TaxTMI 
TaxTMI 
TaxTMI 
2019 (10) TMI 1546
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....or 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 Share Purchase-cum-Share Subscription Agreement with Reliance India Pow....
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.... 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 favour of State Bank of India. If by reason of such representation, a third party alters his position, indisputably, t....
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....ll 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 that where contentious issues of fraud and fabrication arise, a suit cannot be decided summarily and without oral evidence. In support of his submissi....
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....nt 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 executed by the plaintiff in favour of the defendant no. 1. He contended that the plaintiff had not provided any particulars as to how the said Deed of Assignment was fabric....
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.... 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 the suit in 2015 in discharge of its obligations under the TMLA. 19. Learned senior counsel for the defendant no. 1 stated that, the Ernst and Young Report was based on assertions made by the p....
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....ereby 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 License Agreement dated July 7, 1995 stood terminated, as on September 16, 1999, while retaining the latter part of the prayer seeking a decree of declaration that the License Agreement dated July 7, 1995 never was and is not appl....
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....nmental 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 whatsoever and/or for the purposes of using the same as a trade mark, service mark, trading style, corporate name, name of a business entity such as a firm or a partnership, website/domain and/or email address and the like; (h) Pass and pronounce an order for costs of the proceedings....
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....usion 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 without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the f....
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.... 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 defendant no. 1 had made no averment in his pleadings with respect to actual use of the marks for inverters and in absence of such pleading, he could not lead evidence for the same. He emphasised that reliance on trade mark registrations which were not in respect of inverters were in any case liable for cancellation on account of non-use. In support of his submission, he relied upon a judg....
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....intiff 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, a person cannot be permitted to register a trade mark when he has not used it in relation to the goods in respect of which it is sought to be registered or does not intend to use it in relation to such goods. The reason for not permitting such trade marks to be registered was thus stated by Romer, J., in Registered Trade Marks of John Batt & Co., In re and Carter's Application for a Trade Mark,....
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....de 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 there is no real trade connection between the proprietor of the mark and the licensee or his goods, there is room for the conclusion that the grant of the licence is a trafficking in the mark. It is a question of fact and degree in every case whether a sufficient trade connection exists." We have no hesitation in accepting the meaning given to the expression "trafficking in a trade mark" by Dillon, L.J., and Lord Brightman." 29. Learned senior counsel....
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....he 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 written statement incorporating the plea that the present suit was barred by limitation. Learned counsel for defendant no. 1 submitted that the present application for amendment was necessitated in view of the amendment of the prayer clause by the plaintiff. The said amendment application was allowed vide order dated 23rd August, 2019 without prejudice to the rights and contentions of either of the parties. 35. In sur-rejoinder, learned senior counsel for defendant no. 1 subm....
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.... 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 Order XIII-A of CPC empowers the Court to grant a summary judgment against a defendant where on an application filed in that regard, the Court considers that the defendant has no real prospect of successfully defending a claim, and there is no other compelling reason why the claim should not be disposed of before recording of oral evidence. Order XIIIA (3) of CPC, as applicable to commercial disputes, is reproduced hereinbelow:- "3. Grounds for summary judgment.--The Court may give a summary judg....
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....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 succeeding' do not need any amplification, they speak for themselves. The word 'real' distinguishes fanciful prospects of success or, as Mr. Bidder QC submits, they direct the court to the need to see whether there is a 'realistic' as opposed to a 'fanciful' prospect of success." [91] The difference between a test which asks the question "is the claim bound to fail? " and one which asks "does the claim have a real prospect of success?" is not easy to determine. In Swain v. Hillman, at p. 4, Lord Woolf explained that the reason for the contrast in ....
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.... 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 dispense with the need for a trial where there are issues which should be investigated at the trial. As Mr. Bidder put it in his submissions, the proper disposal of an issue under Part 24 does not involve the judge conducting a mini trial, that is not the object of the provisions; it is to enable cases, where there is no real prospect of success either way, to be disposed of summarily." (See [2001] 1 All ER 91 AT 94-95.) (emphasis supplied) 45. The Supreme Court of Canada in Robert Hryniak v. Fred Mauldin and Ors, 2014 SCC OnLine Can SC 53 has also held that trial should not be the default procedure. In the ....
