Kaveri Hotels Private Limited Vs. Intellectual Property Appellate Board & Anr.

Kaveri Hotels Private Limited Vs. Intellectual Property Appellate Board & Anr.

IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

Decided On: 06.01.2015

Facts:

An application for registration of a trade mark was filed by one Mr. Gulraj Vaswani, as the proprietor of CHOKHI DHANI, to register the mark (logo) ‘Chokhi Dhani’ in respect of ‘food items, ready to serve food’ (Class-30). Before acceptance, the said mark was advertised in the Trade Marks Journal.

Second Application was filed by the same person on 08.12.2003 with the same mark for registration under Class-42. The said mark was also advertised in the Trade Marks Journal.

Mr. Gulraj Vaswani, entered into a trade mark assignment agreement with Pink Pearl Leisure & Amusement Pvt. Ltd. Consequential application, praying for correction in the name of the applicant also came to be made to the Registrar in Form TM-16.

In the meantime, Petitioner filed the notice of opposition, opposing the grant of registration of the said applications. Against the said opposition, counter statement was filed on behalf of Pink Pearl Leisure & Amusement Pvt. Ltd.

During pendency of applications for amendment in the name of the applicant in view of taking over the business by the with Pink Pearl Leisure & Amusement Pvt. Ltd., applications were filed by the present Petitioner before the Registrar taking a stand that, since Mr. Gulraj Vaswani has not filed counter statement to the opposition, in view of provisions of Section 21(2) of the Trade Marks Act, 1999, the trade mark applications be deemed to have been abandoned by the applicant.

The Registrar of trademarks allowed the change in name of the applicant and rejected the argument of the Petitioner that no counter statement to the opposition is filed on behalf of the original applicant and thereby in view of provisions of Section 21(2) of the Trade Marks Act, 1999, the applications be deemed to have been abandoned by the applicant.

The order of the Registrar was the Intellectual Property Appellate Board. The Board refused to interfere.

Petitioner’s Case:

No opposition came either in the name of, or under the power of, or on behalf of the original applicant.

Counter statement to the opposition was filed by the third party, a stranger to the proceedings.

Original applicant had not authorised the present respondent No. 2 to file counter statement or had agreed to the counter statement to the opposition.

Issue:

Whether the Registrar has committed any error by allowing the request for amendment of the applications for registration in Form TM-16, and further by not treating the said applications as having been abandoned in view of Section 21(2) of the Act.

Held:

Section 22 of the Act confers that power on the Registrar and considering the totality, this Court finds that the Registrar has not committed any error in exercise of the said powers. Further, the Board, which is the statutory authority, has also gone into this aspect and has not found any illegality in the said decision of the Registrar. This Court does not see any legal infirmity either in the decision of the Registrar or of the Board which is questioned in this petition. It also needs to be recorded that, trademark is a property and there is no prohibition of passing on the title over it by its original applicant to another person, and in the event the change as sought for in this case is not permitted, a vacuum like situation may crop up, since the original applicant may not have locus or at least interest to proceed with the application, and the person/entity stepping into his shoes would be condemned as a stranger to the proceedings. The procedural law cannot be stretched to make the proceedings on merits otiose.

It is not that there was no counter statement to the notice of opposition, but it was filed by the entity which had taken over the business of the original applicant. Amendment application in that regard was already filed before the Registrar, which the Registrar has subsequently allowed. In view of this, the argument of the petitioner that it is the original applicant, who should have filed counter statement to the opposition, and having failed to do so, the applications, should be deemed to have been abandoned was based on the ill-assumed rejection of amendment applications.

The petition was dismissed.

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