TaxTMI 
TaxTMI 
2019 (10) TMI 1546
X X X X Extracts X X X X
X X X X Extracts X X X X
....ALF OF PLAINTIFF 3. Mr. Amit Sibal, learned senior counsel for the plaintiff stated that the present suit was liable to be decreed summarily as the defendant no. 1 had no real prospect of defending its claim and the defendant no. 1's defence was an abuse of the process of law. 4. Learned senior counsel for the plaintiff submitted that the defendant No. 1 had made numerous admissions that the plaintiff was the rightful owner, proprietor and user of the Su-Kam Marks in respect of goods covered under Class 9 of the Trade Marks Act, 1999 and such admissions supersede any and all issues, including those disputed by the defendants. He pointed out the following instances wherein the defendant No. 1 had represented the plaintiff to be the owner of the Su-Kam Marks:- a. The plaintiff had secured registrations for the Su-Kam Marks in Class 9 and had been continuously and extensively using them since 1998, without any objection from defendant No. 1. b. The defendant No. 1 had represented to the public/independent third parties that the plaintiff was the owner of the Su-Kam Marks in Class 9 of the Trade Marks Act, 1999. The defendant No. 1 while entering into a Shar....
X X X X Extracts X X X X
X X X X Extracts X X X X
....or acquiescence, the court would be concerned with the conduct of a party for determination as to whether he can be permitted to take a different stand in a subsequent proceeding, unless there exists a statutory interdict. If the principle of estoppel applies, Sarafs will not be permitted by a court of law to raise the contention that the Company was not the owner of the property. 34. It is one thing to say that the property did not vest in the Company as there was a statutory embargo in that behalf; but it is another thing to say that a person is estopped from raising a question of title. The provisions of the Evidence Act are clear like Section 116, whereby in a certain situation a person may be estopped from pleading a title in himself. xxxx xxxx xxxx xxxx 36. In the instant case, it was Sarafs who represented the Company. They had made the representation that the Company was the owner of the property. Such a representation had been made to the appellant herein not only in terms of the decree obtained in the said OS No. 267 of 1980, but by reason of execution of the other documents including creation of mortgage of the property and discharge thereof in favou....
X X X X Extracts X X X X
X X X X Extracts X X X X
....tended that oral evidence was required to be led in the present suit as the plaint alleged that the Deed of Assignment dated 16th March, 2006 as well as the Trade Mark Licence Agreement dated 7th July, 1995 (hereinafter referred to as 'TMLA') were questionable and sought declarations that the Deed of Assignment was fabricated and the TMLA had stood terminated respectively. 8. He also pointed out that though the plaint averred that the Business Transfer Agreement dated 16th September, 1999 (for short "BT Agreement") and the Minutes of the Meeting dated 20th March, 2006 (for short "Minutes") were fabricated, yet no relief had been claimed qua the said BT Agreement and Minutes. 9. He emphasised that while the plaintiff had filed an expert forensic report in support of some of its allegations, the defendant no. 1 had also filed contrary forensic reports to deny any allegation of fabrication. He contended that the defendant no. 1 had denied all allegations of documents being fabricated or questionable. Consequently, according to Mr. Virmani, the issue that would arise in the matter is whether the impugned documents were fabricated or questionable or authentic. He submitted....
X X X X Extracts X X X X
X X X X Extracts X X X X
....d to the plaintiff. He stated that the BT Agreement which was filed with the Registrar of Companies along with return of allotment in 2002, clearly recorded defendant no. 1 to be the owner of the Su-Kam marks, "4. The trade mark/Brand Name "SU-KAM" shall remain the property of Mr. Kunwer Deep Sachdeva, Prop M/s. SU-KAM CABLE TV SYSTEMS, New Delhi. The trade mark/Amount of Royalty for using the brand name SU-KAM shall be mutually decided between the company and Kunwer Deep Sachdeva from Year to Year basis." He emphasised that under the BT Agreement, the plaintiff had acknowledged that the partnership firm was engaged in the Inverter business. Thus, according to him, the plaintiff being the licencee, could not have proprietary rights in the SU-KAM trade mark. 13. He reiterated that though defendant no. 1 had applied for SU-KAM in class 9 vide the Trade Mark Application No. 821727 on 5th October, 2008 (i.e. prior to incorporation of plaintiff-company), yet the trade mark records showed that the said mark had been registered in the name of the plaintiff, ignoring the claim of defendant no. 1. He stated that upon discovery of said mistake, the said Deed of Assignment had been execute....