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....lved 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 Brock & Blackwell) who acted for Hryniak, Tropos and Robert Cranston, formerly a principal of a Panamanian company, Frontline Investments Inc. xxx xxx xxx [11] Beyond a small payment of US $9,600 in February 2002, the Mauldin Group lost its investment. xxx xxx xxx [14] The motion judge concluded that a trial was not required against Hryniak. However, he dismissed the Mauldin Group's motion for summary judgment against Peebles, because that claim involved factual issues, particularly with respect to Peebles' credibility and involvement in a key meeting, which required a trial. Consequently, he also dismissed the moti....
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....e 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 judgment mechanism in their respective rules of civil procedure. Generally, summary judgment is available where there is no genuine issue for trial. xxx xxx xxx [42] Rule 20.04 now reads in part: 20.04 ... (2) [General] The court shall grant summary judgment if, (a) the court is satisfied that there is no genuine issue requiring a trial with respect to a claim or defence; or (b) the parties agree to have all or part of the claim determined by a summary judgment and the court is satisfied that it is appropriate to grant summary judgment. (2.1) [Powers] In determining under clause (2)(a) whether there is a genuine issue requiring a trial, the court shall consider the evidence submitted by the parties....
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....bbey 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 British Columbia Court of Appeal has confirmed that if the judge on a Rule 18A application can find the facts as he or she would upon a trial the judge should give judgment, unless to do so would be unjust, regardless of complexity or conflicting evidence. In determining whether summary trial is appropriate, the court should consider factors such as the amount involved, the complexity of the matter, its urgency, any prejudice likely to arise by reason of delay, the cost of taking the case forward to a conventional trial in relation to the amount involved, the course of the proceedings and any other matters that arise for consideration. See Inspiration Management Ltd. V McDeermind St. Lawrenc Ltd. (1989), 36 B.C.L.R. (2d) 202, [1989] B.C.J. No. 1003 at paragraphs 48 and 53-57 (C.A.). xxx xxx xxx [98] In this case, it....
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....dgment 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 confidence that it can find the necessary facts and apply the relevant legal principles so as to resolve the dispute as held in Robert Hryniak (supra). 50. In fact, the legislative intent behind introducing summary judgment under Order XIIIA of CPC is to provide a remedy independent, separate and distinct from judgment on admissions and summary judgment under Order XXXVII of CPC. 51. This Court clarifies that in its earlier judgment in Venezia Mobili (India) Pvt. Ltd. vs. Ramprastha Promoters & Developers Pvt. Ltd. & Ors., MANU/DE/1031/2019MANU/DE/1031/2019 while deciding two applications, both filed by the plaintiff in the said case (one under Order XII Rule 6 and other under Order XIIIA) it had applied the lowest common denominator test under both the provisions of the Code of Civil Procedure and held that the suit could be decreed by way of a summary judgment. 52.....
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....t 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 as his alter-ego. Consequently, the defendant no. 1 was all throughout aware of the aforesaid two registrations as well as their renewals and as he has not challenged the said registrations till date, his right, if any, in the said marks in Class 9 of the Trade Marks Act, 1999 stands, if not extinguished, at least barred by limitation. 58. Accordingly, as the aforesaid registrations are legal, valid as well as subsisting and in any event as there is no challenge to them either by way of a substantive suit or a counter-claim by the defendant no. 1, the contentions and submissions of defendant no. 1 with regard to adoption or licensing by way of TMLA or BT Agreement and/or transfer by way of Deed of Assignment are baseless, irrelevant as well as inconsequential and the plaintiff is the exclusive registered proprietor of SU-KAM marks in Class 9 of the Trade Marks Act, 1999. AS THE LICENCE GRA....
