Pursuant to Mathews excellent post on the removal of the ‘Manjal’ trademark, I was discussing the case with him and we decided that one of the points, i.e. the jurisdiction issue merits a more detailed discussion.In the present case Divine Pharmaceuticals, the petitioner before the Registrar, was being sued by Marico in the Delhi High Court. In fact the rectification petition was filed before the Registrar of Trade Marks shortly after Marico sued Divine Pharmaceuticals before the Delhi High Court in C.S. (O.S) No. 550 of 2008.
The Order then states that the petitioner has attempted to counter this by arguing that the current rectification petition is between the proprietor of Divine Pharmaceuticals and M/s Oriental Extractions Pvt. Ltd., which is the proprietor of the trademark ‘MANJAL’, while the High Court litigation is between Divine Pharmaceuticals and Marico Ltd.
This is absurd reasoning for the simple reason that the same trademark is involved in both litigations. The orders of the Delhi High Court framing issues in the suit clearly specifies that the registered number of the trademark under litigation is trademark no – 1109980. The Order of the Registrar also states that the registered number of the trademark under litigation is 1109980. Same trademark! Why different parties? The reason for that appears to be simple. The first order by Justice Bhat on the 26th of March, 2008 notes in pertinent part:
2 . The materials on record prima facie suggest/establish that the plaintiff has rights over the mark ‘MANJAL’ which it acquired in 2006. A comparison of the plaintiff’s packaging with that of the defendant would show that the latter is using the same mark.
This clearly means that Marico had acquired the right to the trade mark from the original owner of the mark i.e. Orient Extractions. It’s an entirely different matter that the petitioners had disputed before the Delhi High Court, Marico’s ownership of the mark.
The Order of the Registrar does not even display Marico’s name which means that Marico was not given a hearing despite being the owner of the mark. Marico therefore cannot even appeal to the IPAB against an order which it is not a party to, instead it will be required to file a writ petition before the Madras High Court on the grounds that it has been denied a right to a hearing. Of course the Registrar of Trade Marks could always review his Order.
Dear Prasanth,
Have you seen the order passed by Mrs. Kasturi in a related rectification filed for removal of mark Manjal by Mathew & Sons. I am an insider to Trade Marks Registry and hence not in a position to provide u with the same. In that order Mrs. Kasturi not only overlooked the position of law but also failed to change the name of parties to the dispute. It is believed firmly believed even by higher authorities at Trade Marks Registry that Mrs. Kasturi has malafidely passed this judgement without giving any reason and in violation of natural justice.
Dear Anon,
The Order is posted on our website over here: https://spicyipweb.wpcomstaging.com/docs/Manjal.pdf
In regards the names on the order, I think it may be possible that the Register of Trade Marks may not have been updated to record the assignment of the mark to Marico.
As for the adjournment and not hearing the opposite side, I’m not sure what exactly happened.
Regards,
Prashant
The order that has been posted by you is passed in the matter of rectification filed by S. Siva Subramaniam.An another rectification petition is also filed against mark Manjal by Mathew & Sons whom Murthy & Murthy represents.
Thanks Anon, I found the Mathews order on the Trade Mark office website.
We’ll carry a post on it shortly.
Prashant
It appears that Mrs.Kasturi is a bold lady. No one can claim monopoly over MANJAL. I feel the blog writers are agents of Marico, who wanted illegal monopoly on MANJAL. Ultimately the truth will prevail and whatever good for population is the supreme law (salus populi est suprema lex).
Let the blog writers read the whole case of Delhi High Court in the issue, the rectification applications and the parties thereto.
Dear Anon, Unfortunately, ur comment doesnt merit a reply. Pls read the earlier posts and see what we tried to put across..
The prime responsibilty of a lawyer is to assist the presiding officer to come to a judicial conclusion in a matter. A lawyer must inform the presiding officer about the jurisdiction with reasons and even than if the presiding officer passes a defective order that is wrong which can be assailed. As for as the removal of the mark Manjal is concerned, the same should have not been done as the validity of the mark was already assailed and in such cases it is ultra virus to the jurisdiction of the Registrar to decide the rectification but all this is required to be brought to the ntice of the official concerned
Is there is judgement which states that section 125(1) is only applicable to suit for infringement? So would that imply that in cases of passing off a rectification petition can be filed before the Trademarks Office even if the suit of passing off is pending between the parties in High Court?