COMMNR., CENTRAL EXCISE , BANGALOREversusM/S. MEYER HEALTH CARE PVT. LTD. & ORS.

                         (2011] 4 S.C.R. 794

A         COMMNR., CENTRAL EXCISE , BANGALORE
                                   V.
         M/S. MEYER HEALTH CARE PVT. LTD. & ORS.
             (Civil Appeal No(s). 4052-4054 of 2003)
                           APRIL 07, 2011
B
               [DR. MUKUNDAKAM SHARMA AND
                      ANIL R. DAVE, JJ.]

        Excise Jaws:
c
        Exemption - Assignment Deed - Case registered under
  the Excise Jaw against assessee - Assignment of trade mark
  in favour of assessee subsequent to registration of the case
  - Assessee claiming benefit under Exemption Notification on
0 the basis of Assignment Deed - Whether or not the
  Assignment Deed which was entered into between the
  assessee and the owner of the trade mark on 6. 10. 1998 would
  date back to period prior to 19.9.1998 when the trade mark
  was assigned and whether the assessee is entitled to take
  benefit of Assignment Deed to avail the benefit of Exemption
E Notification - Held: The effect of making the registration
  certificate applicable from retrospective date is based on the
  principle of deemed equivalence to public uS'er of trade mark
  - This deeming fiction is applicable to provisions of Trade
  Mark Act and cannot be extended to the excise laws - As to
F whether or not the said Assignment Deed would relate back
  prior to a date of 19.9.1998 and consequence thereof was a
  matter which was not decided by the Tribunal - Matter remitted
  to the Tribunal for consideration of the s:::iid issue by recording
   an effective and reasoned decision - Trade Marks Act.
G
        CCE, Ahmedabad v. Vikshara Trading & Invest P. Ltd.
   & Anr. 2003(58)RLT 604(SC); Meghraj Biscuits Industries
   Ltd. v. Commissioner of C. Ex., U.P. 2007 (210) ELT 161
   (SC) ~ referred to.
H                                  794
   COMMNR., CENTRAL EXCISE , BANGALORE v.                      795.t
     MEYER HEALTH CARE PVT LTD. & ORS.
                        Case law reference:                            A

     2003(58) RLT 604(SC)           referred to         Para 2

     2007 (210) ELT 161 (SC) referred to                Para 2

    CIVIL APPELLATE JURISDICTION : Civil Appeal Nos.
                                                                       B
4052-4054 of 2003.

    From the Judgment & Order dated 22.11.2002 of the
Customs, Central Excise and Gold (Control) Appellate Tribunal,
South Zonal Bench, Bangalore in Appeal No. E/1873/99, E/
1874/99, E/1875/99.                                                    c
      Arijit Prasad, Arti Singh, D.D. Kamat, B.K. Prasad, Anil
 Katiyar for the Appellant.

    Alok Yadav, Pavan Agarwal, Rajesh Kumar for the
 Respondents.                                                          D

      The following Order of the Court was delivered

                              ORDER

      1. These appeals are directed against the judgment and           E
 order of the Custom, Excise and Gold (Control) Appellate
 Tribunal (CEGAT), South Zone Bench allowing the appeal filed
 by the Appellant before the Tribunal and holding that since there
 is an Assignment Deed in favour of the respondent in the
 present case, therefore, the respondent shall be entitled to the      F
 benefit of the Exemption Notification. The aforesaid findings of
 the Tribunal are under challenge iri this appeal on which we
 have heard the learned counsel appearing for the parties.

       2. Counsel appearing for the appellant has submitted that       G
  on the date when the case wa$ registered against the
  respondent, there was· no Assignment Deed executed in favour
  of the respor:ident and, therefore, the respondent is not entitled
  to take benefit of the aforesaid Assignment Deed to avail
. benefit under the exemption notificaton. The counsel appearing
                                                                       H
    796       SUPREME COURT REPORTS                   [2011] 4 S.C.R.
                                                                            •
A for the respondent, however, refutes the aforesaid submission
  contending, inter alia, that so far the brand name is concerned,
  the owner of the brand name has assigned the trade mark in
  favour of the respondent and, therefore, in view of the decision
  of the Supreme Court in CCE, Ahmedabad Vs. Vikshara
B Trading & Invest P. Ltd. & Anr. Reported in 2003(58) RLT
  604(SC) the respondent is entitled to avail the benefit of the
  Exemption Notification. However, our attention is drawn to
  another decision of this Court by the counsel appearing for the
  appellant in Meghraj Biscuits Industries Ltd. Vs.
C CommissionerofC. Ex., UP. Reported in 2007 (210) ELT 161
  (SC) wherein almost a similar issue came to be considered
  by this Court and while dealing with the same, this Court
  observed thus:

          "On reading the above quoted paragraphs from the above
D         judgment, with which we agree, it is clear that the effect of
          making the registration certificate applicable from
          retrospective date is based on the principle of deemed
          equivalence to public user of such mark. This deeming
          fiction cannot be extended to the Excise Law. It is confined
E         to the provisions of the Trade Marks Act. In a given case
           like the present case where there is evidence with the
           pepartment of the trade mark being owned by Mis. Kay
          Aar Biscuits (P) Ltd. and where there is evidence of the
          appellants trading on the reputation of M/s. Kay Aar
F          Biscuit&- (P) Ltd. which is not rebutted by the appellants
           (assessee), issuance of registration certificate with
           retrospective effect cannot confer the benefit of exemption
           notification to the assessee. In the present case, issuance
           of registration certificate with retrospective effect from 30-
           9-91 will not tantamount to conferment of exemption benefit
G
           under the Excise Law once it is found that the appellants
           had wrongly used the trade mark of M/s. Kay Aar Biscuits
           (P) Ltd."

          3. According to the provisions of the Trade Marks Act, for
H
•     COMMNR., CENTRAL EXCISE , BANGALORE v.
        MEYER HEALTH CARE PVT. LTD. & ORS.
                                                                 797


    getting registration of a trade mark, an application is required    A
    to be filed in accordance with the provisions incorporated in
    the said Act. Such an application is required to be advertised
    and a detailed procedure is required to be followed before
    grant of a registration in favour of a claimant. Since a variety
    of procedural steps are required to be taken like issuing an        B
    advertisement, hearing objections, if any filed, it becomes a
    lengthy procedure and, therefore, time consuming for grant of
    a registration in matters of trade mark. But once registration is
    granted in respect of a particular trade mark in terms of the
    application according to the provisions of the Trade Marks Act,     c
    the registration dates and relates back to the date of
    application. However, the position appears to be different as
    has been held by this Court so far excise law is concerned. This
    Court has already held in the aforementioned decision that
    effect of making the registration certificate applicable from       D
    retrospective date under the trade mark law is based on the
    principle of deemed equivalence to public user of such mark
    whereas such deeming fiction cannot be extended to the excise
    !aw and that the same is only confined to the provisions of the
    Trade Marks Act.
                                                                        E
         4. Admittedly, in the present case, the assignment of the
    trade mark in question granted in terms of the agreement
    entered into between the parties was on 6.10.1998, which is
    subsequent to the date of registration of the case by the
    Department, which was done on 19.9.1998. As to whether or           F
    not the effect and in fact, the aforesaid Assignment Deed which
    is granted in favour of the respondent would relate back prior
    to a date of 19.9.1998 and consequence thereof is a matter
    which is net decided by the Tribunal. Since the same is an issue
    which is relevant and relates to determination of the factual       G
    aspects, it would be appropriate to have a decision of the
    Tribunal on the said issue.

        5. We consider that it may not be proper for us to decide
    such a disputed question of fact by ourselves. We, therefore,       H
    798        SUPREME COURT REPORTS                [2011] 4 S.C.R.


A remit back this matter to the Tribunal for consideration of the
  aforesaid issue as to whether or not the Assignment Deed
  which was entered into between the respondent and the owner
  of the trade mark on 6.10.1998 would cHso be applicable to the
  case in hand and would date back prior to a period of 1998 to
B be considered and decided by the Tribunal by recording an
  effective and reasoned decision. Therefore, we set aside the
  order of the Tribunal to the aforesaid extent and remit back the
  matter to the Tribunal for de novo consideration of the
  aforesaid issue as expeditiously as possible, preferably within
c a period of six months.
           6. The appeal is allowed to the aforesaid extent.

       7. In view of the aforesaid order, IAs are also disposed
  of. We make it clear that this order is confined only to the
D aforesaid issue and nothing more at this stage.
    D.G.                                           Appeal allowed.