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....y, 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 applicable law, it can safely be said that the TMLA does not cover the inverter business and never was and is not applicable to the plaintiff. Consequently, no purpose will be served by leading oral evidence on whether the TMLA covers the inverter business. 66. The statement in the BT Agreement relied upon by defendant no. 1 refers to his existing ownership rights in the partnership. However, this Court is of the view that since no inverter business was carried out by the partnership, there was no existing right pertaining to SU-KAM marks with respect to inverters. Accordingly, the statement in the BT Agreement could, at most, refer to ownership of the trade mark Su-Kam in relation to the Cable TV business. Moreover, as stated hereinabove, in view of the registration certificate dated 22nd June, 2005 and 05th February, 2011 in favour of the plaintiff having come into effect on 05th October, 1998 and 09th March, 2006 respecti....
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....rch, 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 plaintiff is not the owner of the SU-KAM mark in Class 9. Consequently, defendant no. 1 had always held out plaintiff to be the owner of the SU-KAM marks which the plaintiff believed to be true. In view of this, defendant no. 1 is estopped from contending to the contrary and Mohori Bibee & Anr. Vs. Dharmodas Ghose, MANU/PR/0049/1903MANU/PR/0049/1903 : 7 CWN 441 is not applicable to the present case. 71. It is settled law that defendant no. 1 cannot be permitted to take advantage of his own breach of fiduciary duty to divest the company of its substratal asset as held in Globe Motors Ltd. Vs. Mehta Teja Singh & Co., MANU/DE/0149/1983MANU/DE/0149/1983. The relevant portion of the said judgment is reproduced hereinbelow:- "2. The respondent's case was that an agreement had been entered into with the appellant company which is now under liquidation by means of an agreement dated 1-6-1967 on the terms mentioned therein. In the said agreem....
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....ies 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 discharge of such duty.' 7. These observations were reiterated with approval in Regal v. Gulliver; 1942 (1) All. E.R. 378. In that case an action was brought by the company against the defendants directors to recover from them the sums of money which were alleged to have been profits made by them improperly and against the interest of company. Viscount Sankey, one of the law Lords accepted that the Directors were in a fiduciary position and their liability to account does not depend upon proof of male fide. In holding that the Directors were liable to account for the company the Court observed (p. 383 F) "at all material times they were directors and in a fiduciary position, and they used and acted upon their exclusive knowledge acquired as such directors. They framed resolutions by which they made a profit for themselves. They sought no authority from the company to do so, and by reason of their position and actions they made large profits for which, in my v....
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....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 and further that the way this fraud is to be proved was in the same manner and by the same test as in a civil suit. It is for this reason that the learned Judge seems to have placed over-emphasis on the enumeration of particulars if plea of fraud was to be established. Apart from the fact that this position is not factually correct (as we shall show later) this approach under-estimates the importance of the relationship of the Directors with the company which being fiduciary has to be judged by the tests broadly laid down for judging the conduct of a trustee. In holding the director liable for misfeasance or having worked against the interest of the company it is not necessary that fraud in the strictest term has to be proved. 'Thus a director may be shown to be so placed and to have been so closely and so long associated personally with the management of the company that he will be deemed to be not merely cognizant of but liable for fraud in the conduct of the business of the company even thou....
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....rue 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. But this fact by itself does not automatically prove that the arrangement which had been entered into by the company was not of such a nature which keeping in view the fiduciary relationship of Mehta Harnam Singh, a director of the company should not have been so entered into, thus giving a right to the company to avoid the contract and to ask for the recovery of the profits made by the Director. The test to be applied in the present case is-- had the company been a going concern and had some payments in pursuance of this very agreement been made to the respondents could the company have asked for recession of the contract or in case any payments had been made to the respondent Harnam Singh and others, for the return of the same to the company. If the answer is in the affirmative, the claim of the appellant must succeed. 14. We must now turn to the examination of the agreement to find out whether its terms were such which in the words of the Supreme Court would show that circumstances were such that there could be no other....