X X X X Extracts X X X X
X X X X Extracts X X X X
....at there had been no abandonment of the trademark Su-Kam by the defendant no. 1. He contended that in terms of Clause 5 of the TMLA, all use of the trade mark would enure to the benefit of the Licensor, i.e. defendant no. 1. 17. Learned senior counsel for the defendant no. 1 stated that the representations to Reliance India Power Fund were dated 27th February 2006, i.e. prior to execution of Deed of Assignment. In any event, he stated that at that stage defendant no. 1 and his family owned the entire shareholding of the plaintiff company and the defendant no. 1 treated the company as its alter-ego and did not consider the company to be separate from defendant no. 1. 18. Learned senior counsel for the defendant no. 1 stated that the defendant no. 1 did not sign the plaint of the infringement suit filed in 2015 by the plaintiff. He pointed out that the plaintiff did not authorise the person signing the plaint and was unaware of the said suit. He stated that, in any event, in terms of the TMLA, the plaintiff was obligated to maintain the licensed trademark, i.e. SU-KAM, including taking all actions to protect the said trademark. He emphasised that the plaintiff had instituted th....
X X X X Extracts X X X X
X X X X Extracts X X X X
....abrication and prayer (g) pertaining to damages. The relevant portion of the affidavit dated 02nd May, 2019, is reproduced hereinbelow- "15. I hereby state that in view of the foregoing, the Plaintiff is hereby giving up its claims based on fraud and fabrication and consequent relief(s) based thereon, for the purposes of the Application for Summary Judgment under Order XIIIA of CPC, and is agreeable to lesser prayers being granted on the basis of the categorical admissions and holding out by the Defendant No. 1, inter alia, as to ownership of the SU-KAM Marks vesting in the Plaintiff. Therefore, the Plaintiff hereby states that it hereby gives up the following prayers, which are premised on the allegations of fraud and fabrication, as stated hereinafter: (i) Prayer (a) - The Plaintiff limits this prayer to the first part seeking that this Hon'ble Court pass and pronounce a decree of declaration that the Deed of Assignment dated March 16, 2006, is invalid and gives up the latter part of the prayer alleging invalidity on the ground that it is false and fabricated; (ii) First part of prayer (b), i.e. Pass and pronounce a decree of declaration that the Li....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... registration for the mark under No. 821727 in Class 9; (d) Pass and pronounce a decree of permanent injunction restraining the Defendant No. 1 from holding himself to be the owner of the SU-KAM Marks to third parties, including the resolution processional, governmental authorities, banks, financial institutions, and public at large; (e) Pass and pronounce a decree declaring that the Defendant No. 1 has misused his position as the Managing Director of the Plaintiff and with consequential relief of permanent injunction restraining him from proceeding further with his request for recordal of assignment filed with the Trade Marks Registry in respect of the Plaintiff's registration for the mark under No. 821727 in Class 9 and/or any other similar request filed by the Defendant No. 1; (f) Pass and pronounce a decree of permanent injunction restraining the Defendant No. 1 from applying for and/or obtaining registration from any competent body or Government authority for SU-KAM Marks singularly or in conjunction with any other words or monogram/logo in respect of any trade mark, trade/corporate name, domain name or copyright registration or any other manner ....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... a "fanciful" prospect of success: Swain v. Hillman MANU/UKWA/0649/1999 : [2001] 1 All ER 91; ii) A "realistic" claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v. Patel [2003] EWCA Civ 472 at [8]; iii) In reaching its conclusion the court must not conduct a "mini-trial": Swain v. Hillman; iv) This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v. Patel at [10]; v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v. Hammond (No 5) [2001] EWCA Civ 550; vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided wit....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... trial. (c) The facts are wholly within the applicant's hands. In such a case it may be unjust to enter judgment without giving the respondent an opportunity of establishing a defence in the light of disclosure or after serving a request for further information. However, summary judgment will not necessarily be refused in cases where the evidence for any possible defence could only lie with the applicant if there is nothing devious or artificial in the claim. (d) The applicant has acted harshly or unconscionably, or the facts disclose a suspicion of dishonesty or deviousness on the part of the applicant such that judgment should only be obtained in the light of publicity at trial." 27. Learned senior counsel for plaintiff stated that the only reason for going to trial, in the present case, as set out by the defendant no. 1 was that the plaintiff had made allegations of fraud and fabrication and certain prayers were sought based on these allegations. He pointed out that this reason no longer survived inasmuch as the plaintiff had given up those prayers by filing an affidavit dated 02nd May, 2019. 28. Learned senior counsel for plaintiff contended that def....
