[Electronica Trade Mark] SC upholds Bombay HC order directing Registrar to decide applications for adding subsequent proprietor de novo; Directs for expeditious disposal

Supreme Court: In a set of two Special Leave to Appeals by the Electronica Hitech Machines Tools Private Limited against the Bombay High Court’s decision, whereby the High Court had allowed the Electronica India Ltd.’s applications, remanding the consideration of two Forms TM-24 for fresh consideration to the Trade Marks Registrar and to pass a speaking order, the Division Bench of Sanjiv Khanna and Dipankar Datta, JJ., refused to interfere with the impugned judgment and directed the Registrar of Trade Marks to decide and give effect to the impugned judgment, as expeditiously as possible and preferably within a period of three months from the date a copy of this order is received.

The Court also clarified that while deciding, the Registrar of Trade Marks will remain uninfluenced by the observations made by the High Court.

The Electronica India Ltd. (‘original petitioner’/ ‘present respondent’) challenged the purported orders/ communication of the Trade Mark Registry for allowing the two Form TM-24 Applications of the Electronica Hitech Machines Tools Private Limited (‘original respondent’/ ‘present petitioner’) for bringing on record their name as the subsequent proprietor. Electronica India Limited challenged the recording of Electronica Hitech Machines Private Limited as subsequent proprietor of the “Electronica” trademarks. The High Court on perusal of the available documents and submissions, viewed that the Trade Mark Registry had abdicated its duty under Section 45 of the Trade Marks Act, 1999 which provides for ‘registration of assignments and transmissions’ and the Registrar of Trade Marks upon a receipt of an application for either assignment or transmission has to follow due process of law and in certain instances, require the applicant to furnish evidence in proof of title where there is a reasonable doubt about veracity of any statement or any document furnished, and only after such satisfaction the Registrar may register the applicant as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect.

The High Court noted that the original petitioner had issued the Objection Letter dated objecting to the original respondent’s request on Form TM-24, however, without considering the Objection Letter, and without passing an order thereupon by the Registrar, the applications made on Form TM-24 were allowed. Further, the High Court noted that the Registrar had issued two communications (purported orders) dated 25-01-2018 and 18-05-2018 which communicated that the Applications under Form TM-24 were allowed and the change effected in the register of trademarks. The communication dated 18-05-2018 was uploaded as an order on the online database of the Trade Marks Registry in respect of the two subject trademarks.

The High Court viewed that the Registrar acted contrary to Section 45 of the Act and failed to consider the Objection Letter of the original petitioner. The High Court also noted that the original respondent had failed to disclose that there were proceedings between them and the original petitioner where the petitioner had raised the issue on title of the subject trademark before the Pune District Court.

Hence, the High Court considered it necessary to remand back TM-24 applications to the Registrar for fresh consideration, as no order was passed by the Registrar. The impugned orders/communications of the -Registrar of the Trade Marks, Mumbai allowing the requests of original respondent in Form TM-24 were set aside. The High Court directed the Registrar to consider the applications in Form TM-24 de novo after granting the original petitioner an opportunity of being heard and thereafter, passing a speaking order on the requests of the original respondent in Form TM-24 which shall be in conformity with Section 45 of the Act.

However, considering the submissions for stay, the High Court stayed the said order for a period of four weeks from the date of order, and directed the Registrar to not proceed with de novo hearing of the applications under TM-24.

Aggrieved by the said decision of the High Court, the original respondent filed a Special Leave to Appeal before the Supreme Court, challenging the High Court’s decision.

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