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Judgment
S. Usha, J
The facts of both the appeals are: -The Appellants are registered proprietors of the trade mark MEX in respect of electric switchgears, electric
switches and parts thereof included in class 9 under registration No. 211055, No. 230466 in class 9 and No. 351897 in class 9. The above registrations
are duly renewed and are subsisting. The Appellants trade mark MEX in class 7 is also registered under No. 495452 in respect of starting devices for
electric motor (not for land vehicles) parts therefore included in class 7. The trade mark CLIMEX is registered in the name of the Appellants under
No. 234906 in class 9 and under No. 234904 in class 11. By virtue of long and extensive use since 1960 the Appellant's trade mark has acquired an
exclusive right. The public and trade recognize the electric switchgears bearing the trade mark MEX as the goods of the Appellants and with no one
else.
2 . The Appellants have spent a large amount on publicity and advertisement of the trade mark MEX to popularize the same. The trade mark MEX
has attained so much popularity and publicity that any goods under the trade mark MEX or MEX with a prefix or suffix will be understood to be the
goods of the Appellants. The goods manufactured by the Appellant and sold under the trade mark MEX has been tested and approved by various
Government Departments. The Appellants have successfully contested various litigations against unscrupulous infringers.
The Respondent No. 1 herein filed two trade mark applications for registration of the trade mark EMAX under No. 844213 in class 9 and TMAX
under No. 966939 in class 9 under the provisions of the trade Marks Act, 1999 (hereinafter referred to as the Act). The same was opposed by the
Appellants herein under opposition Nos. CAL 156174 and CAL 170487 respectively. The applications were filed in the name of M/s ABA SACE
S.P.A. The counter statements were filed in the name of M/s ABB Progetta in the year 2004 and 2005 respectively.
The Respondent No. 1 stated in the counter statement that since the date of filing the subject application the name of the applicant ABB SACE
SPA changed to ABB SPA Thereafter ABB SPA has assigned the trade mark EMAX together with the goodwill of the business to ABB SACE
SPA. Necessary application for recordal of the change has been filed before the Registrar of trade Marks even before the Trade Mark was
advertised in the Trade Marks Journal. In spite of this request made before the advertisement, the Respondent No. 2 has advertised in the earlier
name. The Respondent No. 1 had also requested for recordal of the change of address. The five requests on Form TM-16 were filed and heard by
the Respondent No. 2. The five requests were two for recordal of the change of name in two cases, the other two for recordal of the assignment and
the other one for recordal of the change of address. All the five matters were heard and disposed of allowing the request on Form TM-16.
Aggrieved by the order, the Appellants are before us on appeal. The memorandum of grounds of appeal are that -
(a) the impugned order is against fact and law;
(b) the Respondent No. 2 did not deal with the case as set up by the Appellant;
(c) the Respondent No. 2 failed to understand and comprehend the law in this respect;
(d) the impugned order is without reasoning as no reason has been given as
to why an improperly stamped document is being given effect to;
(e) the Respondent No. 2 has failed to appreciate the provisions of Sections 35, 36, 37 and 38 of the Indian Stamp Act, 1899;
(f) the learned Joint Registrar has failed to appreciate the scheme of the Stamp Act;
(g) the Respondent No. 2 has wrongly relied on the decision of the Hon'ble High Court of Delhi which was not cited by the Respondents counsel
which was not relevant to decide the issue in this case;
(h) the Respondent No. 2 has failed to appreciate that the Respondent No. 1 cannot take benefit of its own wrong;
(i) the Joint Registrar failed to appreciate that the case of the Respondent No. 1 is that a consideration of US $ 10 has been paid on the assignment
deed. Stamp paper purchased in Delhi is of Rs. 10/- only;
(j) the Appellant relied upon several Judgments but not discussed in the impugned order;
(k) the impugned order suffers from several infirmities;
(l) the assignment took place in Italy whereas the stamp paper was purchased in Delhi. The learned Joint Registrar failed to appreciate the same and
committed illegality;
(m) serious prejudice has been caused to the Appellant by allowing the request on form FM-16;
(n) the Joint Registrar failed appreciate the facts and circumstances of the case;
(o) the learned Joint Registrar failed to appreciate that the satisfaction of the Respondent's title is based on documents which are inadmissible in
evidence;
(p) the Respondent No. 2 failed to apply the relevant law to the facts and circumstances of the case;
The Respondent No. 1 filed their counter statement to the grounds of appeal. The Respondent No. 1 stated that they are engaged in the business of
manufacturing and marketing ""Electric Switches"" for a considerable period of time. In order to distinguish their goods from those of others they had
adopted and used the trade marks EMAX and TMAX for a long time. By virtue of such long and extensive use, the said trade mark has acquired an
excellent and enviable reputation and goodwill internationally. In order to acquire a statutory protection, the Respondent had applied for registration of
the trade marks.
