Infosys Technologies Ltd vs Jupiter Infosys Ltd. & Anr

Infosys Technologies Ltd. ...... Appellant

Vs.

Jupiter Infosys Ltd. & Anr. ...... Respondents

JUDGMENT

R.M. LODHA, J.

These three appeals by special leave are directed against

the order dated September 9, 2004 passed by Intellectual Property

Appellate Board (for short, `IPAB') whereby it ordered the removal of

appellant's mark `Infosys' from the register of trade marks in respect

of computer stationery, computer manuals, printed matter for

computer, instructional and teaching materials, computer hardware

and peripherals and machine and machine tools.

1

2. The appellant is Infosys Technologies Limited. It was

incorporated and registered under the Companies Act, 1956 on July

2, 1981 in the name of Infosys Consultants Private Limited. The

appellant got the trade mark `Infosys' registered in 1987 in classes

16 and 9 in connection with computer stationery, computer manuals,

printed manual for computer instruction and teaching materials;

computer hardwares, computer interface, computer peripherals,

electronics telex interface and in 1988 in class 7 in connection with

machine and machine tools and motors (not for land vehicles). The

particulars with reference to the trade mark registered by the

appellant are as follows :

Date Registration Class Goods No. 15.07.1987 475269 Class 16 Computer Stationery, Computer Manuals, Printed Manuals for Computer Instruction and teaching materials etc. 15.07.1987 475267 Class 09 Computer Hardwares, Computer Interface, Computer Peripherals, Electronics Telex Interface and all goods covered in class 09. 27.01.1988 484837 Class 07 Machine and Machine Tools and Motors (not for land vehicles) included in class 07.

2

3. On April 21, 1992, the name of the company--Infosys

Consultants Pvt. Limited--was changed to Infosys Technologies Pvt.

Ltd. and thereafter on June 2, 1992, the name was changed to the

present name, i.e. Infosys Technologies Limited.

4. The first respondent is Jupiter Infosys Limited. The first

respondent was incorporated and registered in September 1978

under the name of Jupiter Agencies Pvt. Limited. The name of the

first respondent was changed to Jupiter Infosys (P) Limited in August,

1995 and now since July, 2003, the name is changed to Jupiter

International Limited.

5. On October 11, 1996, the appellant instituted a suit in the

Calcutta High Court for perpetual injunction, inter alia, restraining the

first respondent from infringing the appellant's mark `Infosys' by using

the mark `Infosys' by itself or in combination with other marks in

course of its trade. The appellant also prayed for an interim order in

the suit. On November 22, 1996, the Calcutta High Court by an ad-

interim order restrained the first respondent from using the word

`Infosys' in any manner in relation to the goods for the time being.

The ad-interim order was confirmed on November 29, 1996.

3

6. The appellant having come to know of several instances

of misuse of mark `Infosys' also filed a writ petition (being writ petition

no. 14214 of 2000) before the Calcutta High Court, inter alia, praying

that the Registrar of Companies be restrained from registering the

companies bearing the name `Infosys'. On September 13, 2000, the

Calcutta High Court restrained the Department of Company Affairs

and Registrar of Companies from incorporating any company bearing

the name `Infosys' without the permission of the appellant.

7. In January 2001, the appellant filed yet another suit

before the High Court of Judicature at Madras for permanent

injunction restraining the first respondent from offering shares to the

public as claimed in the Initial Public Offer (IPO) using `Infosys'. The

Single Judge of the Madras High Court passed an interim restraint

order on February 1, 2001 against the first respondent. The said

order was confirmed on May 22, 2001 to remain operative till disposal

of suit.

8. The first respondent then filed three separate applications

before the Madras High Court, inter alia, under Sections 46 and 56

of the Trade and Merchandise Marks Act, 1958 (`the 1958 Act'). In

O.P. No. 764 of 2001, the first respondent prayed for the

4 removal/rectification of the entry in the register of trade mark in

respect of trade mark No. 475269 in Class 16 while in the other two

applications being O.P. No. 765 of 2001 and O.P. No. 766 of 2001,

the first respondent prayed for removal/rectification of trade mark No.

