Supreme Court of India
INFOSYS TECHNOLOGIES LTD.versusJUPITER INFOSYS LTD. AND ANR.
- Citation
- 2010 INSC 762
- Decided
- 9 November 2010
- Disposal
- Case Partly allowed
- Bench
- AFTAB ALAM
Holding
An application for removal or rectification of a trade mark under Sections 46 or 56 of the Trade and Merchandise Marks Act, 1958 can be made only by a person who is aggrieved at the time of filing and remains so until the application is decided; the IPAB must verify the applicant’s locus standi for each class, and its failure to do so warrants setting aside its order.
Summary
Infosys Technologies Ltd. owned the trademark "Infosys" in classes 7, 9 and 16. Jupiter Infosys Ltd., later renamed Jupiter International Ltd., filed applications under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 seeking removal/rectification of those marks on the ground of non‑use and other defects. The Intellectual Property Appellate Board (IPAB) allowed the applications without properly examining whether the respondent was a "person aggrieved" under the statutes. On appeal, the Supreme Court held that an applicant must be a person aggrieved at the time of filing and must remain so until the application is finally decided, and that the IPAB was obliged to assess locus standi for each class of goods. Consequently, the Court set aside the IPAB order and restored the applications for fresh hearing. The parties were each ordered to bear their own costs.
Issues considered
- The applicant must be a "person aggrieved" under Section 46 of the 1958 Act to seek removal of a trade mark.
- Whether the status of "person aggrieved" must continue to exist throughout the pendency of the application.
- Whether the IPAB was required to examine the applicant's locus standi separately for each class of goods.
- The different connotation of "person aggrieved" in Section 56 (public interest) versus Section 46 (private interest).
- The maintainability of the appeal under Article 136 of the Constitution.
Legislation cited
- Trade and Merchandise Marks Act, 1958s. 46, s. 56, s. 69
- Trade Marks Act, 1999s. 100
Subjects
trade markperson aggrievedlocus standiSection 46Section 56IPABrectificationremovalnon‑usepublic interestprivate interest
Judgment
[2010) 14 (ADDL.) S.C.R. 312
A INFOSYS TECHNOLOGIES LTD.
V.
JUPITER INFOSYS LTD. AND ANR.
(Civil Appeal Nos.5743-45 of 2005)
NOVEMBER 9, 2010
B
[AFTAB ALAM AND R.M. LODHA, JJ.]
Trade and Merchandise Marks Act, 1958: ss.46 and 56
- Application under, for removal/rectification of entry in the
C register of trade mark - Held: Can only be preferred by a
'person aggrieved' - The applicant must not only be a 'person
aggrieved' on the date of the application but must continue
to remain a 'person aggrieved' until such time the application
is finally decided - To be a 'person aggrieved', there must be
o likelihood of some injury or damage to the applicant by such
trade mark - In the instant case, while ordering removal of
appellant's mark from the register of trade marks, it was
incumbent upon the IPAB to consider and satisfy itself about
the locus standi of the applicant to be heard as a 'person
E aggrieved' - Having not done so, the applications for
rectification/removal of the subject trade marks from the
register need to be considered afresh by the IPAB - Trade
Marks Act, 1999.
Words and phrases: Expression 'person aggrieved' -
F Connotation of, in the context of s.46 and s.56 of the Trade
and Merchandise Marks Act, 1958.
The first respondent filed three separate applications
before the High Court under Sections 46 and 56 of the
G Trade and Merchandise Marks Act, 1958 praying for the
removal/rectification of the appellant's mark 'infosys' from
the register of trade mark in respect of Classes 7, 9 and
16.
H 312
INFOSYS TECHNOLOGIES LTD. v. JUPITER 313
INFOSYS LTD. AND ANR.
In the meantime, the 1958 Act was repealed -t)ythe A
Trade Marks Act, 1999 and the three petitions for
rectification/removal of registered trade marks were
transferred to the Intellectual Property Appellate Board
(IPAB).
B
In another suit filed by the appellant for infringement
of trade mark, an affidavit was filed by the first
respondent on July 14, 2004, wherein it was stated that
the name of its company was changed from Jupiter
Infosys Limited to Jupiter International Limited and no
dispute was remaining between the parties under the C
trade mark. The IP~B allowed the three applications of the
first respondent. The instant appeals were filed
challenging the ord'e{ of the IPAB.
\'
Partly allowing the appeals, the Court D
HELD: 1. Whether the application is under Section 46
of the Trade and Merchandise Marks Act, 1958 or under
. Section 56 or a composite application under both the
sections, it is a pre-requisite that the applicant must be a E
perso.n aggrieve_d. Section 46(1) enables any person
aggrieved to apply for removal of registered trade mark
from the register on the ground of non-use as stated in
clause (a) and/or clause (b). To be an aggrieved person
under Section 46, he must be one whose interest is
affected in some possible way and it must not be a mere F
fanciful suggestion of grievance. A likelihood of some
injury or damage to the applicant by such trade mark
remaining on the register may meet the test of locus
standi. The persons who are aggrieved are all persons
who are in some way or the other substantially interested G
in having the mark removed - where it is a question of
removal from the register; including all persons who
would be substantially damaged if the mark remained,
and all trade rivals over whom an advantage was gained
H
314 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A by a trader who was getting the benefit of a registered
trade mark to which he was not entitled. Section 56
provides for varying situations in which the person
aggrieved ·may apply for rectification of the registered
trade mark from the register. Although both Sections,
B namely, Sections 46 and 56 require 'person aggrieved' to
apply for removal of the registered trade mark from the
register or rectification of a trade mark in the register, the
expression 'person aggrieved' for the purposes of these
two Sections has different connotations. Section 46
c speaks for private interest while Section 56 speaks of a
public interest. [Paras 27, 28, 30] [332-B-H]
Hardie Trading Ltd. & Anr. v. Addisons Paint &
Chemicals Ltd. (2003) 11 SCC 92, relied on.