X X X X Extracts X X X X
X X X X Extracts X X X X
....on a trade mark is to be valid in all respects except in the three cases set out in Section 32. The proprietor of an unregistered trade mark whose mark is unauthorisedly used by another cannot, however, sue for the infringement of such trade mark. His only remedy lies in bringing a passing-off action, an inconvenient remedy as compared to an infringement action. In a passing-off action the plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the plaintiff's goods so that if it is used in relation to any goods of the kind dealt with by the plaintiff, it will be understood by the trade and public as meaning that the goods are the plaintiff's goods. In an infringement action, the plaintiff is not required to prove the reputation of his mark. Further, under Section 37 a registered mark is assignable and transmissible either with or without goodwill of the business concerned while under Section 38, an unregistered trade mark is not assignable or transmissible except in the three cases set out in Section 38(2). 37. As the registration of a trade mark confers such valuable rights upon the registered proprietor thereof....
X X X X Extracts X X X X
X X X X Extracts X X X X
...., since it has always been accepted that it is permissible to sell a trade mark together with the goodwill of the business in the course of which the trade mark has been used." (emphasis supplied) In the same case, Lord Brightman in the House of Lords [(1984) 1 All ER 426, 433] summed up the position in law thus: "My Lords, although as a matter of ordinary English, trafficking in trade marks might mean the buying and selling of trade marks, it seems obvious that it is to have a more specialised meaning in a trade mark context. I have no quarrel with the definitions suggested by the assistant registrar and by Sir Denys Buckley, but perhaps one further attempt on my part may not be out of place. The courts have to grope for some means of delineating the forbidden territory, and different modes of expression may help to indicate boundaries which are not and cannot be marked out with absolute precision. To my mind, trafficking in a trade mark context conveys the notion of dealing in a trade mark primarily as a commodity in its own right and not primarily for the purpose of identifying or promoting merchandise in which the proprietor of the mark is interested. If th....
X X X X Extracts X X X X
X X X X Extracts X X X X
....t had never been acted upon by the defendant no. 1 and a request for recordal of assignment was filed belatedly by the defendant no. 1 on 18th July, 2018, only i.e. after a gap of twelve years, which showed his mala fides. 33. Learned senior counsel for the plaintiff submitted that the execution of Deed of Assignment was not authorised by the Board of Directors on account of lack of proper quorum for the Board Meeting. He stated that three members were present for the Board meeting on 20th March, 2006, i.e. defendant no. 1, Mrs. Geeta Sachdeva (wife of defendant no. 1) and Mr. Nagender Bajaj. He contended that as defendant no. 1 and Mrs. Geeta Sachdeva were interested Directors, they could not "take part in the discussions of or vote on" in accordance with the mandate of Section 300 of the Companies Act, 1956. He submitted that due to defendant no. 1 and his wife's participation in the Board Meeting on 20th March, 2006 any resolution passed in the said meeting cannot be relied or acted upon. SUR-REJOINDER AND REPLY 34. At the fag end of the rejoinder arguments, learned counsel for defendant no. 1 filed an application under Order VI Rule 17 CPC for amendment of the writ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ESS EXPENSIVE MEANS TO ACHIEVE A FAIR AND JUST RESULT 39. The Commercial Courts Act, 2015 has been enacted with the intent to improve efficiency and reduce delay in disposal of commercial cases. The relevant portion of the Statement of Objects and Reasons of the Commercial Courts Act, 2015 is reproduced hereinbelow:- "to have a streamlined procedure which is to be adopted for the conduct of cases in the Commercial Courts and in the Commercial Divisions by amending the Code of Civil Procedure 1908, so as to improve the efficiency and reduce delays in disposal of commercial cases. The proposed case management system and provisions for summary judgment will enable disposal of commercial disputes in a time bound manner." (emphasis supplied) 40. Amended Order XIIIA of CPC, as applicable to commercial disputes, enables the Court to decide a claim or part thereof without recording oral evidence. Order XIIIA of CPC seeks to avoid the long drawn process of leading oral evidence in certain eventualities. Consequently, the said provision enables disposal of commercial disputes in a time bound manner and promotes the object of the Commercial Courts Act, 2015. 41. Rule 3 of....