475267 in Class 9 and trade mark No. 484837 in Class 7

respectively.

9. The appellant opposed these applications on diverse

grounds by filing counter affidavits.

10. On August 12, 2003, the Madras High Court framed the

following issues:

a) Whether the mark applied for registration was used in respect of the goods for which the mark was registered?

b) Whether the respondent had a bonafide intention to use the mark applied for under section 18 of the Trade and Merchandise Marks Act?

c) Whether the mark registered in favour of the respondent is a service mark?

d) Whether there is a non use of registered trade mark by the respondent for a period of over 5 years and 1 month.

e) Whether the registered trade mark is disentitled for protection in a Court of Law under Section 11(e) of the Trade and Merchandise Marks Act?

f) Whether the registered trade mark has lost its distinctiveness and is liable to be removed under section 32(c)?

5 g) Whether the respondent has committed fraud while obtaining registration of the mark? And

h) To what further relief?

11. The 1958 Act was repealed by the Trade Marks Act, 1999

(for short, `the 1999 Act'). In terms of Section 100 of the 1999 Act, the

three petitions filed by the first respondent before the Madras High

Court for rectification/removal of registered trade mark Nos. 475269,

475267 and 484837 were transferred to the IPAB.

12. Some more facts may be noticed. The appellant filed yet

another suit (being suit no. 2115 of 2002) before Delhi High Court for

infringement of trade mark and passing off against the first

respondent. In that suit, the appellant also made an application for

grant of temporary injunction. The vacation Judge of the Delhi High

Court, on December 27, 2002 passed an order of temporary

injunction against the first respondent as follows:

"Notice for 24th March, 2003 before the Joint Registrar.

Heard. Perused the averments made in the suit and application which are duly supported by documents on record. I am of the opinion that in case ex-parte ad-interim orders are not granted, the relief claimed itself may be rendered infructuous. Accordingly it is directed that pending further consideration of the matter after notice for the next date of hearing, the defendants are restrained by themselves, their

6 directors, employees, agents and/or others acting on its behalf, from using the trade mark/corporate name INFOSYS or any other mark/name deceptively similar trade mark or colourable imitation thereof as a mark and/or corporate name or as part of a mark and/or business name, in respect of goods and/or services, for publicity on propaganda, on websites and or in domain names, in any way, whatsoever, thereby causing infringement of the registered trade mark INFOSYS of the plaintiff in isolation or in combination with words/letters/numbers their advertisements as part of their corporate name either in isolation or in goods and services, or in or by way of any advertisement/publicity campaigns etc.

Compliance of Order XXXIX Rule 3 CPC within three days."

The said suit was transferred to the Court of the Additional District

Judge, Tis Hazari Court, Delhi. In that suit, an affidavit came to be

filed by the first respondent wherein it was stated that the name of

the company has been changed from Jupiter Infosys Limited to

Jupiter International Limited and a certificate to that effect has been

issued by the Registrar of Companies, Kolkata under the Companies

Act, 1956 and no dispute remains between the parties under the

trade mark. The relevant statement made in the affidavit dated July

14, 2003 (we were informed that the date of the affidavit is July 14,

2004) reads as follows:

"4. That in the meantime the defendant has already changed the Trade Mark namely "Jupiter International Ltd." in place of "Jupiter Infosys Ltd." The copy of the incorporation on change of name which was issued by

7 the registrar of the Companies are being marked and annexed herewith as Annexure A.

5. That now there is no dispute between the plaintiff and defendant under the Trade Mark."

Based on this affidavit, the suit was partially decreed in favour of the

appellant on November 10, 2004.

13. In 2007, however, the first respondent filed a suit in the

Court of Additional District Judge, Delhi for setting aside the decree

dated November 10, 2004. That suit is said to be pending.

14. The IPAB proceeded with the matter in light of the issues

that were already framed by the High Court and heard the parties.