D The Royal Baking Powder Company v. Wright, Crossley,
and Co. (1898) 15 RPC 677 - referred to.
Kerly's Law of Trade Marks and Trade Names (11th
edition) - referred to.
E 2. It is true .that the appellant in opposition to the
applications for removal/rectification of trade mark did
not specifically challenge in its counter affidavits the
locus standi of the first respondent to be heard as a
person aggrieved. Obviously, in the absence of any
F specific objection by the appellant to that effect, no
specific issue was framed by the High Court whether the
applicant was an aggrieved person. The applications
were transferred to the IPAB in terms of Section 100 of
the 1999 Act. The IPAB examined the matter in light of the
G issues that were framed by the High Court although in
the written submissions before it, the objection was raised
that the first respondent has ceased to have locus standi
in view of the subsequent events, particularly, change of
the name of the first respondent from Jupiter Infosys Ltd.
H to Jupiter International Ltd. It was incumbent upon the
INFOSYS TECHNOLOGIES LTD. v. JUPITER 315
INFOSYS LTD. AND ANR.
IPAB to consider and satisfy itself about the locus standi A
of the first respondent to be heard as a person aggrieved.
In the first place, when the first respondent applied for
rectification/removal in respect of three registrations in
Classes 7, 9 and 16, it must have shown in respect of
each of them that it is a 'person aggrieved' and the IPAB B
must have separately considered in respect of each
registration the locus standi of the first respondent as the
considerations for each entry might not have been
common. Secondly, during the. pendency of the
applications, certain events had taken place which had c
some bearing on the question of locus stancfi of the first
respondent insofar as invocation of Section 46(1) of the
1958 Act is concerned. In the affidavit filed by the first
respondent on July 14, 2004 before the Additional District
Judge, an unequivocal and categorical statement was D
made that there was not any more any dispute between
the plaintiff (appellant) and defendant (first respondent)
under the Trade Mark and that the defendant has already
changed the name of the company from "Jupiter Infosys
Ltd." to "Jupiter International Ltd." The grievance of the
applicant when he invokes Section 46(1) must not only E
be taken to have existed on the date of making·
application but must continue to exist when such
application is decided. If during the pendency of such
application, the applicant's cause of complaint does not
survive or his grievance does not subsist due to his own F
action or the applicant has waived his right or he has lost
his interest for any other reason, there may not be any
justification for rectification as the registered trade mark
cannot be said to operate prejudicially to his interest. The
applications made by the first respondent for G
rectification/removal of the subject trade marks from the
register need to be considered afresh by the IPAB. The
three applications are restored to the file of IPAB for
hearing and disposal afresh in accordance with law.
[Paras 30, 31, 34) [335-H; 336-A-G; 337-C-E] H
316 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A Mis. Eagle Potteries Private Ltd. v. Mis. Eagle Flask
Industries Pvt. Ltd. AIR 1993 Bombay 185; L. Chandrakumar
v. Union of India & Ors. (1997) 3 SCC 261; Agha Hyder
Hussain & Anr. v. Omar Khayyam Wineries (Pvt.) Ltd. & Anr.
AIR 1977 Mad 166; Nestle's Products (India) Ltd. v. P.
B Thankaraja & Anr. AIR 1978 Mad 336; Kabushiki Kaisha
Toshiba v. Tosiba Appliances Company & Ors. (2008) 10
sec 766, referred to.
Lever Brothers, Port Sunlight Ltd. v. Sunniwite Products
C Ltd. (1949) 66 RPC 84; The Ritz Hotel v. Charles of the Ritz
(1989) RPC 333; Australian Wine Importers' Trade Mark
(1889) 6 RPC 311; In re Apo//inaris Company's Trade-Marks
(1891) 2 Ch. 186; Philosophy Di Alberta Ferretti 2003 R.P.C.
15; Keystone Knitting Mills Trade Mark 1929 (1) Ch.D. 92;
Motor Terms Company Pty. Limited. v. Liberty Insurance Ltd.
D (1967) 116 C.L.R.177 - referred to.
Case Law Reference:
(2003) 11 sec 92 relied on Para 16
E 2008) 10 sec 766 referred to Para 16
AIR 1993 Bombay 185 referred to Para 18
(1949) 66 RPC 84 referred to Para 18
(1989) RPC 333 referred to Para18
F
(1889) 6 RPC 311 referred to Para 18
(1997) 3 sec 261 referred to Para 20
AIR 1977 Mad 166 referred to Para 21
G
2003 R.P.C. 15 referred to Para 21
. 1929 (1) Ch.D. 92 referred to Para 21
(1967) 116 C.L.R.177 referred to Para 21
H
INFOSYS TECHNOLOGIES LTD. v. JUPITER 317
-INFOSYS LTD. AND ANR.
AIR 1978 Mad 336 referred to Para 23 A
(1898) 15 RPC 677 referred to Para 29
AIR 1978 Mad 336 referred to Para 23
CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. B
5743-5743 of 2005.
From the Judgment & Order dated 9.9.2004 of the
Intellectual Property Appellate Board at Chennai in TRA Nos.
25 to 27/2003/TM/CH (OP Nos. 764 to 766/01).
c
D. Banerjee, Akhil Sibal, Sushant Singh, Manav Kumar,
Anusha Natarajan, Praveen Radhi, P.C. Arya, Gautam
Panwani, VX. Sinha (for S.K. Verma) for the Appellant.
Vibhav Gaggar, Ajay Bhargava, Vanita Bhargava, Amit
0
Verma, Saba Grover for the Respondents.
