HARDIE TRADING LTD. AND ANR. versus ADDISONS PAINT AND CHEMICALS LTD.

Citation: [2003] SUPP. 3 S.C.R. 686 · Decided: 12-09-2003 · Supreme Court of India · Bench: RUMA PAL · Disposal: Appeal(s) allowed

Judgment (excerpt)

A 
B 
HARDIE TRADING LTD. AND ANR. 
v. 
ADDISONS PAINT AND CHEMICALS LTD. 
SEPTEMBER 12, 2003 
[RUMA PAL AND B.N. SRIKRISHNA, JJ.] 
Trade and Merchandise Marks Act, 1958 s.46 (1)(3) r/w 2(2)(b), 
48(2) r/w 2(m)-Removal of registered trademark on ground of non-user-
Registered user agreement between H, inventor and holder of registered 
C trademarks comprising words 'Spartan' and 'Spartan Ve/ox' and rear 
picture of upper body of helmeted warrior carrying shield and spear 
(Hardie device), and 'A ', a manufacturer of paints and other surface 
cuttings with technical know-how supplied by H- 'A's application for 
registration of H's trademarks rejected on grounds of identity and 
D deceptive similarity- 'A' thereafter applying for rectification of register 
for deletion of H's trademarks-Application allowed and H's trademarks 
expunged on ground of non-user-Appeals by H dismissed by the High 
Court-Held, the order expunging H's trademarks was erroneous; there 
was no absolute non-user of trademark by H during period of five years 
and one month prior to applications for rectification; there were special 
E circumstances which justified H's non-user of trademark-Further held, 
the onus to establish the first two conditions in s. 46 before registered 
trademark can be removed is on the applicant whereas burden of proving 
existence of special circumstances affecting use of trademark is on the 
proprietor. 
F 
Trade and Merchandise Marks Act, 19 58 s.18-Application for 
registration of trademarks-'A' applying for registration of trademark of 
Hardie Device in 'A 's name-Order of Registrar granting registration 
affirmed by High Court-Held, High Court erred in not dealing with 'A 's 
G claim on merits and in concentrating only on the objections by H and its 
agent Hansa-Further held, 'A's application for registration of H's 
trademarks in its name ought to be rejected. 
Trade and Merchandise Marks Act, 1958 ss.12, 18, 102-Application 
to Registrar by 'A 'for registration of H's device-Objections of Hand its 
H agent Hansa overruled and 'A's application automatically allowed by 
686 
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. 
687 
Registrar and affirmed by High Court-Whether orders of the Registrar A 
an{i High Court sustainable-Held, the approach of the Registrar was 
fallacious; the merits of 'A's application for registration was required to 
be independently assessed by the Registrar irrespective of whether H and 
Hansa were able to prove their right to use the device in question-Held, 
fi1rther on facts 'A's application ought to have been rejected since there B 
was no positive proof adduced by 'A' of an intention to use the device. 
Interpretation of Statutes-Trade and Merchandise Marks Act, 1958 
ss.46 and 56-'person aggrieved'-Has, for the purposes of removal on 
ground of non-user under s. 46 a connotation different from the phrase used 
in s. 56 for canceling, expunging or varying an entry wrongly made in C 
the Register-In latter case, locus standi would be ascertained liberally 
since it would not only be against the interest of other persons carrying 
on same trade but also in the interests of the public to have such wrongful 
entry removed-Practice and Procedure. 
The trademarks in dispute, invented by the predecessor in interest D 
of the first appellant H, consisted of the words 'Spartan' and 'Spartan 
Velox' and a rear picture of the upper body of a helmeted warrior 
carrying a shield and spear (Hardie device}. H entered into registered 
user agreement on July 11, 1963 (initially for a period of three years 
and operative upto August 31, 1968} under which 'A' would be the E 
registered user of H's trademarks. 'A' would set up a factory at 
Madras to manufacture the surface coatings according to H's formulae. 
'A' undertook that all formulae and technical information which may 
be supplied to it by H would be treated as strictly confidential. 
Apart from the clauses which ensured H's strict supervision over the F 
quality of the surface coatings manufactured by 'A', the agreement 
specified : 
"The said trade marks shall not be used in conjunction with or 
in close juxtaposition to any other trade mark and shall at all times G 
be so described as clearly to indicate that they are the trade marks of 
the Proprietors and that they are being used by the Users only by way 
of permitted use." 
Hallowed 'A' to continue to use the tradema;ks and device till 
December 1971. In November 1971, 'A' applied 

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