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ould look to see what will happen at the trial and that if the case is so weak that it has no reasonable prospect of success, it should be stopped before great expenses are incurred. The relevant portion of the Three Rivers District Council (supra) judgment is reproduced hereinbelow:- "[90] The test which Clarke J applied, when he was considering whether the claim should be struck out under RSC Ord 18, r. 19, was whether it was bound to fail: see p. 171 of the third judgment. Mr. Stadlen submitted that the court had a wider power to dispose summarily of issues under CPR Part 24 than it did under RSC Ord 18, r. 19, and that critical issue was now whether, in terms of CPR rule 24.2(a)(i), the claimants had a real prospect of succeeding on the claim. As to what these words mean, in Swain v. Hillman [2001] 1 All ER 91, 92, Lord Woolf Mr. said: "Under r. 24.2, the court now has a very salutary power, both to be exercised in a claimant's favour or, where appropriate, in a defendant's favour. It enables the court to dispose summarily of both claims or defences which have no real prospect of being successful. The words 'no real prospect of being successful or ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ons to strike out a claim. When the court is considering, in a case to be decided under the Civil Procedure Rules, whether or not it is just in accordance with the overriding objective to strike out a claim, it is not necessary to analyse that question by reference to the rigid and overloaded structure which a large body of decisions under the former rules had constructed." [93] In Swain v. Hillman Lord Woolf Mr. gave this further guidance: "It is important that a judge in appropriate cases should make use of the powers contained in Part 24. In doing so he or she gives effect to the overriding objectives contained in Part 1. It saves expense; it achieves expedition; it avoids the court's resources being used up on cases where this serves no purpose, and, I would add, generally, that it is in the interests of justice. If a claimant has a case which is bound to fail, then it is in the claimant's interests to know as soon as possible that that is the position. Likewise, if a claim is bound to succeed, a claimant should know this as soon as possible Useful though the power is under Part 24, it is important that it is kept to its proper role. It is not meant to....
X X X X Extracts X X X X
X X X X Extracts X X X X
....when the judge is able to reach a fair and just determination on the merits on a motion for summary judgment. The Court further held that that is the case when the process allows the judge to make necessary findings of fact, allows the judge to apply the law to such facts and when such a process is proportionate, more expeditious and a less expensive means of achieving a just result. Consequently, when a summary judgment motion allows the judge to find the necessary facts and resolve the dispute, it would not be necessary to proceed to trial. In this regard the standard for fairness is whether or not the procedure involved in a summary judgment would give the judge the confidence to find necessary facts and apply the relevant legal principles to resolve the dispute. The relevant portion of the said judgment is reproduced hereinbelow:- "[8] More than a decade ago, a group of American investors, led by Fred Mauldin (the Mauldin Group), placed their money in the hands of Canadian "traders". Robert Hryniak was the principal of the company Tropos Capital Inc., which traded in bonds and debt instruments; Gregory Peebles, is a corporate-commercial lawyer (formerly of Cassels Broc....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... justice system is premised upon the value that the process of adjudication must be fair and just. This cannot be compromised. [24] However, undue process and protracted trials, with unnecessary expense and delay, can prevent the fair and just resolution of disputes. The full trial has become largely illusory because, except where government funding is available, ordinary Canadians cannot afford to access the adjudication of civil disputes. The cost and delay associated with the traditional process means that, as counsel for the intervener the Advocates' Society (in Bruno Appliance) stated at the hearing of this appeal, the trial process denies ordinary people the opportunity to have adjudication. And while going to trial has long been seen as a last resort, other dispute resolution mechanisms such as mediation and settlement are more likely to produce fair and just results when adjudication remains a realistic alternative. xxx xxx xxx [34] The summary judgment motion is an important tool for enhancing access to justice because it can provide a cheaper, faster alternative to a full trial. With the exception of Quebec, all provinces feature a summary judgmen....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ent will provide a fair and just adjudication. When a summary judgment motion allows the judge to find the necessary facts and resolve the dispute, proceeding to trial would generally not be proportionate, timely or cost effective. Similarly, a process that does not give a judge confidence in her conclusions can never be the proportionate way to resolve a dispute. It bears reiterating that the standard for fairness is not whether the procedure is as exhaustive as a trial, but whether it gives the judge confidence that she can find the necessary facts and apply the relevant legal principles so as to resolve the dispute." (emphasis supplied) 48. In fact, the Federal Court Ottawa, Ontario in Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776 and High Court of Ireland in Abbey International Finance Ltd. v. Point Ireland Helicopters Ltd. Anr., [2012] IEHC 374, have held that even damages as well as unliquidated compensation can be awarded by way of summary judgment. The relevant portion of the said judgments are reproduced hereinbelow:- A. Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc. (supra):- "[96] Further, the Brit....