The Judgment of the Court was delivered by
R.M. LODHA, J. 1. These three appeals by special leave
are directed against the order dated September 9, 2004 E
passed by Intellectual Property Appellate Board (for short,
'IPAB') whereby it ordered the removal of appellant's mark
'Infosys' from the register of trade marks in respect of computer
~ stationery, computer manuals, printed matter for computer,
instructional and teaching materials, computer hardware and F
peripherals and machine and machine tools.
2. The appellant is Infosys Technologies Limited. It was
incorporated and registered under the Companies Act, 1956
on July 2, 1981 in the name of Infosys Consultants Private
Limited. The appellant got the trade mark 'Infosys' registered G
in 1987 iri classes 16 and 9 in connection with computer
stationery, computer manuals, printed manual for computer
instruction and teaching materials; computer hardwares,
computer interface, computer peripherals, electronics telex
H
318 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A interface and in 1988 in class 7 in connection with machine and
machine tools and motors (not for land vehicles). The particulars
with reference to the trade mark registered by the appellant are
as follows:
Date Registration No. Class Goods
B
15.07.1987 475269 Class 16 Computer Stationery,
Computer Manuals,
Printed Manuals for
Computer Instruction
c and teaching materials
etc.
15.07.1987 475267 Class 09 Computer- Hardwares,
'
Computer Interface,
D Computer Peripherals,
Electronics Telex·
Interface and all goods
covered in class 09.
27.01.1988 484837 Class 07 Machine and Machine
E Tools and Motors (not
for land vehicles)
included- in class 07.
3. On April 21, 1992, the name of the company-Infosys
F Consultants Pvt. Limited-was changed to Infosys Technologies
Pvt. Ltd. and thereafter on June 2, 1992, the name was changed
to the present name, i.e. Infosys Technologies Limited.
4. The first respondent is Jupiter Infosys Limited. The first
G respondent was incorporated and registered in September
1978 under the name of Jupiter Agencies Pvt. Limited. The
name of the first respondent was changed to Jupiter Infosys (P}
Limited in August, 1995 and now since July, 2003, the name is
changed to Jupiter International Limited.
H 5. On October 11, 1996, the appellant instituted a suit in
INFOSYS TECHNOLOGIES LTD. v. JUPITER 319
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
the Calcutta High Court for perpetual injunction, inter alia, A
restraining the first respondent from infringing the appellant's
mark 'Infosys' by using the mark 'Infosys' by itself or in
combination with other marks in course of its trade. The
appellant also prayed for an interim order in the suit. On
November 22, 1996, the Calcutta High Court by an ad-interim B
order restrained the first respondent from using the word
'Infosys' in any manner in relation to the goods for the time
. being. The ad-interim order was confirmed on November 29,
1996.
6. The appellant having come to know of several instances C
of misuse of mark 'Infosys' also filed a writ petition (being writ
petition no. 14214 of 2000) before the Calcutta High Court, inter
alia, praying that the Registrar of Companies be restrained from
registering the companies bearing the name 'Infosys'. On
September 13, 2000, the Calcutta High Court restrained the D
Department of Company Affairs and Registrar of Companies
from incorporating any company bearing the name 'Infosys'
without the permission of the appellant.
7. In January 2001, the appellant filed yet another suit E
before the High Court of Judicature at Madras for permanent
injunction restraining the first respondent from offering shares
to the public as claimed in the Initial Public Offer (IPO) using ·
'Infosys'. The Single Judge of the Madras High Court passed
an interim restraint order on February 1, 2001 against the first F
respondent. The said order was confirmed on May 22, 2001
to remain operative till disposal of suit.
8. The first respondent then filed three separate
applications before the Madras High Court, inter alia, under
Sections 46 and 56 of the Trade and Merchandise Marks Act, G
1958 ('the 1958 Act'). In O.P. No. 764 of 2001, the first
respondent prayed for the removal/rectification of t~e entry in
the register of trade mark in respect of trade mark No. 475269
in Class 16 while in the other two applications being O.P. No.
H
320 SUPREME COURT REPORTS (2010] 14 (ADDL.) S.C.R.
A 765 of 2001 and O.P. No. 766 of 2001, the first respondent
prayed for removal/rectification of trade mark No. 475267 in
Class 9 and trade mark No. 484837 in Class 7 respectively.
9. The appellant opposed these applications on diverse
grounds by filing counter affidavits.
B
10. On August 12, 2003, the Madras High Court framed
the following issues:
(a) Whether the mark applied for registration was used ".
c in respect of the goods for which the mark was
registered?
(b) Whether the respondent had a bonafide intention
to use the mark applied for under section 18 of the
Trade and Merchandise Marks Act?
D
(c) Whether the mark registered in favour of the
respondent is a service mark?
(d) Whether there is a non use of registered trade mark
E by the respondent for a period of over 5 years and
1 month ..
(e) Whether the registered trade mark is disentitled for
protection in a Court of Law under Section 11(e)
of the Trade and Merchandise Marks Act?
F
(f) Whether the registered trade mark has lost its
distinctiveness and is liable to be removed under
section 32{c)?
(g) Whether the respondent has committed fraud while
G
obtaining registration of the mark? And
(h) To what further relief?
11. The 1958 Act was repealed by the Trade Marks Act,
H 1999 (for short, 'the 1999 Act'). In terms of Section 100 of the
INFOSYS TECHNOLOGIES LTD. v. JUPITER 321
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
1999 Act, the three petitions filed by the first respondent before A
the Madras High Court for rectification/removal of registered
trade mark Nos. 475269, 475267 and 484837 were transferred
to the IPAB.
12. Some more facts may be noticed. The appellant filed
8
yet another suit (being suit no. 2115 of 2002) before Delhi High
Court for infringement of trade mark and passing off against
the first respondent. In that suit, the appellant also made an
application for grant of temporary injunction. The vacation Judge
of the Delhi High Court, on December 27, 2002 passed an
order of temporary injunction against the first respondent as C
follows:
"Notice for 24th March, 2003 before the Joint Registrar.