The IPAB in the impugned order while dealing with the plea of

limitation raised by the appellant held that the first respondent was

the appropriate aggrieved party in the matter in view of the fresh

cause of action having arisen to the first respondent on filing of Civil

Suit No. 71 of 2001 by the appellant before the Madras High Court.

The IPAB in the impugned order held that the trade mark Nos.

475269, 475267 and 484837 have not been used by the appellant

for more than a period of five years and one month and the appellant

also failed to make out that it had been in manufacturing or trading

of the goods for which it had taken Registration Nos. 475269,

8 475267 and 484837. Consequently, the IPAB allowed the

applications made by the first respondent purportedly under Section

46(1)(b) of the 1958 Act and directed the Registrar to remove these

registrations from the register.

15. We heard Mr. Akhil Sibal, learned counsel for the

appellant and Mr. Vaibhav Gaggar, learned counsel for the first

respondent at quite some length.

16. Mr. Akhil Sibal, learned counsel for the appellant argued

that an application for rectification, whether under Section 46 or

Section 56 of the 1958 Act, can only be preferred by a `person

aggrieved'; the applicant must not only be a person aggrieved on the

date of the application but must continue to remain a person

aggrieved until such time as the rectification application is finally

decided. He contended that the first respondent is not shown to

have ever traded or intended to trade in any goods covered by the

appellant's registrations under Classes 7 and 16 and as such the first

respondent is not a `person aggrieved' with regard to the appellant's

registrations under these two classes. As regards Class 9 he would

submit that in view of the affidavit filed by the first respondent on July

14, 2004 in the Court of Additional District Judge, Delhi the first

9 respondent ceases to be an aggrieved person on the date of

consideration of the rectification application. Learned counsel heavily

relied upon two decisions of this Court: (1) Hardie Trading Ltd. &

Anr. v. Addisons Paint & Chemicals Ltd.1 and (2) Kabushiki Kaisha

Toshiba v. Tosiba Appliances Company & Ors.2.

17. Assailing the finding of the IPAB as regards non-use by

the appellant during the relevant period, learned counsel for the

appellant argued that the said finding was erroneous on legal as

well as factual premise. He contended that the IPAB erred in

holding that software was a `service' and the subject registrations

were in relation to goods without considering the wide definition of

`goods' provided under Section 2(g) of the 1958 Act. Mr. Akhil Sibal

argued that the IPAB committed grave error in relying upon the

provisions of the 1999 Act and the Trade Marks Rules, 2002 when

these provisions were not applicable as the applications were filed

under the 1958 Act. According to him, the IPAB sought to rely upon

`computer programming' which is a `service' enumerated in Class

42, without considering the distinction between a `computer

programme' and `computer programming' and without noticing the

1 (2003) 11 SCC 92 2 (2008) 10 SCC 766

10 entry `computer' under Class 9 which falls within `goods'. Learned

counsel would submit that in examining the question of non-use

under Section 46(1)(b), the IPAB failed to consider that the requisite

use must be `in relation to goods' under registration, which is

extensively defined under Section 2(2)(b) of the 1958 Act.

18. Mr. Akhil Sibal, learned counsel also argued that the

IPAB failed to have regard to the proviso to Section 46(1), in terms

of which it is open to the registered proprietor to rely upon use of the

registered trade mark during the relevant period in relation to `goods

of the same description', in order to resist an application for

rectification. He contended that the IPAB failed to apply proper

legal tests for determining `goods of the same description' and had

that been done it would be evident that `computer software' amounts

to `goods of the same description' as `computer hardware'. In this

regard, he relied upon M/s. Eagle Potteries Private Ltd. v. M/s.

Eagle Flask Industries Pvt. Ltd.3; Lever Brothers, Port Sunlight Ld.

v. Sunniwite Products Ld.4; The Ritz Hotel v. Charles of the Ritz5 and

Australian Wine Importers' Trade Mark6.