The Respondent No. 1 further stated that after filing of the impugned trade mark applications certain changes had taken place i.e. (i) change in the
name of the firm form ABB SACE LV SPA TO ABB SP; (ii) the change of name as ABB SACE SPA in vie of the deed of assignment dated
03.05.2001; (iii) change in the address.
The Respondent No. 1 at the outset denies the allegation, averments made in the appeal. The appeal contains no valid grounds. It is wholly false
frivolous and is devoid of any merits and the relief sought is not maintainable either in law or on facts and is, therefore, liable to be dismissed in limini
with costs.
9 . The Appellant filed their rejoinder to the counter statement filed by the Respondent No. 1. The preliminary objection was that the counter
statement is not properly filed and no proper person has signed the counter statement. The counter statement deals with the merits of the main case
while the appeal is confined to the order dated 15.03.2007. All the averments made are frivolous, out of context and irrelevant. The averments are
superfluous and are vexatious and liable to be struck off. The Respondent No. 1 has not dealt with the questions raised in the appeal. The rest of the
averments were denied.
1 0 . We have heard the arguments of the learned Counsel Shri Shailen Bhatia appearing for the Appellant and learned Counsel Shri Jayantha Basu,
appearing for the Respondent No. 1 at the Circuit Bench Sitting at Kolkata on 21.06.2010.
As both the original appeals OA/32 and 34/2007/TM/KOL are against the order dated 15.03.2007 where the issue and the parties are one and the
same except for two different applications for registration with the consent of both the counsel, a common order is being passed.
The learned Counsel for the Appellant relied on Rule 72 of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules) and submitted that
as per the provisions contemplated therein if the Registrar is of the opinion that the instruments in not properly stamped, he shall impound and deal with
it in the manner as prescribed under the Stamp Act. As per the provisions of Section 92 of the Act, this Appellate Board is to discharge the function
as a Civil Court and therefore, the matter can be dealt with under the Stamp Act, 1899. The counsel then relied on Section 18 of the Indian Stamp
Act, 1899 and stated that a document outside India relating to an act to be performed in India requires to be stamped in India. If not done so, it is not
admissible in evidence. The same could be made admissible in evidence by impounding on payment of stamp duty and penalty. The counsel also relied
on the provisions of Section 33 and 35 of the Stamp Act.
13 . The counsel further relied on the assignment deeds in both the appeals and stated that the consideration has been paid at the rate of US $ 10 and
US $ 100 respectively where the proper stamp duty has not been paid.
The counsel then relied on the Judgments reported in AIR 1983 Del 387 M/s Kisan Industries, v. M/s Punjab Food Corporation and Anr. 1969 (1)
SCC 597 Hindustan Steel Ltd., v. Messrs Dilip Construction Company, AIR 1978 SC 1393 Ram Rattan (Dead) by Lrs. V. Banrang La and Ors., AIR
2007 Mad 334 Jagadeesh v. B. M. Billan AIR 1962 P&H 167 (V 49 C 48) M/s Gujrals Co., v. M/s M.A Morris AIR 1987 All 101 Mt. Bibbo v. Rai
Saheb Gokaran Singh, AIR 2001 Mad 135 A.C. Lakshmipathy and Anr. v.A.M. Chakrapani Reddiar and others, AIR 1987 Delhi 115 M. Mohan v.
Smt. Maheshwar Seth, Non-Petitioner.
15 . In reply the learned Counsel for the Respondent No. 1 submitted that in the counter statement filed before the Registrar in the opposition
proceedings, it was stated that though the change was requested to be recorded at the pre-advertisement stage, the Registrar did not record the same.
The validity of the assignment deed can be disputed only by the assignor and the assignee and not the Appellant herein. The counsel relied on the
provisions of Rule 66, 72 and 73 of the Rules. Provisions of Section 92 of the Act and provisions of Sections 33, 35, 37 and 38 of the Indian Stamp
Act, 1899. The counsel relied on the judgment reported in 2009 (39) PTC 347 - Sun Pharmaceuticals Industries Limited v. Cipla Limited
The learned Counsel for the Appellant in rejoinder to the Respondents arguments submitted that the judgment relied on by the Respondent is of no
relevance to the case on hand. The notice of opposition has been filed in the year 2004 and the deed of assignment has been made in the year 2005.