Heard. Perused the averments made in the suit and D
application which are duly supported by documents on
record. I am of the opinion that in case ex-parte ad-interim
orders are not granted, the relief claimed itself may be
rendered infructuous. Accordingly it is directed that pending
further consideration of the matter after notice for the next E
date of hearing, the defendants are restrained by
themselves, their directors, employees, agents and/or
others acting on its behalf, from using the trade mark/
corporate name INFOSYS or any other mark/name
deceptively similar trade mark or colourable imitation
thereof as a mark and/or corporate nary1e or as part of a F
mark and/or business name, in respect of goods and/or
services, for publicity on propaganda; on websites and or
in domain names, in any way, whatsoever, thereby causing
infringement of the registered trade mark INFOSYS of the •
plaintiff in isolation or in combination with words/letters/ G
numbers their advertisements as part of their corporate
name either in isolation or in goods and services, or in or
by way of any advertisement/publicity campaigns etc.
Compliance of Order XXXIX Rule 3 CPC within three H
322 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A days."
The said suit was transferred to the Court of the Additional
District Judge, Tis Hazari Court, Delhi. In that suit, an affidavit
came to be filed by the first respondent wherein it was stated
B that the name of the company has been changed from Jupiter
Infosys Limited to Jupiter International Limited and a certificate
to that effect has been issued by the Registrar of Companies,
Kolkata under the Companies Act, 1956 and no dispute
remains between the parties under the trade mark. The relevant
C statement made in the affidavit dated July 14, 2003 (we were · -
informed that the date of the affidavit is July 14, 2004) reads
as follows:
"4. That in the meantime the defendant has already
changed the Trade Mark namely "Jupiter
D International Ltd." in place of "Jupiter Infosys Ltd."
The copy of the incorporation on change of name
which was issued by the registrar of the Companies
are being marked and arinexed herewith as
Annexure A.
E
5. That now there is no dispute between the plaintiff
and defendant under the Trade Mark."
Based on this affidavit, the suit was partially decreed in favour
of the appellant on November 10, 2004.
F
13. In 2007, however, the first respondent filed a suit in the
Court of Additional District Judge, Delhi for setting aside the
decree dated November 10, 2004. That suit is said to be
pending.
G
14. The IPAB proceeded with the matter in light of the
issues that were already framed by the High Court and heard
the parties. The IPAB in the impugned order while dealing with
the plea of limitation raised by the appellant held that the first
H respondent was the appropriate aggrieved party in the matter
INFOSYS TECHNOLOGIES LTD. v. JUPITER 323
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
in view of the fresh cause of action having arisen to the first A
respondent on filing of Civil Suit No. 71 of 2001 by the appellant
before the Madras High Court. The IPAB in the impugned order
held that the trade mark Nos. 475269, 475267 and 484837
have not been used by the appellant for more than a period of
five years and one month and the appellant also failed to make B
out that it had been in manufacturing or trading of the goods
for which it had taken Registration Nos. 475269, 475267 and
484837. Consequently, the IPAB allowed the applications
made by the first respondent purportedly under Section 46(1)(b)
of the 1958 Act and directed the Registrar to remove these c
registrations from the register.
15. We heard Mr. Akhil Sibal, learned counsel for the
appellant and Mr. Vaibhav Gaggar, learned counsel for the first
respondent at quite some length.
16. Mr. Akhil Sibal, learned counsel for the appellant D
argued that an application for rectification, whether under
Section 46 or Section 56 of the 1958 Act, can only be preferred
by a 'person aggrieved'; the applicant must not only be a
person aggrieved on the date of the application but must
continue to remain a person aggrieved until such time as the E
rectification application is finally decided. He contended that
the first respondent is not shown to have ever traded or intended
to trade in any goods covered by the· appellant's registrations
under Classes 7 and 16 and as such the first respondent is not
a 'person aggrieved' with regard to the appellant's registrations .F
under these two classes. As regards Class 9 he would submit
that in view of the affidavit filed by the first respondent on July
14, 2004 in the Court of Additional District Judge, Delhi the first
respondent ceases to be an aggrieved person on the date of
consideration of the rectification application. Learned counsel
heavily relied upon two decisions of this Court: (1) Hardie G
Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd. 1 and
(2) Kabushiki Kaisha Toshiba v. Tosiba Appliances Company
& Ors. 2 •
1. (2003) 11 sec 92.
2. (200B) 10 sec 766.
H
324 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A 17. Assailing the finding of the IPAB as regards non-use
by the appellant during the relevant
I
period, learned counsel for
the appellant argued that the said finding was erroneous on
legal as well as factual premise. He contended that the IPAB
erred in holding that software was a 'service' and the subject
B registrations were in relation to goods without considering the
wide definition of 'goods' provided under Section 2(g) of the
1958 Act. Mr. Akhil Sibal argued that the IPAB committed
grave error in relying upon the provisions of the 1999 Act and
the Trade Marks Rules, 2002 when these provisions were not
c applicable as the applications were filed under the 1958 Act.
According to him, the IPAB sought to rely upon 'computer
programming' which is a 'service' enumerated in Class 42,
without considering the distinction between a 'computer
programme' and 'computer programming' and without noticing
the entry 'computer' under Class 9 which falls within 'goods'.
0
Learned counsel would submit that in examining the question
of non-use under Section 46(1)(b), the IPAB failed to consider
that the requisite use must be 'in relation to goods' under
registration, which is extensively defined under Section 2(2)(b)
of the 1958 Act.
