S. Jagadeesan, J. (Chairman) - (1.) THE petitioner has filed this petition under Section 108 read with Section 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in OP No. 135/2003, on the file of the High Court of Judicature at Madras, which was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TRA/58/2003/TM/CH.
(2.) The petitioner is seeking the cancellation of the registration of the trade mark 'AYUSH' under registration No. 472037 B dated 11.5.1987 on the Register of Trade Marks, Chennai, standing in the name of the first respondent. The petitioner is the registered proprietor of the trade mark 'AYUR' on various applications in respect of the goods falling in different classes of the fourth Schedule of the Act. A number of applications for registration under different classes are also pending for registration. The grievance of the petitioner is that the first respondent registered the mark 'AYUSH' under No. 472037 B in class 3 on 11.5.1987 for soaps and detergents. The certificate was issued on 12.8.1994. The registration being valid for 7 years, the first renewal ought to have been made by 11.5.1994 and the second renewal was due on 11.5.2001. However, the first respondent did not renew the said mark. While so, the first respondent by a Deed of Assignment dated 15.5.2002, assigned to the second respondent, the rights in respect of the impugned trade mark in class 3. By reason of non renewal, the impugned mark has ceased to exist on the records of the Registrar of Trade Marks and as such, there is no valid assignment in respect of the existing property. Based on the assignment deed dated 15.5.2002, the second respondent in an attempt to legalise the registration of the impugned mark, filed Forms TM 12 and TM 13 for renewal and restoration of the mark. The second respondent has also paid a sum of Rs.5,300/- towards the registration and the third respondent, without considering the tenacity of the application made by the second respondent and without application of mind allowed the renewal of the impugned mark and made the registration alive. The second respondent has managed to register the impugned mark by suppressing the relevant particulars and thereby committed a fraud. The petitioner filed a suit O.S. No. 2/2003 for infringement against the respondents on the file of the District Court and obtained an order of injunction. Hence, the petitioner is an aggrieved person. An assignment in favour of the second respondent was at a time when the registration had expired and the first respondent was not a registered proprietor. Consequently, the assignment in favour of the second respondent is illegal and the second respondent cannot claim any right whatsoever under the Deed of Assignment.
(3.) THE first respondent filed the counter denying all the material averments in the petition and also contended that the petitioner has no locus standi to question the validity of the Assignment or to resist the recordal of the same. THE petition is also barred by limitation since the registration of the mark is dated 11.5.1987. Consequently, the latches on the part of the petitioner make the application liable to be dismissed. On merits, the first respondent pleaded that they proceeded to file the application for renewal through their Trade Mark agent and they received a letter dated 14.3.1995, from its agent informing that the renewal fee had already been deposited with the Trade Marks Registry, Bombay, and that the agent will report as soon as the renewal certificate is received. THE first respondent with bonafide believed that all the requisite steps have been taken in order to obtain the renewal of the trade mark and that the subsequent delay in getting the trade mark certificate was only at the Registry. THE first respondent with bonafide believed that the certificate will be issued by the Registry though belatedly. Throughout the period between 1995 and 2002, there was no action on the part of the Registry indicating that the renewal application has not been filed. THE first respondent did not receive any notice in Form 'O-3' intimating about the impending expiry of the trade mark registration as contemplated under Section 25 of the said Act read with Rule 67 of the Trade and Merchandise Marks Rules, 1959. After the assignment, the second respondent proceeded to file Form TM 24 on 7.6.2002 seeking the recordal of its name as a subsequent proprietor of the trade mark and later filed Form TM 12 and 13 on 22.8.2002 for renewal of the trade mark for a period of 7 years from 11.5.1994 and 11.5.2001 and also for the restoration of the trade mark. THE second respondent paid the necessary fees for the same and the impugned mark was renewed and the same was notified in the Journal No. 1286, dated 1.1.2003. Since the adoption of the impugned mark in March, 1987, the first respondent had the bonafide intention of manufacturing and selling toilet soaps with the trade mark 'AYUSH'. THE first respondent had also taken several preparatory steps in this direction before it was approached by the second respondent herein in the year 2002 with an offer to acquire to said trade mark, the first respondent with the bonafide intention of using the mark placed an order for the supply of automatic brand stamp die-set of specific design of 100 gms. 'AYUSH' toilet soap. In or about May, 2002, the second respondent approached the first respondent expressing keen interest in acquiring the impugned mark and negotiations were held between both the respondents culminating in the execution of the Assignment Deed dated 15.5.2002, whereby the first respondent absolutely assigned its right in the trade mark along with its goodwill. THE second respondent filed the relevant applications with the Trade Marks Registry and obtained the renewal of the mark and the renewal certificate was issued on 15.11.2002. THEre is no infirmity in the renewal since the mark was not removed from the Register because of non renewal and so long as the mark is in the Register, it is always open to the registered proprietor to seek the renewal. Subsequent to the assignment, the second respondent launched its Ayurvedic preparations/ products in a large scale involving promotional expenses. Since May 2002 in a phased manner, the products were advertised in the media. Hence, there is absolutely no merit in the application.;