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... which has to be achieved in order to avoid summary judgment. In the absence of an ability to seek summary judgment in a non-liquidated claim an unmeritorious defendant can procrastinate for months or perhaps years. That would be an obvious injustice to a plaintiff in such a case. 19. I believe there to be an inherent jurisdiction in the court to enable a plaintiff to seek summary judgment in such circumstances. It is true that there is no specific provision in the Rules of the superior Courts to enable such an application to be brought, save in respect of cases in the Commercial List to which I will turn in due course. But the absence of a specific rule should not deny a meritorious plaintiff from speedy relief against an unmeritorious defendant in an appropriate case." (emphasis supplied) 49. Consequently, this Court is of the view that when a summary judgment application allows the Court to find the necessary facts and resolve the dispute, proceeding to trial would generally not be proportionate, timely or cost effective. It bears reiteration that the standard for fairness is not whether the procedure is as exhaustive as a trial, but whether it gives the Court the....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e reproduced hereinbelow:- 55. From the aforesaid Certificates it is apparent that the plaintiff is the exclusive registered proprietor of the SU-KAM marks for the inverter business in Class 9 of the Trade Marks Act, 1999 and the same had been renewed on 05th October, 2008 and 09th March, 2016 when the defendant no. 1 was in exclusive control and management of the plaintiff-company. 56. Admittedly, till date no rectification application has been filed by defendant no. 1 and plaintiff has spent huge amounts of money on expanding its business, advertising and defending the marks by filing suits. 57. The defendant no. 1's defence that though it had initially applied for the mark in its name, yet the registration had been granted in plaintiff's favour 'cuts no ice' as the defendant no. 1 was in the management of the plaintiff company right from inception till appointment of resolution professional on 11th May, 2018 and during this period applications for renewal of the said marks had also been filed. It is pertinent to mention that even during arguments learned senior counsel for defendant no. 1 repeatedly emphasised that defendant no. 1 treated the plaintiff a....
X X X X Extracts X X X X
X X X X Extracts X X X X
....r, there is no pleading in the written statement to the effect that the erstwhile partnerships or defendant no. 1 was engaged in inverter business and no evidence can be led beyond or contrary to pleadings. 63. In any event, assuming that the TMLA specifically mentioned "inverters" it would then also not help defendant no. 1 as defendant no. 1 has admitted in the written statement that the two erstwhile partnerships were only conducting cable TV business. There is no plea that they were engaged in any other business, let alone inverters. 64. It is settled law that where a mark is unregistered, as it was at that stage, ownership of the proprietor is not in the trade mark, but in the goodwill associated with the business where the trade mark is used. Since the inverter business was never carried out by the partnership, no goodwill was generated in favour of defendant no. 1 for the inverter business. Consequently, any licence under the TMLA could have been a licence in respect of the goodwill associated with the cable TV business only, since that was admittedly the business conducted by the partnership. 65. Accordingly, based on the admissions of defendant no. 1 and applicabl....
X X X X Extracts X X X X
X X X X Extracts X X X X
....neficiaries/interested Directors by virtue of Section 300 of the Companies Act, 1956. Section 300(1) of the Companies Act, 1956 states as under:- 300. Interested director not to participate or vote in Board's proceedings-(1) No director of a company shall, as a director, take any part in the discussion of, or vote on, any contract or arrangement entered into, or to be entered into, by or on behalf of the company, if he is in any way, whether directly or indirectly, concerned or interested in the contract or arrangement; nor shall his presence count for the purpose of forming a quorum at the time of any such discussion or vote; and if he does vote, his vote shall be void. (emphasis supplied) 70. Moreover, Deed of Assignment is ineffective against plaintiff because it had acquired a conflicting interest in the registered trade mark without the knowledge of assignment or transmission as in the present case between 16th March, 2006 (i.e. date of execution of Deed of Assignment) and 09th July 2018 (i.e. when the defendant no. 1 submitted the Deed of Assignment to the Interim Resolution Professional), there was no assertion or representation by defendant no. 1 that pla....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ts of the company and courts have directed them to reimburse the loss to the company where it was found that Directors had applied the Company's money in payment of an improper commission. The strictness with which the courts view the responsibility and the sacredness of the trust reposed in the Directors was emphasised long time back in Imperial Mercantile Credit Assn. v. Coleman, (1873) L.R. 6 H.L. 189) In that case one Coleman broker and a Director of a financial company, had contracted to place a large amount of railway debentures for a commission of 5 percent. He proposed that his company should undertake to place them for a commission of 1-1/2 percent to the company. He was held liable to account of 3-1/2 percent. In so deciding Malins, V.C. made the following observations, which were later on upheld by the House of Lords:-- 'It is of the highest importance that it should be distinctly under-stood that it is the duty of Directors of companies to use their best exertions for the benefit of those whose interests are committed to their charge, and that they are bound to disregard their own private interests whenever a regard to them conflicts with the proper dis....