E
18. Mr. Akhil Sibal, learned counsel also. argued that the
IPAB failed to have regard to the proviso to Section 46(1), in
terms of which it is open to the registered proprietor to rely
upon use of the registered trade mark during the relevant
F period in relation to 'goods of the same description', in order
to resist an application for rectification. He contended that the
IPAB failed to apply proper legal tests for determining 'goods
of the same description' and had that been done it would be
evident that 'computer software' amounts to 'goods of the
G same description' as 'computer hardware'. In this regard, he
relied upon Mis. Eagle Potteries Private Ltd. v. M/s. Eagle
Flask Industries Pvt. Ltd. 3; Lever Brothers, Port Sunlight Ld.
v. Sunniwite Products Ld. 4; The Ritz Hotel v. Charles of the
3. AIR 1993 Bombay 185.
H 4. (1949) 66 RPC 84.
INFOSYS TECHNOLOGIES LTD. v. JUPITER 325
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
Ritz5 and Australian Wine Importers' Trade Mark6 . A
. 19. Learned counsel for the appellant also submitted that
in any view of the matter, the IPAB erred in exercising its
discretion under Section 46 of the 1958 Act without taking into
· consideration the aspect of public interest. He argued that the 8
IPAB ought to have considered whether use of mark 'Infosys'
by the first respondent on computer hardware would create
confusion in the mind of the consumers that they might be led
to believe that the said hardware is manufactured by the
appellant. Learned counsel, thus, submitted that the impugned C
order is unsustainable and liable to be set aside.
20. On the other hand, an objection is raised in the written
submissions on behalf of the first respondent - and reference
was made in support of the objection to seven Judge Bench
decision of this Court in L. Chandrakumar v'. Union of India & D
Ors. 7-that challenge to the order of IPAB directly in the appeal
before this Court under Article 136 .of the Constitution is barred.
21. In reply to the arguments of learned counsel for the
appellant, Mr. Vaibhav Gaggar, learned counsel for the first E
respondent strenuously urged that the plea of 'aggrieved
person' is a new plea and raised substantially for the first time
before this Court. He argued that the appellant has not taken
the plea of the first respondent not being a 'person aggrieved'
with respect to filing of the applications for rectification before
the IPAB; merely urging the plea that the first respondent has
F
no locus standi in the written submissions before the IPAB is
not sufficient. Learned counsel would submit that the appellant
has, for the first time, argued before this Court that the first
respondent· is not a person aggrieved and/or not capable of.
maintaining the rectification proceedings with respect to each
· and every good for which the appellant has been registered G
5. (1989) RPC 333;
6. (1889) 6 RPC 311.
7. (1997) 3 sec 261.
H
326 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A since the first respondent has not been registered for all the
goods. Mr. Vaibhav Gaggar rather asserted that the first
respondent is a person aggrieved in view of the fact that various
suits for infringement have been filed by the appellant against
the first respondent and on the date of the applications for
B rectification/removal of the subject registrations from the
register, the suits were pending. With reference to the affidavit
dated July 14, 2004 filed by the first respondent before the Court
of Additional District Judge, he submitted that the said affidavit
has no relevance in consideration as to whether the first
c respondent is an aggrieved person as Section 46 (1) of the
1958 Act relates only to the period upto the date of the filing of
the rectification application and the rights of the parties
crystallized at that stage itself. In this regard, he relied upon a
decision of ihe Madras High Court in Agha Hyder Hussain &
0 Anr. v. Omar Khayyam Wineries (Pvt.) Ltd. & Anfl. He also
placed reliance upon some more decisions viz; Ritz Hotel Ltd. 5,
Philosophy Di Alberta Ferrett1-s; Keystone Knitting Mills Trade
Mark10 and Motor Terms Company Pty. Limited. v. Liberty
Insurance Ltd. 11 • Learned counsel for the first respondent further
E submitted that the affidavit dated July 14, 2004 was not placed
by the appellant before the IPAB nor any reference of the said
affidavit has been made in the written submissions before the
IPAB and the appellant also did not make any effort to amend
the pleadings that the first respondent was not an aggrieved
person. It was contended by Mr. Vaibhav Gaggar that even
F otherwise in view of the fraud perpetrated by the appellant qua
the registrations in question, the issue as to whether the first
respondent had a dispute with the trade mark or not pales into
insignificance as the primary duty of the court is to maintain the
'purity of the register'. He argued that in a case such as the
G
8. AIR 1977 Mad 166.
9. 2003 R.P.C 15.
10. 1929 (1) Ch.D 92.
11. 1967 116 C.L.R. 177.
H
INFOSYS TECHNOLOGIES LTD. v. JUPITER 327
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
present one since the allegations against the appellant relate A
to trafficking, squatting and non-user, the scope of 'person
aggrieved' has to be enlarged. Learned counsel submitted that
the fact that the appellant continues to allege - and that stance
has not changed in the pleadings in SLP as well-that the first
respondent is an infringer, pilfriger, defrauder, someone who 8
wants to ride on the goodwill of the appellant or someone who
wants to mislead the public at large, there is no question of the
first respondent ceasing to be a person aggrieved at any stage.
22. Mr. Vaibhav Gaggar, learned counsel for the first
respondent contended that the appellant is registered as a C
'manufacturer and trader' under Classes 7, 9 and 16 even
though, it is a company engaged in software only. Moreover,
there is nothing on record to indicat~ linkage with the
manufacturing or marketing of the goods for which the appellant
is holding registration of subject trade marks. He vehemently D
contended that goods in Classes 7, 9 and 16 for which the
appellant obtained registration were never used in the manner
contemplated by the 1958 Act for almost 30 years and that
would show the mala fide intention of the appellant in having
the same registered for the purpose of squatting and trafficking. E
23. Learned counsel for the first respondent further argued
that 'Infosys' is not an invented or a coined word; the said word
is an abbreviation and combination of the words 'information
system'; the word 'Infosys' has been used by various F
companies abroad as well as within India prior to incorporation
of the appellant itself and hence cannot be called an invented
word. In this regard, he relied upon a decision of the Madras
High Court in Nestle's Products (India) Ltd. v. P. Thankaraja
& Anr. 12 • He submitted that appellant is primarily in service
industry which is unregistrable under the 1958 Act and since G
the appellant is not trading in the goods in respect of which it
is registered, it cannot be said that the mark of the appellant is
12. AIR 1978 Mad 336.
H
328 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A distinctive of its goods. In any case, learned counsel would
submit that the expression 'Infosys' is not descriptive
expression.
