LexCYCLE CORPORATION OF INDIA LTD. versus T.I. RALEIGH INDUSTRIES PVT. LTD. AND ORS.
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A CYCLE CORPORATION OF INDIA LTD. v. T.I. RALEIGH INDUSTRIES PVT. LTD. AND ORS. MAY 10, 1996 B [K. RAMASWAMY, FAIZAN UDDIN AND G.B. PATTANAIK, JJ.] 17Je Trade & Merchandise Marks Act, 1958 (43 of 1958)-Sections 46(l)(b) and 48(2)-Trade Mark-Bonafide use of-Admittedly, registered proprietor using the trade mark through pennitted user vide an agreement-Ap~ C pellant succeeded pemtitted user by statut01y operation-Appellant using the trade mark in passing off the goods-After expi1y of the agreement period, application for rectification of the trade mark filed before High Court-Plea that after expi1y of the agreement period, the trade mark was not used by tiie registered proprietor, neither appellant nor the pemtitted user was a registered D user-Rejection of application by High Court-Held, the appellant must be presumed, by course of conduct, that he is bonafide user for the purpose of Section 46( l)(b), though the deemed presumption u/s 48(2) is referable to the pennitted or registered user, the act of passing off the goods would connect the registered proprietor and the user of the trade mark by unregistered licen- see-Hence, High Court conect in declining to rectify the trade mark-If con- E nection between the proprietor of trade mark and the pennitted user, in passing off the goods, is proved by a bonafide user, it does not render section 48(2) surplusage or otiose. Section 46(3)-Exception-Special circumstances for non use of trade mark-Appellant bonafide using the registered trade mark of registered F proprietor, through admittedly registered uso--Plea that trade mark not used by the registered proprietor for a long period and that he has also not proved non user due to special circumstances--Held, In the facts and circumstances of the case, there is no discontinuance or non-use of trade mark by the registered proprietor to establish special circumstances. G Section 46(3)-Exceptions-Burden to prove non user of trade mark due to special circumstances--Held, lies on the registered proprietor of the trade mark-Indian Evidence Act, 1872. The respondent registered the trade mark 'Raleigh under Indian H Merchandise Marks Act, 1889 and under Trade marks Act, 1940 (Both the 820 CYCLE CORPN. OF INDIA LTD. v. T.i. RALEIGH INDS. PVT. LTD. 821 Acts were repealed and Trade and Merchandise Marks Act, 1958 come into A force.) Respondent was prevented to use the trade mark due to ban on import of Raleigh bicycles. The respondent entered into a collaboration agreement 11ith 'S' to give technical assistance, for manufacturing bicycles and marketing them under Raleigh Indian Trade mark. Pursuant thereto an Indian company was formed and was registered as permitted user of B the trade mark in 1954. Vide agreement dated December 29, 1962 the . company was permitted user till November 1, 1976. The company was taken over by Government of India, before the expiry of the agreement dated December 29, 1962 and vide agreement dated December 20, 1976, between the appellant corporation and the respondent, the trade mark was used by the appellant for 5 years. A joint application by the Company, as C registered user, and appellant corporation, duly signed by the respondent as proprietor was made before the Registrar. Subsequently, the Company \\'as nationalised and vested in appel.lant corporation vide notification under Industries Developn1cnt and Regulation Act. The joint application was rejected as abandoned for non-compliance of statutory ret1uirements. D On October 25, 1980, the respondent had allowed the appellant to manufacture bicycles and pass off the goods under their trade marks. After expiry of period of 5 years from the date of' agreement dated December 20, 1976 respondent gave notice to appellant to prevent it by restraint proceed- ings to use the trade mark. E Appellant filed application for rectification of the trade mark, before the High Court, against the respondent, pleading that the respondent had failed to provide technical assistance to the company after November 1, 1976 and that after November 1, 1976 neither the Company nor the appellant was registered user of the trade mark upto the date of filing of F the application and thus, the respondent has not bonafide used the trade · mark for a continuous period of 5 years. Single Judge dismissed the application and declined to rectify the trade mark. On appeal, the Division Bench of the High Court confirmed the
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