Alberto Culver Usa Inc. vs Registrar Of Trade Marks

S. Usha, J

The miscellaneous petition has been filed by the Petitioner to continue the appeal proceedings in the name of the present Petitioner.

The matter came up before us on 08.07.2010 at the Circuit Bench Sitting at Delhi. Learned Counsel Shri S.K. Bansal appeared on behalf of the

Petitioner.

M/s Nexxus Products Company Inc., filed an application for registration of the trade mark ""NEXXUS"" under No. 446839 in Class 5 on 13.12.1985

and the said trade mark was registered and renewed upto 13.12.1999. The trade mark was assigned in favour of the present Petitioner by deed of

assignment dated 11.08.2005. Pursuant to the said assignment, a joint request was filed to record the said assignment on Form TM-33 and to bring on

record the name of the present Petitioner. The impugned order has been passed in an issue as to the removal of the above mentioned registration for

non-renewal.

By virtue of the deed of assignment dated 11.08.2005, the present Petitioner/assignee is entitled to maintain the present proceedings. The Petitioner,

therefore, has filed this application seeking leave of this Board to continue the proceedings in the name of the present applicant.

Assignment is sale of the mark by the registered proprietor to a third party. The rights of the assignor as per the Register of Trade Marks will be

the rights of the assignee. That is to say the assignee steps into the shoes of the assignor and acquires the same right as that of the assignor. The

Supreme Court in the case of Thukral Machine Works Vs. P.M . Diesels Pvt. Ltd., and Anr. - 2009 (2) SCC 768 has dealt with the rights of the

assignee on assignment of a trade mark and observed as under:

The principle of purchaser of a property has a duty to make enquiries cannot apply in case of this nature. So long as the right to assign a registered

trade mark remains valid, once the same is validly assigned, the assignee derives the same right as that of the assignor in terms of the statute. The title

to a trade mark derived on assignment as provided for under the Act cannot be equated with a defective title acquired in any other property as

admittedly on the date of assignment, the right of the registered trade mark was not extinguished.

Based on the above observation, we are of the view that the present applicant/assignee be allowed to continue with the appeal proceedings. The

appeal, therefore, filed in the name of M/s Alberto Culver USA Inc. is, therefore, taken on record. The Registry is directed to number the appeal, if in

order.