24. Insofar as discretion exercised by IPAB in ordering
removal of the appellant's registrations from the register under
8
Section 46(1 )(b) of the 1958 Act is concerned, learned counsel
for the first respondent submitted that this Court should not
overturn the discretion so exercised by the IPAB keeping in
view the dishonest and fraudulent conduct of the appellant.
Lastly, he submitted that although no cross objections or cross
C appeal has been filed, the first respondent has some grievance
with regard to the order of the IPAB in not considering the case.
set up in the rectification/removal applications particularly with
regard to .Section 56 of the 1958 Act. ·
o 25. Having regard to the order that we intend to make, we
are not persuaded to accept the objection raised on behalf of
the first respondent that present appeal preferred directly before
this Court from the impugned order passed by the IPAB is not
maintainable and must be dismissed as such. Pertinently, the
E notice was issued in the petitions for special leave to appeal
to the respondents on November 1, 2004. In response to the
said notice the first respondent filed counter affidavit before this
Court on March 11, 2005 wherein no specific objection about
invocation of jurisdiction of this Court directly has been taken.
F In the counter affidavit a very vague objection in the following
terms was raised:
."that the present petition apart from being false and
misconceived lacks the necessary jurisdiction, hence
deserves outright rejection."
G
We are afraid, this is hardly an objection about maintainability.
Apart from it, on September 12, 2005 after hearing both
parties, special leave was granted by this Court. In the
backdrop of these peculiar facts, in our view, it is not
H appropriate to relegate the appellant at this d.istance of time
INFOSYS TECHNOLOGIES LTD. v. JUPITER 329
INFOSYS LTD. AND ANR. [R.M, LODHA, J.]
to challenge the impugned order passed by the IPAB in writ A
petition before the High .Court. The objection about
maintainability of the appeals is, accordingly, overruled.
26. The moot question which has been debated before us
is whether or not, the·first respondent is an aggrieved person. B
That the first respondent filed composite applications under
Sections 46 and 56 of the 1958 Act for rectification/removal of
the trade mark 'Infosys' registered in Classes 7, 9 and 16 is
not in dispute. Sections 46 and 56 read as follows :
"S. 46. Removal from register and imposition of C
limitations on ground of non-use.-(1) Subject to the
provisions of section 47, a registered trade mark may be
taken off the register in respect of any of the goods in
respect of which it is registered on application made in the
prescribed manner to a High Court or to the Registrar by D
any person aggrieved on the ground either-
(a) that the trade mark was registered without any bona
fide intention on the part of the applicant for
registration that it should be used in relation to E
those goods by him or, in a case to which the
provisions of section 45 apply, by the company
concerned, and that there has, in fact, been no bona
fide use of the trade mark in relation to those goods
by any proprietor thereof for the time being up to a F
date one month before the date of the application;
or
(b) that up to a date one month before the date of the
application, a continuous period of five years or
longer had elapsed during which the trade mark G
was registered and during which there was no bona
fide use thereof in relation to those goods by any
proprietor thereof for the time being:
Provided that, except where the applicant has been H
330 SUPREME COURT REPORTS [2010] 14 (ADDl.) S.C.R.
A permitted under sub-section (3) of section 12 to register
an identical or nearly resembling trade mark in respect of
the goods in question or where the tribunal is of qpinion
that he might properly be permitted so to register such a
trade mark, the tribunal may refuse an application under
B clause (a) or clause (b) in relation to any goods, if it is
shown that there has been, before the relevant date or
during the relevant period, as the case may be, bona fide
use of the trade mark by any propriefor thereof for the time
being in relation to goods of the same description, being
c goods .in respect of which the trade mark is registered.
(2) Where in relation to any goods in respect of which a
trade mark is registered-
(a) the circumstances referred to in clause (1) of sub-
D section (1) are shown to exist so far as regards
non- use of the trade mark in relation to goods to
be sold, or otherwise traded in, in a particular
place in India (otherwise than for export from
India), or in relation to goods to be exported to a
E particular market outside India; and
(b) a person has been permitted under sub-section (3)
of section 12 to register an identical .or nearly
resembling trade mark in respect of those goods
under a registration extending to use in relation to
F goods to be so sold, or otherwise traded in, or in
relation to goods to be so exported, or the tribunal
is of opinion that he might properly be permitted so
to register such a trade mark,
G on application by that person in the prescribed manner to
a High Court or to-the Registrar, the tribunal may impose
on the registration of the first-mentioned trade mark such
limitations as it thinks proper for securing that that
registration shall cease to extend to such use.
H
INFOSYS TECHNOLOGIES LTD. v. JUPITER 331
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
(3) An applicant shall not be entitled to rely for the A
purpose of clause (b) of sub-section (1) or for the purposes
of sub-section (2) on any non-use of a trade mark which
is shown to have been due to special circumstances in the
trade and not to any intention to abandon or not to use the
trade mark in relation to the goods to which the application B
relates."
"S. 56. Power to cancel or vary registration and to rectify
the register.-(1) On application made in the prescribed
manner to a High Court or to the Registrar by any person C
aggrieved, the tribunal may make such order as it may
think fit for cancelling or varying the registration of a trade
mark on the ground of any contravention, or failure to
observe a condition entered on the register in relation
thereto.
D
(2) Any person aggrieved by the absence or
omission from the register of any entry, or by any entry
made in the register without sufficient cause, or by any
entry wrongly remaining on the register, or by any error or
defect in any entry in the register, may apply in the
prescribed manner to a High Court or to the Registrar, and
the tribunal may make such order for making, expunging
or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this
section decide any question that may be necessary or F
expedient to decide in connection with the rectification of
the register.
