade mark. therefore, this amendment is formal amendment, applicant submitted three judgments which are applicable in the present case. therefore, the amendment petition is allowed subject to payment of cost of rs.2000/- by the applicant to respondent no.1 within one month on receipt of this order.
Judgment:

(Circuit Bench Sitting at Delhi)

Honble Shri Syed Obaidur Rahaman, Technical Member:

This is an application for amendment of Rectification Petition filed by the applicant for cancellation of the registered trade mark Nos.245305, 564427 and 564785 of the respondent No.1 before the Honble High Court of Delhi under C.O. No.05/2002 which are now transferred to this Appellate Board. The applicant has taken several grounds for rectification of the registered trade marks including grounds of non-user of such registered trade marks by the respondent No.1.

2. The miscellaneous petition for permission to amend the rectification application was taken up for hearing at Circuit Bench Sitting at Delhi on 08th July, 2009. Shri. M.L. Mangla and Shri Manish Singhal appeared on behalf of the applicant and Shri Gurvinder Singh and Ms. Supreet Kaur appeared on behalf of the respondent No.1.

3. Learned Counsel for the applicant submits that the amendment sought for is necessary to show and bring on record the history and sequence of proprietorship pertaining to trade mark. The applicant state that in para 4 of the rectification application, the details of the predecessor and use of the mark inadvertently and erroneously not mentioned. The para 2A is now sought to be inserted to incorporate the above referred omitted particulars which read as under:-

“2.A. That the trade mark “Neelam” in respect of ‘cycle tyres, tubes and rims was originally adopted by the mother of applicant namely Smt. Prabhawati Jain trading as M/s. Neelam International Traders. The said trade mark/trade name “NEELAM” was adopted y the said predecessor Smt. Prabhawati Jain from the name of her daughter “Neelam”. The said predecessor used the said trade mark “NEELAM” in respect of the said goods since 1969 till 1999 through itself as well as through her husband Shri Naresh Chand Jain who was also the exclusive licensee of the said predecessor from 1974 till 1992 as well as through the applicant from 1992 till 1999. Thereafter, by virtue of Deed of Assignment dated 17.02.1999, the said trade mark “NEELAM” in respect of ‘cycle tyres, tubes and rims was transferred by the said predecessor Smt. Prabhawati Jain to her son Sh. Siddharth Jain (the present applicant-for-rectification) along with the goodwill of the business in which the said trade mark “Neelam” was being used by the said predecessor. Thus, the applicant became the proprietor of the said trade mark “NEELAM” in respect of ‘cycle and rickshaw tyres, tubes and rims.

4. Learned counsel for the applicant relied on the following judgments:

(i) 2003 (27) PTC 175 (SC) – Lakha Ram Sharma vs. Balar marketing Private Limited-where it was held that while considering whether the amendment is to be granted or not, the Court does not go into the merits of the matter and decide whether or not the claim made therein is bonafide or not. That is a question which can only be decided at the trial of the Suit. Merely because an amendment may take the suit out of the jurisdiction of that Court is no ground for refusing that amendment. Therefore, there is no any justifiable reason on which the High Court has refused this amendment. Accordingly, the impugned order is set aside and that of the trail court is restored.

(ii) IPAB Order NO.184/2008 dated 17th December 2008 – M.P. No.214/2009 in TA/187/2003/TM/DEL [C.M(M) No.70 of 2002] Mr. Jawahar Lal Aggarwal vs. Registrar of Trade Marks, New Delhi and M/s. Capital Meters Limited – Where the amendment application was allowed subject to payment of Rs.2000.

(iii) 1997 PTC (17) Savitri Industries vs. Minda Industries – where it was held that the application filed by the plaint under Order VI Rule 17, Order XXII Rule 10 read with section 151 of the Code of Civil Procedure, 1908 is allowed subject to payment of cost

All the above mentioned judgments are in favour of amendment of plaint.

5. Thereafter the counsel for the applicant submits that this amendment sought for bonafide, in the interest of justice, equity and goods conscience it is a formal amendment, how he came to in position of the owner of trade marks. No change of nature and character of plaint so that the amendment application be allowed.

6. Learned counsel for the respondent No.1 vehemently opposed the application and submits that this application is not bonafide and in rectification application there is no provision of amendment. In support of this contention, counsel for the respondent No.1 referred the following judgments:-

(i) 2006 (33) PTC 140 (IPAB) Anand Bansal Vs. Shiva Tobacco Company and Anr.

It was held that the object of rule is to allow all amendments, at any stage of the proceedings, which may be necessary for the purpose of determining the real question of controversy between the parties subject to that it does not cause injustice or prejudice to the other side. It is a settled principle of law that subsequent events to the institution of the suit, so far they are in consonance with the original cause of action should be permitted to be brought on record by way of amendment and where it was found that by permitting the proposed amendments neither the nature of the suit nor the cause of action would change, held, amendment could be allowed. No amendment of plaint can be allowed, if because of lapse of time some right has vested in the other part and the effect of amendment would tantamount to the taking away that right.

It was also held that no amendment can be allowed after the trial has commended, unless the court comes to the conclusion that in spite of due diligence, the party could not have raised the matter before the commencement of trial.

(ii) (2006) 12 Supreme Court Cases 1 Ajendraprasadji N. Pandey and Another vs. Swami Keshavprakeshdashji N. and Others

Where it was held that no facts were pleaded nor were any grounds raised in the amendment application to even remotely contend that despite exercise of due diligence those matters could not be raised by the appellants. The amendment application was dismissed on the ground that the appellants had not been able to show in context of the proviso to Order VI Rule 17 CPC that before the commencement of the trial, the appellants could not have raised the matter in spite of due diligence.

All these judgements are against the amendment of plaint.

7. Learned counsel also submits that when the trial is started, the amendment should not be allowed. Therefore, this amendment application be rejected.

8. In view of the above submissions and judgments submitted by the both the parties, we are of the view that the amendment is a formal amendment and there is no major change of the plaint just a formal change, how he get the mark in his favour, at the time of preparing the plaint they are not elaborately discuss, how they have came to this position of owner of this trade mark. Therefore, this amendment is formal amendment, applicant submitted three judgments which are applicable in the present case. Therefore, the amendment petition is allowed subject to payment of cost of Rs.2000/- by the applicant to respondent No.1 within one month on receipt of this order.