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....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 had negotiated the sales originally was unable to contradict that the plaintiff firm did not secure any business for the company. He also admitted that the firm was not associated with any other steel unit or any other manufacturing unit. He did not know that they had any experience as manufacturer. The control and the influence that these persons could exercise on the whole Board is apparent from his admission that Directors Kirpa Ram Saluja, Narinder Singh Kohli and a few other directors were even on the Finance Committee of the company and this committee had favoured the grant of selling agency to the respondent. Thus it is crystal clear that it is a case where the Board of 13 approved of these agreements, which granted the distribution rights of the company's steel products to 6 of themselves, of course after complying with the formality of disclosing their interest. Had the presence of Directors been the only objection but the terms on which the agreement was entered into showed some kind of fairness and business arrangement normally expecte....
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....the Official Liquidator. In that view of the matter as the agreement is held not to be subsisting, being void, and as the arbitration clause forms a part of the agreement will naturally not survive. The effect would be that there is no existing arbitration agreement and the respondents cannot ask for the matter to be referred to arbitration." (emphasis supplied) 72. Consequently, the Deed of Assignment is void for breach of fiduciary duty. SINCE RECORDAL OF DEED OF ASSIGNMENT IS MANDATORY, DEFENDANT NO. 1 CANNOT RELY ON THE SAID DOCUMENT 73. Assuming that the Deed of Assignment is valid, this Court is of the view that recordal of the said Deed is mandatory, as held by a Coordinate Bench of this Court in Ramaiah Life Style Cafe vs. Eminent Entertainment & Ors., CS(COMM.) 1433/2016, as admittedly the amended Section 45 of the Trade Marks Act applies to the present case. In distinguishing Section 45 as it presently stands, from the pre-amendment version of Section 45, a Coordinate Bench of this Court observed in the aforesaid case that non-compliance of mandatory requirement to record assignments would amount to flouting the law. It was held that any person not complying with the ....
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....e veracity of any statement or any document furnished. (3) Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period. (4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission." 18. It needs to be considered whether Section 45 as it now stands requires re-consideration of the view taken in Sun Pharmaceuticals Industries Limited supra. 19. Sub-section (4) of Section 45 of the Trade Marks Act as it now stands is new. It makes the assignment ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission. The defendants herein have however not acquired any conflicting interest in or under the registered trade mark. 20. There are c....
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....assignment and for the last nearly five years since the admitted knowledge of claimed infringement has not even applied to the Registrar of the Trade Marks for registering the assignment of trade mark in its favour. The possibility of the plaintiff not doing so for reasons not spelled out before this Court cannot be ruled out. The fact that the plaintiff has not chosen to make M/s. Ramaiah Developers & Builders (P) Ltd. as a party to this suit also raises doubt as to the validity of the assignment, on the basis whereof this suit for infringement has been filed. 25. Even otherwise, I am of the opinion that if this Court inspite of such delays and neglect on the part of the plaintiff grants to the plaintiff all the benefits and privileges to which a registered proprietor is entitled to, the same would amount to this Court allowing mandatory provisions of the statute to be flouted and/or not penalising the plaintiff therefor, making the statutory provisions otiose." (emphasis supplied) 74. Consequently, defendant no. 1 cannot rely on a document that was mandatory to register. Further, in Sun Pharmaceuticals Industries Limited (supra) application for recordal was filed in 2000 for ....
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.... 1 had averred in the said plaint, "The plaintiff was the first company in India that started a system for power backup in India....the products launched by the plaintiff under the mark SU-KAM have acquired a high degree of distinctiveness in the country due to continuous, extensive and popular use since a long uninterrupted period of more than 25 years making it a well-known mark. Resultantly, the mark SU-KAM is today perceived by the general public as well as by members of the trade as originating from plaintiff and no one else. It is submitted that by virtue of the aforementioned long, continuous and extensive use of the trademark SU-KAM and other related trademarks with the aforesaid trademark registrations for the same in favour of plaintiff, plaintiff has acquired both common law rights as well as statutory rights over exclusive use of the mark SU-KAM". 79. If the erstwhile partnerships had commenced the inverter business and defendant no. 1 was resultantly the owner of the SU-KAM trade mark for inverters, these statements could not have been made. 80. Further, when defendant no. 1 submitted his bid for the plaintiff company during the ongoing insolvency proceedings, he had....
