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Judgment
K.N. Basha, J
ORDER (No. 122 of 2015)
The Miscellaneous Petition No. 64/2013 in OA/51/2009/TM/MUM Mr. M.S. Bharath, the learned counsel for the petitioner and Mr. Shiwprasad Wanve, the learned counsel for the respondent are present herein. Mr. M.S. Bharath, the learned counsel for the petitioner would vehemently contend that the petitioner is the assignee of the original applicant for the registration of the trade mark application No. 609339 in Class 5 in the name of Dutraco S.A. as per the assignment deed dated 7.10.1996.
2 . The learned counsel for the petitioner would contend that the opposition filed by the appellant/respondent herein was rejected and after the conclusion of proceedings an application was filed before the Registrar of Trade Marks for bringing the name of the assignee on record in the Registry of Trade Marks and the said request was accepted by passing an order and the online perusal reveals that the name of the assignee was brought on record.
It is contented that the respondent/appellant ought to have impleaded the petitioner namely the assignee instead of impleading the present respondent No. 1 namely M/s. Solve Pharmaceutical Marketing and Licensing AG Switzerland. It is contended that even as per the provision under Section 22 of the Trade Marks Act, the petitioner/respondent herein is entitled to file an application for amendment at any stage either before or after acceptance of the application and in this case, the petitioner has rightly brought to the notice of Registrar of Trade Marks about the assignment made in their favour. The learned counsel would contend therefore the name of the petitioner is substituted in the place of respondent No. 1.
4 . Per contra, Mr. Shiwprasad Wanve, the learned counsel for the respondent/appellant would contend the petitioner cannot be impleaded or substituted as respondent No. 1. As in the opposition proceedings only M/s. Solve Pharmaceuticals Marketing and Licensing Agency have been participated by filing the counter statement etc. It is contended that it is not a mistake committed by the erstwhile counsel of the petitioner as the present counsel themselves filed a copy of Form TM-16 dated 23/6/2009. The learned counsel for the appellant/respondent by placing reliance on the decision of this Bench dated 22/11/2007 in Shri P. Iya Nadar Charitable Trust, The South Indian Lucifier Match Works v. RA Karthik, Trading as Abhishek Match Industries and The Assistant Registrar of Trade Marks reported in MANU/IC/5016/2007 would contend once there is an assignment by the applicant of the trade mark during pendency of the opposition proceedings that the applicant losses his right to maintain a petition and in the instant case, only M/s. Solve Pharmaceutical participated in the proceedings and the applicant for registration of trade mark and as such the petitioner herein has no say in the matter and he may not impleaded or substituted as respondent No. 1
5 . We have carefully considered the rival contentions put forward by the either side and thoroughly scrutinized the entire materials.
6 . The fact remains that the petitioner is the assignee as per the assignment deed dated 07/10/1996 and as such for all practical purpose and legally the assignee has stepped into the shoes of the assignor and what ever the benefits or rights accrued by the assignor in respect of the registration of the trade mark shall go to the assignee.
It is pertinent to note that after the conclusion of the proceedings in the year 2009 and after passing the impugned order in the appeal, it was brought to the notice of the very same Registrar of Trade Marks, Mumbai by the petitioner herein about the assignment dated 07.10.1996 and the request of the petitioner to bring him on record in the registry was accepted by the Registrar of Trade Marks.
8 . The learned counsel also produced the website extract dated 03.10.2013 which reflects the request made by the petitioner herein to change the name of the applicant as FORM 16. At this juncture it is relevant to refer the provision under Section 22 of the Trade Marks Act which reads hereunder.
"Section 22
Correction and amendment. - The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under Section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application.
Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.
The reading of the above said provision makes it crystal clear that it is open to the petitioner to seek for amendment of the application at any stage before or after acceptance of the application. It is also pertinent to note that even in the decision relied by the learned counsel for the appellant/respondent in MANU/IC/5016/2007 Shri P. Iya Nadar Charitable Trust, The South Indian Lucifier match Works v. R.A. Karthik, Trading as Abhishek Match Industries and The Assistant Registrar of Trade Marks, this Bench has held as here under:
"8. We are inclined to accept the said contentions of Shri Madan Babu. We are also of the view that the instant appeal requires to be allowed in terms of the orders dated 19.3.2007 in OA/25/2006/TM/CH. In view of the similarity of facts, especially with regard to the assignment by the applicant of the trade mark during pendency of the opposition proceedings before the learned Registrar, which prevailed with this Board, the relevant observations of this Board on this aspect, in its said order have been noted in paragraph 18 thereof, read as under:
18 . Once there is assignment of the mark pending the application for registration, the applicant will cease to have any claim in respect of the mark. In other words, he loses the locus standi to maintain the application. The right thereafter vests in the assignee to come on record by filing an appropriate application for substitution of the name of applicant. Section 22 of the Act provides for amendment of the application either before or after acceptance of the application. There is no bar for an applicant pending registration to transfer his rights but before such assignee can claim any right to the ownership of the mark on the basis of the assignment he must make out a case for registration, that is, if such assignee wants to avail of the benefits of the registration of the mark. There is nothing brought on record to indicate that any steps were taken by the assignee to come on record, instead registration of the mark by impugned order has been granted to the applicant who ceased to have any claims on his own showing. The application for registration ought to have been dismissed on this sole ground. We hold accordingly."
The yet another factor to be borne in mind of this Bench is that the appellant herein is well aware about the assignment made in favour of the petitioner herein even before the passing of the impugned order by the Registrar which is very much evident from the materials produced before this Bench by the petitioner herein namely, the other connected proceedings held between the same parties wherein the name of the petitioner has been specifically mentioned by respondent/appellant. Considering all these factors, we are of the considered view that the petitioner is just and necessary party for the proper adjudication of this appeal. Accordingly, we are impleading the petitioner as respondent No. 3 and hearing the matter on merits on 30/11/2015. It is open to the appellant to file rejoinder to the counter filed by the impleaded respondent.