Trade mark assignment and non-use do not defeat interim infringement protection where title has passed and registration remains valid.
An assignee of a registered trade mark can enforce infringement rights and seek interim protection upon execution of the assignment, because registration under Section 45 is only a record of title and pending mutation does not defeat enforceability. Non-use of the mark does not by itself bar relief; issues of non-use are dealt with under Section 47, while registration remains prima facie evidence of validity. A plea of abandonment or unclean hands was not established on the facts, and balance of convenience favoured protection of the registered mark, particularly for identical marks used on pharmaceutical goods. Interim injunction was therefore granted despite the pending entry of title in the register.
Issues: (i) Whether an assignee of a registered trade mark, whose name has not yet been entered in the Register, can maintain an action for infringement and seek interim protection; (ii) Whether alleged non-use of the registered trade mark defeats the claim for interim injunction; (iii) Whether the defendant could resist interim relief on the grounds of balance of convenience and alleged conduct of the plaintiff.
Analysis: The assignee acquires title to a registered trade mark on execution of the assignment, and registration under Section 45 of the Trade Marks Act, 1999 is only a recordal of that title. The expression "registered proprietor" in Section 28 must be read to include a person who has acquired title by assignment, otherwise the statutory scheme permitting assignment of trade marks would be defeated and there would be a hiatus in enforcement. Section 45(2) does not create an absolute bar against reliance on an unregistered assignment deed, because the court retains power to direct otherwise. The plaintiff's pending application for registration could not be treated as disabling its right to protect the mark, especially when no fault was attributable to it for the Registrar's inaction.
Analysis: Mere non-use of a registered trade mark does not by itself bar an infringement action. The scheme of the Act places non-use issues within the Registrar's jurisdiction under Section 47, while registration remains prima facie evidence of validity under Section 31. On the facts, the plaintiff was not shown to be a mere trafficker in the mark and had asserted title, opposition to the defendant's claim, and steps to protect the mark. The plea of abandonment was not established, and the defendant could not rely on its own use to defeat the statutory rights flowing from registration.
Analysis: The plea of unclean hands was not made out. The plaintiff's clarification regarding prior use did not amount to disqualifying conduct. In balancing convenience, the registered proprietor was entitled to protection, particularly in relation to pharmaceutical goods where confusion between identical marks could cause serious prejudice. The defendant, having adopted an identical mark, had no superior equity to continue use pending trial.
Conclusion: The plaintiff was held entitled to interim injunction notwithstanding the pending mutation of title in the register and notwithstanding the plea of non-use.
Final Conclusion: Interim protection of the registered trade mark was granted and the defendant was restrained from using the impugned mark during the suit, with limited time given to effect the change.
Ratio Decidendi: An assignee of a registered trade mark acquires enforceable title upon assignment, and pending registration does not negate the right to sue for infringement or obtain interim protection where the statutory registration remains valid and the challenge of non-use has not been pursued before the Registrar.
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