The Registrar has the power to impound the instruments as per the provisions of Section 127 of the Act read with Section 33 of the Indian Stamp Act,
1899.
We have heard and carefully considered the arguments of both the counsel and have also perused the documents and pleadings. The only issue
that arises for consideration is whether the request on Form TM 16 has been allowed following the due process of law by the Respondent No. 2.
18 . This Appellate Board is vested with the powers of a Civil Court as per the provisions of Section 92 of the Act. Even though the Board is not
bound by the Code of Civil Procedure, the principles of natural justice are followed in deciding the case. Therefore, as per the provisions of the Indian
Stamp Act, 1899, the matter is being dealt with. As per Rule 72 of the rules, if any instrument is not properly stamped or insufficiently stamped the
Registrar shall impound the deal with it in the manner provided under the Stamp Act. Section 33 of the Stamp Act provides for the impounding of
instruments not duly stamped. A document which attracts stamp duty, it is for the court or authority concerned to ascertain whether it has been
properly stamped. The purpose or the object of this Section 33 of the Indian Stamp Act is to protect the revenue. Section 35 of the Indian Stamp Act
provides that an insufficiently stamped document is not a valid document and cannot be admissible in evidence. But it could be admitted in evidence on
payment penalty. The effect of not properly stamped does make the document invalid but it is inadmissible in evidence. It shall not be relied on or
supported for the case. The Respondents relied on the assignment deed for the recordal of their name in the place of the assignor, the predecessor.
The deed of assignment was not properly stamped. When that was the case, then the assignment deed cannot be relied to support their case. It is also
seen that there are two assignment deeds executed in which the trade marks were unregistered.
Section 35 of the Indian Stamp Act reads thus ....
Instruments not duly stamped inadmissible in evidence, etc. No instrument chargeable with duty shall be admitted in evidence for any purpose by
any person having by law or consent of parties authority to receive evidence, or shall be acted upon, registered or authenticated by any such person or
by any public officer, unless such instrument is duly stamped
....
Documents therefore not properly stamped are not admissible in evidence and cannot be looked into for any purpose. It has been the observation
of the Division Bench of the Madras High Court that ""If an un-stamped document cannot be admitted for any purpose, it must mean, if the words are
to be given their ordinary and plain meaning that it cannot be admitted under any circumstances in a Civil Suit. If the legislature in pleading this
provision of law on the statute book had intended to allow unstamped instruments to be admitted for collateral purposes, it would surely has said so.
On a bare perusal of the impugned order, it is not clear as to what was the intention of the Joint Registrar while passing the order. In fact the
Registrar has quoted the observation of the Apex Court in Hindustan Steels case - 1969 (3) SC R 736 - ""The Stamp Act is a fiscal measure enacted
to secure revenue for the state on certain classes of instruments; it is not enacted to arm a litigant with a weapon of technicality to meet the case of
his opponent. The stringent provisions of the Act are conceived in the interest of the revenue. Once that object is secured according to law, the party
staking his claim on the instrument will not be defeated on the ground of the initial defect in the instrument.
The Apex Court has observed that if that defect is rectified then it could be made good by payment of penalty. Having quoted the observation the
Respondent No. 2 had not followed the same while passing the impugned order. The other part of the order also seems to be contradictory to the
above observation.
The request on Form TM-16 allowed by the Joint Registrar recording the name of the assignee, the Respondent herein is not valid. The case of
the Appellant is that the assignment deed is not properly or insufficiently stamped and that the deed is not admissible in evidence. The Respondents did
not dispute the said contention but only contended that the validity of the assignment deed could be raised only by the parties concerned and not by a
third party. We do agree with tat contention but for a document to be admitted in evidence has got to be properly stamped. The admission of such
improperly stamped document cannot be said to be valid in our considered view.
In view of the above, we are of the opinion that the impugned order has not been passed with any proper reasoning and is liable to be set aside.
The impugned order dated 15.03.2007 is set aside and consequently the appeals are allowed. No order as to costs.
Since the main matter itself has been disposed of, M.P. No. 85 and 86/2007 filed in OA/32/2007/tM/KOL and OA/34/2007/TM/KOL for stay of
proceedings before the Registrar has become infructuous and the same are disposed of accordingly.