LexINFOSYS TECHNOLOGIES LTD. versus JUPITER INFOSYS LTD. AND ANR.
Open in Lexace · Ask the AI about this caseJudgment (excerpt)
A
B
[2010) 14 (ADDL.) S.C.R. 312
INFOSYS TECHNOLOGIES LTD.
V.
JUPITER INFOSYS LTD. AND ANR.
(Civil Appeal Nos.5743-45 of 2005)
NOVEMBER 9, 2010
[AFTAB ALAM AND R.M. LODHA, JJ.]
Trade and Merchandise Marks Act, 1958: ss.46 and 56
- Application under, for removal/rectification of entry in the
C register of trade mark - Held: 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 the application
is finally decided - To be a 'person aggrieved', there must be
o likelihood of some injury or damage to the applicant by such
trade mark - In the instant case, while ordering removal of
appellant's mark from the register of trade marks, it was
incumbent upon the IPAB to consider and satisfy itself about
the locus standi of the applicant to be heard as a 'person
E aggrieved' -
Having not done so, the applications for
rectification/removal of the subject trade marks from the
register need to be considered afresh by the IPAB - Trade
Marks Act, 1999.
Words and phrases: Expression 'person aggrieved' -
F Connotation of, in the context of s.46 and s.56 of the Trade
and Merchandise Marks Act, 1958.
The first respondent filed three separate applications
before the High Court under Sections 46 and 56 of the
G Trade and Merchandise Marks Act, 1958 praying for the
removal/rectification of the appellant's mark 'infosys' from
the register of trade mark in respect of Classes 7, 9 and
16.
H
312
INFOSYS TECHNOLOGIES LTD. v. JUPITER
313
INFOSYS LTD. AND ANR.
In the meantime, the 1958 Act was repealed -t)ythe
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Trade Marks Act, 1999 and the three petitions for
rectification/removal of registered trade marks were
transferred to the Intellectual Property Appellate Board
(IPAB).
In another suit filed by the appellant for infringement
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of trade mark, an affidavit was filed by the first
respondent on July 14, 2004, wherein it was stated that
the name of its company was changed from Jupiter
Infosys Limited to Jupiter International Limited and no
dispute was remaining between the parties under the C
trade mark. The IP~B allowed the three applications of the
first respondent. The instant appeals were filed
challenging the ord'e{ of the IPAB.
\'
Partly allowing the appeals, the Court
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HELD: 1. Whether the application is under Section 46
of the Trade and Merchandise Marks Act, 1958 or under
F
. Section 56 or a composite application under both the
sections, it is a pre-requisite that the applicant must be a
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perso.n aggrieve_d. Section 46(1) 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 and it must not be a mere
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. The persons who are aggrieved are all persons
who are in some way or the other substantially interested
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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
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314
SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A by a trader who was getting the benefit of a registered
trade mark to which he was not entitled. Section 56
provides for varying situations in which the person
aggrieved ·may apply for rectification of the registered
trade mark from the register. Although both Sections,
B 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. Section 46
c speaks for private interest while Section 56 speaks of a
public interest. [Paras 27, 28, 30] [332-B-H]
Hardie Trading Ltd. & Anr. v. Addisons Paint &
Chemicals Ltd. (2003) 11 SCC 92, relied on.
D
The Royal Baking Powder Company v. Wright, Crossley,
and Co. (1898) 15 RPC 677 - referred to.
Kerly's Law of Trade Marks and Trade Names (11th
edition) - referred to.
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2. It is true .that the appellant in oppositioExcerpt shown. Read the full judgment & AI analysis in Lexace.