3 AIR 1993 Bombay 185 4 (1949) 66 RPC 84 5 (1989) RPC 333 6 (1889) 6 RPC 311

11

19. Learned counsel for the appellant also submitted that in

any view of the matter, the IPAB erred in exercising its discretion

under Section 46 of the 1958 Act without taking into consideration the

aspect of public interest. He argued that the IPAB ought to have

considered whether use of mark `Infosys' by the first respondent on

computer hardware would create confusion in the mind of the

consumers that they might be led to believe that the said hardware is

manufactured by the appellant. Learned counsel, thus, submitted that

the impugned order is unsustainable and liable to be set aside.

20. On the other hand, an objection is raised in the written

submissions on behalf of the first respondent -- and reference was

made in support of the objection to seven Judge Bench decision of

this Court in L. Chandrakumar v. Union of India & Ors.7 -- that

challenge to the order of IPAB directly in the appeal before this Court

under Article 136 of the Constitution is barred.

21. In reply to the arguments of learned counsel for the

appellant, Mr. Vaibhav Gaggar, learned counsel for the first

respondent strenuously urged that the plea of `aggrieved person' is a

new plea and raised substantially for the first time before this Court.

He argued that the appellant has not taken the plea of the first 7 (1997) 3 SCC 261

12 respondent not being a `person aggrieved' with respect to filing of the

applications for rectification before the IPAB; merely urging the plea

that the first respondent has no locus standi in the written

submissions before the IPAB is not sufficient. Learned counsel would

submit that the appellant has, for the first time, argued before this

Court that the first respondent is not a person aggrieved and/or not

capable of maintaining the rectification proceedings with respect to

each and every good for which the appellant has been registered

since the first respondent has not been registered for all the goods.

Mr. Vaibhav Gaggar rather asserted that the first respondent is a

person aggrieved in view of the fact that various suits for

infringement have been filed by the appellant against the first

respondent and on the date of the applications for

rectification/removal of the subject registrations from the register, the

suits were pending. With reference to the affidavit dated July 14,

2004 filed by the first respondent before the Court of Additional

District Judge, he submitted that the said affidavit has no relevance in

consideration as to whether the first respondent is an aggrieved

person as Section 46 (1) of the 1958 Act relates only to the period

upto the date of the filing of the rectification application and the rights

13 of the parties crystallized at that stage itself. In this regard, he relied

upon a decision of the Madras High Court in Agha Hyder Hussain &

Anr. v. Omar Khayyam Wineries (Pvt.) Ltd. & Anr.8 He also placed

reliance upon some more decisions viz; Ritz Hotel Ltd.5, Philosophy

Di Alberta Ferretti9 ; Keystone Knitting Mills Trade Mark10 and Motor

Terms Company Pty. Limited. v. Liberty Insurance Ltd.11. Learned

counsel for the first respondent further submitted that the affidavit

dated July 14, 2004 was not placed by the appellant before the IPAB

nor any reference of the said affidavit has been made in the written

submissions before the IPAB and the appellant also did not make any

effort to amend the pleadings that the first respondent was not an

aggrieved person. It was contended by Mr. Vaibhav Gaggar that

even otherwise in view of the fraud perpetrated by the appellant qua

the registrations in question, the issue as to whether the first

respondent had a dispute with the trade mark or not pales into

insignificance as the primary duty of the court is to maintain the `purity

of the register'. He argued that in a case such as the present one

since the allegations against the appellant relate to trafficking,

8 AIR 1977 Mad 166 9 2003 R.P.C. 15 10 1929 (1) Ch.D. 92 11 1967 116 C.L.R. 177

14 squatting and non-user, the scope of `person aggrieved' has to be

enlarged. Learned counsel submitted that the fact that the appellant

continues to allege - and that stance has not changed in the

pleadings in SLP as well--that the first respondent is an infringer,

pilfriger, defrauder, someone who wants to ride on the goodwill of the

appellant or someone who wants to mislead the public at large, there

is no question of the first respondent ceasing to be a person

aggrieved at any stage.