X X X X Extracts X X X X
X X X X Extracts X X X X
....o the company. Similar observations were made in the Report of the High-Powered Expert Committee on Companies and MRTP Acts (1978) which succinctly expresses the legal position of the directors as follows:-- 'Directors are appointed to act in the interests of the company and an important area of their legal responsibility stems from the law of trusts--they have a fiduciary relationship with the company. The duties arising from the relationship are well defined viz. to exercise their powers for the benefit of the company, to avoid a conflict of interests, and a duty not to restrict their right (by contract or otherwise) in freely and fully exercise their duties and powers. In addition to their fiduciary duties, directors also owe a duty of care to the company not to act negligently in the management of its affairs the standard being that of a reasonable man looking after his own affairs.' 9. The learned judge in dealing with the aspect whether the company now represented by the Official Liquidator was entitled to avoid the agreement of 1-6-1967, has proceeded on the basis that the same could only be done if fraud in execution of this agreement was proved an....
X X X X Extracts X X X X
X X X X Extracts X X X X
....of Lord Cranworth L.G. "so strictly is this principle adhered to that no question is allowed to be raised as to the fairness or unfairness of a contract so entered into". Thus the contract will be voidable at the instance of a company and any profits made by the Directors personally will be recoverable by the company (page 527 supra). 12. Various remedies could be resorted to by the Company in case of a breach of duties by the Directors. Thus one of the remedies provided to the company is recession of a contract, another is accounting for profits. The liability of the Director may arise out of a contract made between a director and a company. In such a case accounting is a remedy additional to avoidance of contract and is normally available whether or not is there recession, (page 556 supra. Gower). 13. A resume of the law would thus clearly show that no doubt the Companies Act does not forbid a contract being entered into by the company with a firm in which one of the Directors is a partners, it is also true that the respondent Director disclosed his interest in the agreement when the same was approved by the Board of Directors at its meeting held on 15-6-1967. B....
X X X X Extracts X X X X
X X X X Extracts X X X X
....r whom one is a fiduciary. xxx xxx xxx 21. The learned single Judge has not accepted that the contract was without consideration. The learned Judge holds that it was a service contract for the purpose of employment to boost sales and because of this service there was a good consideration even to paying Rs. 1 lakh 20 thousand per annum as a minimum fee. Normally if a party undertakes to boost sales and use his expertise for this purpose on some minimum fee it is possible to say that there was a proper consideration for contract. But it was the Official Liquidator's case in reply to the application for arbitration that none of these agencies including the respondents had ever dealt with steel products or had any experience in the line and that this device was fraudulently and collusively adopted to siphon away the company's funds for the individual and personal benefits of the said directors, at a time when the company to their full knowledge was passing through a financial crisis beginning with July 1966. It was also stated that they had not rendered any service and the agreement had never been acted upon. Infact Shri B.K. Bedi, the Chairman of the company who ha....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ent. In that view the company would have been justified, had any benefit been taken by the respondents to ask for the account and the restoration of the amount. In the present case the respondents chose to claim to have the matter referred to the arbitrator. It is interesting to note that in the statement of claim filed before the arbitrator the respondents have prayed for a payment of Rs. 6 lakhs which is worked out at the rate of 10,000/- per month for 5 years, no suggestion of having done any work is even mentioned. This also would show the untenable nature of the arrangement so far as the company was concerned. This agreement is patently against the interest and benefit of the company. 25. We would, therefore, hold that this agreement was vitiated and void and the official liquidator representing the company is entitled to ask for its recession. As we are satisfied that this agreement of 1-6-1967 which was approved by the Board of Directors on 15-6-1967 was not in the interest and benefit of the company the same is, therefore, liable to be avoided by the Official Liquidator. In that view of the matter as the agreement is held not to be subsisting, being void, and as th....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ich no entry has been made in the register in accordance with subsection (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs." has w.e.f. 8th July, 2013 been substituted by the Trade Marks (Amendment) Act (40) of 2010 as under: "45. Registration of assignments and transmissions--(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of such assignment or transmission to be entered on the register. (2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished. (3) Wh....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... Bench of the High Court of Bombay in Parksons Cartamundi Pvt. Ltd. Vs. Suresh Kumar Jasraj Burad MANU/MH/0485/2012MANU/MH/0485/2012 has held that though prior to the amendment registration of assignment under Section 45 could not be said to be a mere formality but is so after the amendment. 22. One thing which is however clear as a day light on a reading of Section 45 is that registration of assignment under Section 45 is mandatory. This is evident from the use of the word 'Shall' in Section 45(1). 23. Thus it is mandatory for a assignee of a registered trade mark to apply in the prescribed manner to the Registrar, Trade Marks to register his title thereto. 24. Seen in this light what distinguishes the present case from Sun Pharmaceuticals Industries Limited supra and the judgments relied upon therein is that while in all those cases the plaintiff had applied to the Registrar, Trade Marks for registration of his title to the trade mark by assignment or transmission and non-registration was not attributable to any default on the part of the plaintiff therein, the plaintiff herein for the last nearly eight years from the date of the claimed assignm....