(4) The tribunal, of its own motion, may, after giving
notice in the prescribed manner to the parties concerned G
and after giving them an opportunity of being heard, make
any order referred to in sub-section (1) or sub-section (2).
(5) Any order of the High Court rectifying the register
shall direct that notice of the rectification shall be served
H
332 SUPREME COURT REPORTS [2010] 14 (ADDL.) S.C.R.
A upon the Registrar in the prescribed manner who shall upon
receipt of such notice rectify the register accordingly.
(6) The power to rectify the register conferred by this
section shall include the power to remove a trade mark
B registered in Part A of the register to Part B of the register."
27. The position that emerges from the above provisions
is this. Whether the application is under Section 46 or under
Section 56 or a composite application under both Sections, it
is a pre-requisite that the applicant must be a person
C aggrieved. Section 46(1) of the 1958 Act enables any person
aggrieved to apply for removal of registered trade mark from
the register on the ground of non use as stated in Clause (a)
and/or Clause (b). To be an aggrieved person under Section
46, he must be one whose interest is affected in some possible
D way; it must not be a fanciful suggestion of grievance. A
likelihood of some injury or damage to the applicant by such
trade mark remaining on the register may meet the test of locus
standi. In Kerly's Law of Trade Marks and Trade Names (11th
edition) at page 166, the legal position with regard to 'person
E aggrieved' has been summarized thus : The persons who are
aggrieved are all persons who are in some way or the other
substantially interested in having the mark removed - where it
is a question of removal - from the register; including all
persons who would be substantially damaged if the mark
F remained, and all trade rivals over whom an advantage was
gained by a trader who was getting the benefit of a registered
trade mark to which he was not entitled. We accept the above
statement of law.
28. Insofar as Section 56 is concerned, it provides for
G varying situations in which the person aggrieved may apply for
rectification of the registered trade mark from the register.
Although both Sections, namely, Sections 46 and 56 require
'person aggrieved' to apply for removal of the registered trade
mark from the register or rectification of a trade mark in the
H register, the expression 'person aggrieved' for the purposes of
INFOSYS TECHNOLOGIES LTD. v. JUPITER 333
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
these two Sections has different connotations. The A
interpretation of the expression 'person aggrieved' occurring
in Sections 46 and 56 has come up for consideration before
this Court on more than one occasion. In Hardie Trading Ltd.1,
this Court stated as follows:
B
"30. The phrase "person aggrieved" is a common enough
statutory precondition for a valid complaint or appeal. The
phrase has been variously construed depending on the
context in which it occurs. Three sections viz. Sections 46,
56 and 69 of the Act contain the phrase. Section 46 deals C
with the removal of a registered trade mark from the
Register on the ground of non-use. This section
presupposes that the registration which was validly made
is liable to be taken off by subsequent non-user. Section
56 on the other hand deals with situations where the initial
registration should not have been or was incorrectly made. D
The situations covered by this section include: (a) the
contravention or failure to observe a condition for
registration; (b) the absence of an entry; (c) an entry made
without sufficient cause; (d) a wrong entry; and (e) any error
or defect in the entry. Such type of actions are commenced E
for the "purity of the Register" which it is in public interest
to maintain. Applications under Sections 46 and 56 may
be made to the Registrar who is competent to grant the
relief. "Persons aggrieved" may also apply for cancellation
or varying an entry in the Register relating to a certification F
trade mark to the Central Government in certain
circumstances. Since we are not concerned with a
certification trade mark, the process for registration of
which is entirely different, we may exclude the interpretation
of the phrase "person aggrieved" occurring in Section 69 G
from consideration for the purposes of this judgment.
31. In our opinion the phrase "person aggrieved" for the
purposes of removal on the ground of non-use under
H
334 SUPREME COURT REPORTS (2010] 14 (ADDL) S.C.R.
A Section 46 has a different connotation from the phrase
used in Section 56 for cancelling or expunging or varying
an entry wrongly made or remaining in the Register.
32. In the latter case the locus standi would be ascertained
liberally, since it would not only be against the interest of
B
other persons carrying on the same trade but also in the
interest of the public to have such wrongful entry removed.
It was in this sense that the House of Lords defined "person
aggrieved" in the matter of Powell's Trade Mark:
c "... although they were no doubt inserted to prevent
officious interference by those who had no interest at all in
the register being correct, and to exclude a mere common
informer, it is undoubtedly of public interest that they should
not be unduly limited, inasmuch as it is a public mischief
D that there should remain upon the register a mark which
ought not to be there, and by which many persons may be
affected, who, nevertheless, would not be willing to enter
upon the risk and expense of litigation.
Whenever it can be shown, as here, that the applicant
E
is in the same trade as the person who has registered the
trade mark, and wherever the trade mark, if remaining on
the register, would, or might, limit the legal rights of the
applicant, so that by reason of the existence of the entry
on the register he could not lawfully do that which, but for
F the existence of the mark upon the register, he could lawfully
do, it appears to me he has a locus standi to be heard as
a person aggrieved."
33. But if the ground for rectification is merely based on
G non-user i.e. under Section 46 of the Act, that is not really
on account of any public mischief by way of an incorrect
entry. The non-user does not by itself render the entry
incorrect but it gives a right to a person whose interest is
affected to apply for its removal. An applicant m1,Jst
H therefore show that
INFOSYS TECHNOLOGIES LTD. v. JUPITER 335
INFOSYS LTD. AND ANR. [R.M. LODHA, J.]