22. Mr. Vaibhav Gaggar, learned counsel for the first

respondent contended that the appellant is registered as a

`manufacturer and trader' under Classes 7, 9 and 16 even though, it

is a company engaged in software only. Moreover, there is nothing on

record to indicate linkage with the manufacturing or marketing of the

goods for which the appellant is holding registration of subject trade

marks. He vehemently contended that goods in Classes 7, 9 and 16

for which the appellant obtained registration were never used in the

manner contemplated by the 1958 Act for almost 30 years and that

would show the mala fide intention of the appellant in having the

same registered for the purpose of squatting and trafficking.

15

23. Learned counsel for the first respondent further argued

that `Infosys' is not an invented or a coined word; the said word is an

abbreviation and combination of the words `information system'; the

word `Infosys' has been used by various companies abroad as well

as within India prior to incorporation of the appellant itself and hence

cannot be called an invented word. In this regard, he relied upon a

decision of the Madras High Court in Nestle's Products (India) Ltd. v.

P. Thankaraja & Anr.12. He submitted that appellant is primarily in

service industry which is unregistrable under the 1958 Act and since

the appellant is not trading in the goods in respect of which it is

registered, it cannot be said that the mark of the appellant is

distinctive of its goods. In any case, learned counsel would submit

that the expression `Infosys' is not descriptive expression.

24. Insofar as discretion exercised by IPAB in ordering

removal of the appellant's registrations from the register under

Section 46(1)(b) of the 1958 Act is concerned, learned counsel for

the first respondent submitted that this Court should not overturn the

discretion so exercised by the IPAB keeping in view the dishonest

and fraudulent conduct of the appellant. Lastly, he submitted that

although no cross objections or cross appeal has been filed, the first 12 AIR 1978 Mad 336

16 respondent has some grievance with regard to the order of the IPAB

in not considering the case set up in the rectification/removal

applications particularly with regard to Section 56 of the 1958 Act.

25. Having regard to the order that we intend to make, we are

not persuaded to accept the objection raised on behalf of the first

respondent that present appeal preferred directly before this Court

from the impugned order passed by the IPAB is not maintainable and

must be dismissed as such. Pertinently, the notice was issued in the

petitions for special leave to appeal to the respondents on November

1, 2004. In response to the said notice the first respondent filed

counter affidavit before this Court on March 11, 2005 wherein no

specific objection about invocation of jurisdiction of this Court directly

has been taken. In the counter affidavit a very vague objection in the

following terms was raised:

"that the present petition apart from being false and misconceived lacks the necessary jurisdiction, hence deserves outright rejection."

We are afraid, this is hardly an objection about maintainability. Apart

from it, on September 12, 2005 after hearing both parties, special

leave was granted by this Court. In the backdrop of these

peculiar facts, in our view, it is not appropriate to relegate the

17 appellant at this distance of time to challenge the impugned order

passed by the IPAB in writ petition before the High Court. The

objection about maintainability of the appeals is, accordingly,

overruled.

26. The moot question which has been debated before us is

whether or not, the first respondent is an aggrieved person. That the

first respondent filed composite applications under Sections 46 and

56 of the 1958 Act for rectification/removal of the trade mark `Infosys'

registered in Classes 7, 9 and 16 is not in dispute. Sections 46 and

56 read as follows :

"S. 46. Removal from register and imposition of limitations on ground of non-use.--(1) Subject to the provisions of section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either--

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered

18 and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered--

(a) the circumstances referred to in clause (1) of sub-

section (1) are shown to exist so far as regards non- use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and

(b) a person has been permitted under sub-

section (3) of section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark,

on application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use.

19 (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates."

"S. 56. Power to cancel or vary registration and to rectify the register.--(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

(5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

(6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register."

