2010 (44) PTC 307 (Mad)
Key Words: parallel import, exhaustion, trade mark,
The Appellant in this case filed a suit for permanent injunction, restraining the Respondents from using the trade mark YARDLEY or any other phonetically similar expression in any media which can infringe the Applicant’s registered Trade Mark. The applicant alleged that the Respondent was passing off or attempting to pass off or causing, enabling or assisting others to pass off their talcum powder, body spray and other cosmetic preparations as and for the business and products of the Applicant.
The Plaintiff had earlier purchased the registered trademark, namely ‘Yardley’ with all its variants from Lornamead Group Ltd., which had got its trademark registered in India under the Trade Marks Act. Consequently after such purchase, the Plaintiff filed an application for getting the registration transferred in its name. Thus, the Plaintiff, being the assignee of the said trade mark, had the right to manufacture the said product in India and sell it using the said trademark. While so, without any manner of right, the Defendant tried to import the talcum powder and body spray having the Plaintiffs’ trademark from Singapore.
- The goods tried to be brought into India are nothing but the original products manufactured by the assignor of the Plaintiffs’ trade mark and in such a case, as per Section 30(2)(c) of the Trade Marks Act, 1999 no action would lie as against the Defendant. There is no embargo for importing genuine goods bearing the trademark similar to that of the trademark of the Plaintiff and the Plaintiff cannot claim monopoly over that trademark.
- The impugned goods have been imported from Singapore to India. The trader in Singapore virtually obtained those goods only from U.K. manufactured by the very assignor of the Plaintiff who still holds the trademark and manufactures goods in U.K. and exporting countries like Singapore, Malaysia etc.
- Bu virtue of Sections 28 and 29 of the Trade Marks Act, 1999, once the assignee (Plaintiff here) has got the assignment of the trademark from the original registered owner the former has got exclusive right to use it in India. If the Defendant is permitted to (parallel) import such product in violation of Clause (c) of Sub-section (6) of Section 29 of the Act, then the very purpose of the assignment of the trademark from the original owner would be rendered nugatory.
- Whether the Plaintiff has got the right to prevent the Defendant from importing those goods and trading in India;
- Whether a case for passing off was made in the present case.
The Defendant cannot import such goods into India.
The Hon’ble Madras High Court distinguished the present case from the Revlon Case as cited by the defendant and noted that among the principal and subsidiary companies, one cannot try to claim monopoly right as against the other.
When the assignor of the trademark transferred the trade mark in favour of the Plaintiff, the plaintiff acquired exclusive right to use it. A plain reading of Section 28 of the Trade Marks Act, 1999 amply make the point clear that the Plaintiff being the assignor of the trade mark is having the exclusive right of using it in India. If Section 28 of the Act is interpreted in any other manner, that would amount to rendering Sub-section (1) of Section 28 nugatory. Also, if the Defendant is allowed to import the goods bearing the Plaintiffs registered trade mark, then it would amount to violating Section 29(6)(c) of the Act.
Harmonious construction of legislation is the bed rock of interpretation of statutes. Sections 28 and 29 of the Act should be read conjunctively and Section 30 of the Act has to be read subject to Sections 28 and 29 of it. If Section 30 is read in isolation, it would render the aforesaid Sections 28 and 29 otiose. In fact, Section 30 should be treated as the proviso to Sections 28 and 29 of the Act.
Statute has to be interpreted keeping in view their objects. The very object of getting once trade mark registered is to have exclusivity and if that exclusivity itself is taken away by any dubious interpretation, it would render the entire statute meaningless.
However, the Court observed that since there is no simulation or emulation of a registered trade mark by another person, who want to deceptively use the same, no case for passing-off is made out.