"in some possible way he may be damaged or injured if A
the trade mark is allowed to stand; and by 'possible' I mean
possible in a practical sense, and not merely in a fantastic
view.... All cases of this kind, where the original registration
is not illegal or improper, ought to be considered as
questions of common sense, to a certain extent, at any B
rate; and I think the applicants ought to show something
approaching a sufficient or proper reason for applying to
have the trade mark expunged. It certainly is not sufficient
reason that they are at loggerheads with the respondents
or desire in some way to injure them". c
34. Addisons' application was one under Section 46 and
the test to determine whether the applicant was a "person
aggrieved" within the meaning of that section should have
been the one laid down by Romer, J. in Wright case and
not the one propounded by the House of Lords in the D
matter of Powell's Trade Mark. The High Court and the
Joint Registrar fell into error in not drawing this distinction.
However, it is not necessary to dilate on this aspect of the
matter as the appellant has really argued on the second
and third aspects of Section 46 viz. the alleged non-use E
of the trade marks by Hardie and special circumstances".
29. In the case of Hardie Trading Ltd. 1, this Court approved
the test applied by Romer, J. in The Royal Baking Powder
Company v. Wright, Crossley, and Co. 13 , which has been F
reproduced in para 33 of the report. We respectfully agree.
30. Hardie Trading Ltd. 1 has been followed by this Court
in a recent decision in the case of Kabushiki Kaisha Toshiba 2•
This Court stated that Section 46 speaks for private interest
while Section 56 speaks of a public interest. G
31. It is true that the appellant in opposition to the
applications for removal/rectification of trade mark did not
13. (1898) 15 RPG 677. H
336 SUPREME COURT REPORTS [2010] 14 (ADDL) S.C.R.
A specifically challenge in its counter affidavits the locus standi
of the first respondent to be heard as a person aggrieved.
Obviously, in the absence of any specific objection by the
appellant to that effect, no specific issue was framed by the
High Court whether the applicant was an aggrieved person.
B The applications having been transferred to the IPAB in terms
of Section 100 of the 1999 Act, the IPAB examined the matter
in light of the issues that were framed by the High Court
although in the written submissions before it, the objection was
raised that the first respondent has ceased to have locus standi
c in view of the subsequent events, particularly change of the
name of the first respondent from Jupiter Infosys Ltd. to Jupiter
International Ltd. The question is, whether in these
circumstances it was incumbent upon the IPAB to consider and
satisfy itself about the locus standi of the first respondent to
be heard as a person aggrieved. In our considered view, it was.
0
In the first place, when the first respondent applied for
rectification/removal in respect of three registrations in Classes
7, 9 and 16, it must have shown in respect of each of them that
it is a 'person aggrieved' and the IPAB must have separately
E considered in respect of each registration the locus standi of
the first respondent as the considerations for each entry might
not have been common. Secondly, and more importantly, during
the pendency of the applications, certain events had taken place
which had some bearing on the question of locus standi of the
first respondent insofar as invocation of Section 46 ( 1) of the
F 1958 Act is concerned. In the affidavit filed by the first
respondent on July 14, 2004 before the Court of Additional
District Judge, Delhi an unequivocal and categorical statement
has been made that now there is no dispute between the plaintiff
(appellant herein) and defendant (first respondent herein) under
G the Trade Mark and that defendant has already changed the
Trade Mark namely "Jupiter International Ltd." in place of
"Jupiter Infosys Ltd."
32. In terms of Section 46(1), not only that the applicant
H has to show that he is an aggrieved person as his interest is
INFOSYS TECHNOLOGIES LTD. v. JUPITER 337
INFOSYS LTD. AND ANR. [R.M. LODHA, J.)
being affected but the IPAB must also be satisfied, before it A
directs the removal of registered trade mark, that the applicant
is an aggrieved person before it invokes the power in directing
the removal of the registered trade mark. This is so because
the pre-requisite for exercise of power under Section 46(1) is
that the applicant is a person aggrieved. B
33. The question then arises, whether it is sufficient for the
applicant to show that he is a person aggrieved when he
makes his application or he must continue to remain a person
aggrieved until such time as the rectification/removal C
application is finally decided. In our view, the grievance of the
applicant when he invokes Section 46(1) must not only be taken
to have existed on the date of making application but must
continue to exist when such application is decided. If during the
pendency of such application, the applicant's cause of
complaint does not survive or his grievance does ~ot subsist D
due to his own action or the applicant has waived his right or
he has lost his interest for any· other reason, there may not be
any justification for rectification as the registered trade mark
cannot be said to operate prejudicially to his interest. In re
Apol/inaris Company's Trade-Marks 14, while dealing with this E
aspect, Kekemich,J. stated :
" ..... because that is a remedy given to the person
aggrieved through the interposition of the Court for the
benefit of the applicant, and if at the date of the trial he F
has no cause of complaint it seems to be monstrous to
suppose that the Court will rectify the register at his
instance when it can do him no good to rectify, and when
the retention on the register can do him no harm merely
because at the date of his application he may have had G
some grievance."
We concur with the above statement.
34. In the circumstances, we are satisfied that the
14. (1891) 2 Ch. 186. H
338 SUPREME COURT REPORTS (2010] 14 (ADDL.) S.C.R.
A applications made by the first respondent for rectificat,ion/
removal of the subject trade marks from the register need to
be considered afresh by the IPAB in accordance with law and
the observations made above. Since the first respondent has
also grievance in connection with the impugned order
B particularly with regard to non-consideration of its case under
Section 56 of the 1958 Act, we refrain from going into the merits
of the diverse contentions raised before us and leave the
parties to agitate these contentions before the IPAB.
35. In view of the above, these appeals are allowed in part
C and the impugned order dated September 9, 2004 is set aside.
The applications being TRA Nos. 25 to 27 of 2003 (OP Nos.
764 to 766 of 2001) are restored to the file of Intellectual
Property Appellate Board, Chennai for hearing and disposal
afresh in accordance with law. The parties shall bear their own
D costs.
D.G. Appeals partly allowed.
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