X X X X Extracts X X X X
X X X X Extracts X X X X
....Cum Shareholders Agreement gives status of trademarks and registrations in an annexure being Exhibit H as on 27th February, 2006, yet the covenant in the said Agreement dated 31st March, 2006 clearly stipulates that all products and names listed in Exhibit H are owned and held by the plaintiff company and "All rights to Intellectual Property are owned exclusively by the Company (Plaintiff), free and clear of any encumbrances, and no other person has any right or interest in or license to use or right to license others to use any of them." 77. In any event, the SU-KAM marks with respect to inverters in Class 9 of the Trade Marks Act, 1999 were subsequently renewed by the plaintiff-company on 05th October, 2008 and 09th March, 2016 when defendant no. 1 was in its control and management. 78. A suit had also been filed in 2015 for infringement of the SU-KAM marks by the plaintiff when the defendant no. 1 was the Managing Director of the plaintiff company and held more than eighty per cent of its shares. In the said suit, filed under the aegis of defendant no. 1, plaintiff was identified as the owner of the SU-KAM marks. Plaintiff then under the exclusive management and control of....
X X X X Extracts X X X X
X X X X Extracts X X X X
..../0098/1952 : AIR 1954 SC 82].) 14. "Estoppel is when one is concluded and forbidden in law to speak against his own act or deed, yea, though it be to say the truth" -- Co. Litt 352(a), cited in Ashpitel v. Bryan [(1863) 3 B & S 474: 122 ER 179: 32 LJQB 91] B & S at p. 489; Simm v. Anglo American Telegraph Co. [(1879) 5 QBD 188: 49 LJQB 392: 42 LT 37 (CA)], per Bramwell, L.J. at p. 202; Halsbury, Vol. 13, para 488. So there is said to be an estoppel where a party is not allowed to say that a certain statement of fact is untrue, whether in reality it be true or not. Estoppel, or conclusion, as it is frequently called by the older authorities, may therefore be defined as a disability whereby a party is precluded from alleging or proving in legal proceedings that a fact is otherwise than it has been made to appear by the matter giving rise to that disability. (Halsbury, Vol. 13, para 448) The rule on the subject is thus laid down by Lord Denman, in Pickard v. Sears [(1837) 6 Ad & El 469: 112 ER 179] Ad & E at p. 474: ER p. 181 "But the rule of law is clear, that, where one by his words or conduct wilfully causes another to believe the existence of a certain state of t....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ual justification be described both as a rule of evidence and as a rule creating or defeating rights. It would be useful to refer in this connection to the case of Depuru Veeraraghava Reddi v. Depuru Kamalamma [MANU/TN/0099/1951MANU/TN/0099/1951 : AIR 1951 Mad 403: (1950) 2 MLJ 575] where Vishwanatha Sastri, J. observed: (AIR p. 405, para 7) "Estoppel though a branch of the law of evidence is also capable of being viewed as a substantive rule of law insofar as it helps to create or defeat rights which would not exist and be taken away but for that doctrine...." 20. Of course, an estoppel cannot have the effect of conferring upon a person a legal status expressly denied to him by a statute. But where such is not the case a right may be claimed as having come into existence on the basis of estoppel and it is capable of being enforced or defended as against the person precluded from denying it. xxx xxx xxx 24. The following passage from the Law Relating to Estoppel by Representation by George Spencer, 2nd Edn. as indicated in Article 3 is as follows: "It will be convenient to begin with a satisfactory definition of estoppel by representation. Fro....
