Recently, the Bombay High Court dealt with an appeal by the Trade Marks Registry of an application for change of proprietor of two registered marks.
The High Court remanded the matter back to the Trade Marks Registry (“Registry”) holding that there was in fact no order passed on record much less a speaking order passed by the Registry to allow the TM-24 application pursuant to which the name of the proprietor on record was changed under section 45 of the Trade Marks Act (“Act”).
Electronica India Limited (“Petitioner”) had filed an appeal challenging the recordal of Electronica Hitech Machines Private Limited (“Respondent No. 1”) as subsequent proprietor of the “Electronica” trademarks.
The Petitioner had filed a letter before the TMR setting out detailed objections why Respondent No. 1’s request ought not to be entertained or allowed. The objection included the fact that the parties were already litigating against each other and the issue of entitlement to the marks was also pending. Not only was the letter disregarded but the applicant seeking transfer had also filed a false affidavit stating that there were no legal proceedings pending regarding the subject marks. Within, days after the objection letter being filed, Respondent No. 1’s application which was otherwise pending since years was allowed without affording the Appellant a hearing. The PR details of the subject matter marks mentioned the date of order as 25 January 2018.
However, no such order was uploaded on the website of TMR. When the Petitioner filed an application under the Right to Information Act, 2005 to obtain a copy of said order dated 25 January 2018 the petitioner was provided an order dated 18 May 2018 instead which did not contain any reasons whatsoever. On noticing the discrepancies, the Judge directed TMR to produce the original files in the matter. Once the files were produced in court, it was noted that an order dated 25 January 2018 did not exist.
Respondent No. 1 objected to the appeals on grounds that the Petitioner was an interloper and had no semblance over the subject matter trademarks. It objected to the Petitioner’s locus in filing the present appeals and further made various submissions on why the appeals ought to be dismissed.
The Judge reversed the recordal of transfer and remanded the applications for recordal of transfer back to Respondent No. 2 for fresh consideration on account of there existing no order / speaking order; since Petitioner’s objections had not been considered by Respondent No. 2; and since the false representations had been made by Respondent No. 1 misleading Respondent No. 2 into accepting Respondent No. 1’s request. The de novo MM proceeding before the Registrar to whom matter was remanded back was stayed for a period of 4 (four) weeks from the date of the order.
Being aggrieved by the said judgment of the Bombay High Court, Respondent No. 1 preferred a special leave petition (SLP) challenging the said order. A bench comprising of Justice Sanjiv Khanna and Justice Dipankar Datta of the Supreme Court, vide its order dated 14 May 2024 was pleased to observe that the said order of the Bombay High Court warranted no interference and accordingly dismissed the SLP filed by Respondent No. 1 with a direction to the Registrar to decide the applications under TM-24 expeditiously and within a period of 3 months.
Electronica India Limited (Petitioner before the Bombay High Court) was represented by Mr Hiren Kamod who was instructed by Mr Nishad Nadkarni, Mr Nirupam Lodha, Mr Aasif Navodia, Ms Khushboo Jhunjhunwala, Mr Gautam Wadhwa, Ms Jaanvi Chopra and Ms Rakshita Singh from Khaitan & Co.
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