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....ief, so as to alter his own previous position, the former is concluded from averring against the latter a different state of things as existing at the same time;" "The whole doctrine of estoppel of this kind, which is a fictitious statement treated as true, might have been founded in reason, but I am not sure that it was. There is another kind of estoppel -- estoppel by representation -- which is founded upon reason and it is founded upon decision also." Per Jessel, M.R. in General Finance & Co. v. Liberator [(1878) 10 Ch D 15: (1874-80) All ER Rep Ext 1597: 39 LT 600], Ch D at p. 20. See also in Simm v. Anglo American Telegraph Co. [(1879) 5 QBD 188: 49 LJQB 392: 42 LT 37 (CA)], QBD at p. 202 where Bramwell, L.J. said "An estoppel is said to exist where a person is compelled to admit that to be true which is not true, and to act upon a theory which is contrary to the truth." 15. On the whole, an estoppel seems to be when, in consequences of some previous act or statement to which he is either party or privy, a person is precluded from showing the existence of a particular state of facts. Estoppel is based on the maxim allegans contraria non est audiendus (a party is not to b....
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.... one is, or was perhaps intended to be, quite adequate, and many are incorrect, redundant, or slipshod in expression; the following general statement of the doctrine of estoppel by representation emerges: where one person ('the representor') had made a representation to another person ('the representee') in words or by acts and conduct, or (being under a duty to the representee to speak or act) by silence or inaction, with the intention (actual or presumptive), and with the result, of inducing the representee on the faith of such representation to alter his position to his detriment, the representor in any litigation which may afterwards take place between him and the representee, is estopped, as against the representee, from making, or attempting to establish by evidence, any averment substantially at variance with his former representation, if the representor at the proper time, and in the proper manner, objects thereto." xxx xxx xxx 30. If a man either by words or by conduct has intimated that he consents to an act which has been done and that he will not offer any opposition to it, although it could not have been lawfully done without his consent, and he ther....
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....ar threat gives rise to a compulsory cause of action depends upon the question whether that threat effectively invades or jeopardizes the said right." (emphasis supplied) 85. Consequently, right to sue accrues when there is a clear or unequivocal threat proceeding from the defendant which invades or jeopardises the plaintiff's rights. 86. 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 plaintiff is not the owner of the SU-KAM mark in Class 9. 87. On the contrary renewal of the SU-KAM trade marks in Class 9 on 05th October, 2008 and 09th March, 2016, when the defendant no. 1 was in exclusive control and management of the plaintiff company, proves beyond doubt that the defendant no. 1 did not even rely upon the alleged Deed of Assignment dated 16th March, 2006. 88. Consequently, the right to sue in the present case arose in favour of the plaintiff only on 09th July, 2018 when defendant no. 1 for the first time denied plaintiff's title to the ....
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....nterim resolution professional), there was no assertion by defendant no. 1 that the plaintiff is not the owner of the SU-KAM marks in Class 9. Consequently, the cause of action for filing the present suit arose for the first time on 09th July, 2018. 94. In the present case, the plaintiff is the exclusive registered proprietor of the trademarks SU-KAM with respect to inverters which fall within Class 9 in view of the registration certificates dated 22nd June, 2005 and 05th February, 2011 in favour of the plaintiff having come into effect on 05th October, 1998 and 09th March, 2006 respectively and which were renewed on 05th October, 2008 and 09th March, 2016 - when admittedly defendant no. 1 was in control and management of the plaintiff-company. Consequently, the defendant no. 1's contentions and submissions with regard to earlier adoption or licensing by way of TMLA dated 07th July, 1995 or BT Agreement dated 16th September, 1999 and/or subsequent transfer by way of Deed of Assignment dated 16th March, 2006 are baseless and inconsequential. 95. Further the Deed of Assignment is void for breach of fiduciary duty. In fact, the said Deed had been executed by the defendant no. 1 ....