X X X X Extracts X X X X
X X X X Extracts X X X X
....2011 : (2011) 9 SCC 126 while interpreting Article 58 of the Limitation Act, 1963, relied on earlier judgments interpreting similar Article 120 of the Limitation Act, 1908. The relevant portion of the said judgment reads as under:- "28. Article 120 of the 1908 Act was interpreted by the Judicial Committee in Bolo v. Koklan and it was held: (IA p. 331) "There can be no 'right to sue' until there is an accrual of the right asserted in the suit and its infringement, or at least a clear and unequivocal threat to infringe that right, by the defendant against whom the suit is instituted." The same view was reiterated in Annamalai Chettiar v. Muthukaruppan Chettiar [MANU/PR/0080/1930MANU/PR/0080/1930 : ILR (1930) 8 Rang 645] and Gobinda Narayan Singh v. Sham Lal Singh. 29. In Rukhmabai v. Lala Laxminarayan the three-Judge Bench noticed the earlier judgments and summed up the legal position in the following words: "33. .... The right to sue under Article 120 of the [1908 Act] accrues when the defendant has clearly or unequivocally threatened to infringe the right asserted by the plaintiff in the suit. Every threat by a party to such a ri....
X X X X Extracts X X X X
X X X X Extracts X X X X
....of before recording of oral evidence. The expression "real" directs the Court to examine whether there is a "realistic" as opposed to "fanciful" prospects of success. This Court is of the view that the expression "no genuine issue requiring a trial" in Ontario Rules of Civil Procedure and "no other compelling reason.....for trial" in Commercial Courts Act can be read mutatis mutandis. Consequently, Order XIIIA, CPC would be attracted if the Court, while hearing such an application, can make the necessary finding of fact, apply the law to the facts and the same is a proportionate, more expeditious and less expensive means of achieving a fair and just result. 92. Accordingly, unlike ordinary suits, Courts need not hold trial in commercial suits, even if there are disputed questions of fact as held by the Canadian Supreme Court in Robert Hryniak (supra), in the event, the Court comes to the conclusion that the defendant lacks a real prospect of successfully defending the claim. 93. The present suit is within limitation as the right to sue accrues when there is a clear and/or unequivocal threat proceeding from the defendant which invades or jeopardises the plaintiff's rights.....
X X X X Extracts X X X X
X X X X Extracts X X X X
....al asset. 98. The defendant no. 1 is also estopped from leading evidence of his title to the SU-KAM marks in respect of Class 9, in view of the representations [in particular the applications for registration of the said marks dated 5th October, 1998, 9th March, 2006, as well as applications for renewal of marks dated 5th October, 2008 and 9th March, 2016, the Shares Subscription-cum-Shareholders Agreement with Reliance India Power Fund dated 31st March, 2006, a suit for infringement of SU-KAM marks filed in 2015 before this Court and a Brand Valuation Report by Ernst & Young dated 03rd March, 2015 - when defendant no. 1 was in management and control of the plaintiff-company and held more than 80 per cent of its shares] to the world at large that the plaintiff is the exclusive owner on which representations the plaintiff relied by expanding its business and by spending money on advertisements as well as promoting its business under the impugned marks. 99. Consequently, the admissions of defendant no. 1 in documents and pleadings prevent him from taking factual positions to the contrary and leading evidence to the contrary. Further from the pleadings and material on record, it....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... UNINTERRUPTED POWER SUPPLY. REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE LETTER S Published in Journal No. : 9998-1 Dated 14/06/2003 Document 3 History/PR Details REGISTRATION RENEWED FOR A PERIOD OF 10 YEARS FROM 5TH OCTOBER, 2008 ADVERTISED IN JOURNAL NO. 1414 REGISTRATION RENEWED FOR A PERIOD OF 10 YEARS FROM 05/10/2018 ADVERTISED IN JOURNAL NO. 1866 Correspondence & S.No Corres. Corres. Subject Notices No 1 Date 6673588 16/07/2018 03 NOTICE RENEWAL 2 6928296 01/09/2018 INTIMATION Despatch Despatch No Date View 01/09/2018 View LETTER Uploaded S.No Document description Documents Document Date 1 TM-1 05/10/1998 View 2 Note Sheet 01/03/2006 View 3 TM-33 01/03/2006 View 4 Authorization Document (POA) 01/03/2006 View 5 Grounds of Opposition 20/11/2014 View 6 Authorization Document (POA) 20/11/2014 View 7 11/12/2017 View 8 Correspondence TM-P(SUBSEQUENT PROPRIETOR BY WAY OF ASSIGNMENT OR TRANSFER 18/07/2018 View OF A SINGLE MARK) TM-P(CHANGE NAME OF REGISTERED 9 20/07/2018 View....