20 27. The position that emerges from the above provisions is

this. Whether the application is under Section 46 or under Section 56

or a composite application under both Sections, it is a pre-requisite

that the applicant must be a person aggrieved. Section 46(1) of the

1958 Act enables any person aggrieved to apply for removal of

registered trade mark from the register on the ground of non use as

stated in Clause (a) and/or Clause (b). To be an aggrieved person

under Section 46, he must be one whose interest is affected in some

possible way; it must not be a fanciful suggestion of grievance. A

likelihood of some injury or damage to the applicant by such trade

mark remaining on the register may meet the test of locus standi. In

Kerly's Law of Trade Marks and Trade Names (11th edition) at page

166, the legal position with regard to `person aggrieved' has been

summarized thus : The persons who are aggrieved are all persons

who are in some way or the other substantially interested in having

the mark removed - where it is a question of removal - from the

register; including all persons who would be substantially damaged if

the mark remained, and all trade rivals over whom an advantage was

gained by a trader who was getting the benefit of a registered trade

21 mark to which he was not entitled. We accept the above statement of

law.

28. Insofar as Section 56 is concerned, it provides for varying

situations in which the person aggrieved may apply for rectification of

the registered trade mark from the register. Although both Sections,

namely, Sections 46 and 56 require `person aggrieved' to apply for

removal of the registered trade mark from the register or rectification

of a trade mark in the register, the expression `person aggrieved' for

the purposes of these two Sections has different connotations. The

interpretation of the expression `person aggrieved' occurring in

Sections 46 and 56 has come up for consideration before this Court

on more than one occasion. In Hardie Trading Ltd.1, this Court stated

as follows:

"30. The phrase "person aggrieved" is a common enough statutory precondition for a valid complaint or appeal. The phrase has been variously construed depending on the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with the removal of a registered trade mark from the Register on the ground of non-use. This section presupposes that the registration which was validly made is liable to be taken off by subsequent non-user. Section 56 on the other hand deals with situations where the initial registration should not have been or was incorrectly made. The situations covered by this section include: (a) the contravention or failure to observe a condition for registration; (b) the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions are commenced for the "purity of the Register" which it is in public interest to

22 maintain. Applications under Sections 46 and 56 may be made to the Registrar who is competent to grant the relief. "Persons aggrieved" may also apply for cancellation or varying an entry in the Register relating to a certification trade mark to the Central Government in certain circumstances. Since we are not concerned with a certification trade mark, the process for registration of which is entirely different, we may exclude the interpretation of the phrase "person aggrieved" occurring in Section 69 from consideration for the purposes of this judgment.

31. In our opinion the phrase "person aggrieved" for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register.

32. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined "person aggrieved" in the matter of Powell's Trade Mark:

"... although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved."

23 33. But if the ground for rectification is merely based on non-

user i.e. under Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply for its removal. An applicant must therefore show that "in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by `possible' I mean possible in a practical sense, and not merely in a fantastic view.... All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them".

34. Addisons' application was one under Section 46 and the test to determine whether the applicant was a "person aggrieved" within the meaning of that section should have been the one laid down by Romer, J. in Wright case and not the one propounded by the House of Lords in the matter of Powell's Trade Mark. The High Court and the Joint Registrar fell into error in not drawing this distinction. However, it is not necessary to dilate on this aspect of the matter as the appellant has really argued on the second and third aspects of Section 46 viz. the alleged non-use of the trade marks by Hardie and special circumstances".

29. In the case of Hardie Trading Ltd.1, this Court approved

the test applied by Romer, J. in The Royal Baking Powder Company

v. Wright, Crossley, and Co.13, which has been reproduced in para

33 of the report. We respectfully agree.

30. Hardie Trading Ltd.1 has been followed by this Court in a

recent decision in the case of Kabushiki Kaisha Toshiba2. This Court 13 (1898) 15 RPC 677

24 stated that Section 46 speaks for private interest while Section 56

speaks of a public interest.

