Assignment of Trademarks Shall Only Take Effect When Assignee Applies to Registrar Within Maximum of 9 Months: Calcutta HC
The single-judge bench consisting of Justice Moushumi Bhattacharya of the Calcutta High Court recently, in the case of Paul Brothers and another v. Union of India and others (WPA 24933 of 2022) prevented an assignee from using trademarks obtained by means of an assignment of trademarks because the assignee failed to apply to the Registrar within the maximum time frame of 9 months prescribed by Section 42 of the Trade Marks Act, 1999.
Facts of the Case:
The petitioners claimed to be in the pharmaceutical industry and public auction purchasers of 14 trademarks. The aforementioned 14 trademarks were the subject of an e-auction notice published on April 23, 2022, as part of respondent no. 3’s public auction of sale. The Union of India (petitioner no. 1) bid in the e-auction and was declared the winning bidder. Following that, on May 11, 2022, the liquidator issued a sale certificate in favour of petitioner No. 1, confirming the sale of respondent No. 3 as a going concern, including the assets listed in the annexure to the Sale Certificate.
However, the petitioner later discovered that seven of the fourteen trademarks listed in the sale certificate were registered in the name of respondent no. 6, who is the daughter-in-law of one of the former Directors of respondent no. 3 (the company in liquidation). The High Court’s division bench, in an order dated January 24, 2023, barred the respondent in the appeal (respondent no. 3) from using the concerned trademarks until March 31, 2023, which was later extended until April 6, 2023. The current petitioners petitioned the High Court for a writ of mandamus against the Trade Marks Registry, Kolkata to revoke the assignment of seven of the fourteen trademarks in favour of respondent no. 6, as well as to restore the trade marks in favour of respondent no. 3 (Duckbill Drugs Private Limited), which went into liquidation on April 13, 2021.
The Court noted that the charge of abuse and giving birth to multiple litigations is not on the petitioners but on respondent no.6. The Court also stated that the presence of an alternative and effective remedy, including a statutory remedy, is not an absolute bar to the High Court’s jurisdiction to hear a writ petition under Article 226 of the Constitution. “Law makes a clear distinction between a stranger who is a bona fide purchaser of the property at an auction sale and a decree-holder purchaser at a court auction. The protection given to the former is of a higher order”, the Court said. In finality, the Court restrained respondent No. 6 from using the said 7 trademarks till the matter is heard out on affidavits.
Click here to view the judgment
“Prime Legal is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal falls into the category of the best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer”
JUDGMENT REVIEWED BY DIVYA SHREE GN