Shaw Wallace and Company Ltd. and Another vs Superior Industries Ltd.

G.S. Sistani, J.

IA. No. 4986/2005

This is an application filed by the Plaintiff under Order 22 Rule 10 read with Order 1 Rule 10 and Section 151 Code of Civil Procedure.

The Plaintiff has filed the present suit for permanent injunction, restraining the Defendants from infringement of trade-mark, copyright, passing off, damages, rendition of accounts and delivery, etc. against the Defendants. The issues in the suit have been framed.

The present application has been filed during the pendency of the suit. The Plaintiff No. 1, who was the proprietor of various trade-marks, including subject trade-mark, HAYWARDS 5000 SUPER STRONG BEER in Clause 32 registered under No. 436774 have been assigned the Trade Mark to the SKOL Breweries Limited, corporate office at Jalahalli Camp Road, Yeshwantpur, Bangalore, by virtue of deed of assignment dated 27.5.2005. It is submitted by learned Counsel for the Plaintiff that after the deed of assignment dated 27.5.2005 simultaneously both the parties i.e. the assignee and the assignor have filed TM-23 before the Registrar of Trade Mark on 27.5.2005 itself, in compliance with the provisions of Section 45 of the Trade Marks Act, 1999. He further submits that as of now to the best of his knowledge no objections have been filed before the Registrar, Trade Marks. The Registrar, Trade Mark is yet to register the assignment in favour of SKOL Breweries Limited. Pending the final registration, he has moved this application for impleadment of SKOL Breweries Limited as Plaintiff No. 3 to the suit.

Learned Counsel for the Defendant has objected to this application primarily on the grounds: (i) that till the time the provisions of Section 45 of the Trade Marks Act, 1999 are complied with and even to the extent that till the Registrar, Trade Mark records satisfaction and in fact registers the assignment in favour of the assignee, the present application is not maintainable; and (ii) that under the provisions of Order 22 Rule 10 of the CPC there can only be a substitution which would mean that only Plaintiff No. 3 should be permitted to continue with the suit and the name of the Plaintiff Nos. 1 and 2 ought to be deleted, as also admittedly the Plaintiff has stated in para 8 of the application that by virtue of sale deed of assignment dated 27.5.2005 the Plaintiff Nos. 1 and 2 would only remain as formal parties.

I have heard learned Counsel for the parties. Prima facie the Plaintiff No. 3 and the Plaintiffs have filed TM-23 which is an application jointly filed by the assignor and the assignee. The suit is at the state where the issues have been framed and the evidence is yet to be led.

During the course of hearing it was put to the learned Counsel for the Plaintiff whether the question with regard to the admissibility of the assignment would be kept open or not, he has fairly conceded that since the suit is not at the final stage, the question of admissibility of the deed of assignment be kept open, subject to the Plaintiff No. 3 being added as a party.

Keeping in view that the suit has been instituted by the Plaintiff Nos. 1 and 2, the Plaintiff Nos. 1 and 2 are certainly proper parties. As even otherwise, admittedly, the assignment has yet not become final as the Registrar, Trade Marks has not recorded his satisfaction, no useful purpose would be served, if their names are deleted, at this stage. In any case, they may not be necessary party, but are considered to be proper parties in the suit. Learned Counsel for the Defendant has drawn my attention to a decision of a Single Bench of this Court in Jagatjit Industries Limited v. Registrar of Trade Marks 2000 (20) PTC 16, to canvass his point that till the Registrar, Trade Marks, records his satisfaction and registers the title in favour of the assignee, such an application would not be maintainable in the Court.

In the present case considering the statement made by learned Counsel for the Plaintiff that till the time Registrar enters the assignment and records his satisfaction of proof of title, he will not rely on the deed of assignment, this judgment will have no application to the facts of the case in hand. As far as judgment relied upon in the case of Sisir Kumar Tarafdar Vs. Manindra Kumar Biswas and Another, there is no quarrel to the proposition laid down in the said judgment. In the said case the application for impleadment of legal heirs was rejected so as not to circumvent the law. The Plaintiff moved an application under Order 1 Rule 10 in the aforesaid decision, the Calcutta High Court has held that once the application for substitution after setting aside the abatement caused by the deaths of some of the parties in a suit is rejected on merits, the Plaintiff will not be permitted to circumvent the position caused by operation of law. There is absolutely no quarrel to that proposition, but the same is not applicable to the facts of this case. Learned Counsel for the Plaintiff has relied upon a judgment of this Court in M/s. Modi Threads Limited Vs. M/s. Som Soot Gola Factory and another, wherein it has been held that pending registration of Trade Mark, which is not transferred in the name of the Plaintiff, cannot debar him from bring a suit for injunction, Strictly this judgment would not apply to the present case, although the principle is the same. What is to be looked into at this stage by the Court is whether once the parties have entered into an assignment deed, proposed Plaintiff No. 3 would be a proper and necessary party to contest the suit? This question is to be answered in favour of the Plaintiff.

Till the time the Registrar, Trade Mark, does not records the title in favour of the assignee, the deed of assignment cannot be admitted in evidence and as and when the Registrar, Trade Mark files the accord/satisfaction, the same will be filed by the Plaintiff. The present application is allowed. The Plaintiff No. 3 is impleaded as a party to the suit. Plaintiff is directed to file amended memo of parties within two weeks, from today.

CS (OS) No. 1204/2003

List before the Joint Registrar on 15.3.2007. Plaintiff is directed to file affidavits by way of evidence within eight weeks from today and thereafter list the matter for cross-examination of the witnesses of the Plaintiff. Liberty is also granted to the Plaintiff to summon the witnesses.