31. It is true that the appellant in opposition to the

applications for removal/rectification of trade mark did not specifically

challenge in its counter affidavits the locus standi of the first

respondent to be heard as a person aggrieved. Obviously, in the

absence of any specific objection by the appellant to that effect, no

specific issue was framed by the High Court whether the applicant

was an aggrieved person. The applications having been transferred

to the IPAB in terms of Section 100 of the 1999 Act, the IPAB

examined the matter in light of the issues that were framed by the

High Court although in the written submissions before it, the objection

was raised that the first respondent has ceased to have locus standi

in view of the subsequent events, particularly change of the name of

the first respondent from Jupiter Infosys Ltd. to Jupiter International

Ltd. The question is, whether in these circumstances it was

incumbent upon the IPAB to consider and satisfy itself about the

locus standi of the first respondent to be heard as a person

aggrieved. In our considered view, it was. In the first place, when the

first respondent applied for rectification/removal in respect of three

25 registrations in Classes 7, 9 and 16, it must have shown in respect of

each of them that it is a `person aggrieved' and the IPAB must have

separately considered in respect of each registration the locus standi

of the first respondent as the considerations for each entry might not

have been common. Secondly, and more importantly, during the

pendency of the applications, certain events had taken place which

had some bearing on the question of locus standi of the first

respondent insofar as invocation of Section 46 (1) of the 1958 Act is

concerned. In the affidavit filed by the first respondent on July 14,

2004 before the Court of Additional District Judge, Delhi an

unequivocal and categorical statement has been made that now there

is no dispute between the plaintiff (appellant herein) and defendant

(first respondent herein) under the Trade Mark and that defendant

has already changed the Trade Mark namely "Jupiter International

Ltd." in place of "Jupiter Infosys Ltd."

32. In terms of Section 46(1), not only that the applicant has

to show that he is an aggrieved person as his interest is being

affected but the IPAB must also be satisfied, before it directs the

removal of registered trade mark, that the applicant is an aggrieved

person before it invokes the power in directing the removal of the

26 registered trade mark. This is so because the pre-requisite for

exercise of power under Section 46(1) is that the applicant is a

person aggrieved.

33. The question then arises, whether it is sufficient for the

applicant to show that he is a person aggrieved when he makes his

application or he must continue to remain a person aggrieved until

such time as the rectification/removal application is finally decided. In

our view, the grievance of the applicant when he invokes Section

46(1) must not only be taken to have existed on the date of making

application but must continue to exist when such application is

decided. If during the pendency of such application, the applicant's

cause of complaint does not survive or his grievance does not subsist

due to his own action or the applicant has waived his right or he has

lost his interest for any other reason, there may not be any

justification for rectification as the registered trade mark cannot be

said to operate prejudicially to his interest. In re Apollinaris

Company's Trade-Marks14, while dealing with this aspect,

Kekemich,J. stated :

".....because that is a remedy given to the person aggrieved through the interposition of the Court for the benefit of the

14 (1891) 2 Ch. 186

27 applicant, and if at the date of the trial he has no cause of complaint it seems to be monstrous to suppose that the Court will rectify the register at his instance when it can do him no good to rectify, and when the retention on the register can do him no harm merely because at the date of his application he may have had some grievance."

We concur with the above statement.

34. In the circumstances, we are satisfied that the

applications made by the first respondent for rectification/removal of

the subject trade marks from the register need to be considered

afresh by the IPAB in accordance with law and the observations

made above. Since the first respondent has also grievance in

connection with the impugned order particularly with regard to non-

consideration of its case under Section 56 of the 1958 Act, we refrain

from going into the merits of the diverse contentions raised before us

and leave the parties to agitate these contentions before the IPAB.

35. In view of the above, these appeals are allowed in part

and the impugned order dated September 9, 2004 is set aside. The

applications being TRA Nos. 25 to 27 of 2003 (OP Nos. 764 to 766 of

2001) are restored to the file of Intellectual Property Appellate Board,

Chennai for hearing and disposal afresh in accordance with law. The

parties shall bear their own costs.

28 .................... J.

(Aftab Alam)

.................... J.

(R.M. Lodha)

NEW DELHI, NOVEMBER 9, 2010.

29