In my earlier post, I had discussed the Order dated 21st January, 2011 which removed “Manjal” from the trade marks registry. “Manjal” is the Malayalam / Tamil translation for turmeric / haldi (in Hindi). The mark was registered by M/s Oriental Extractions Pvt. Ltd (hereinafter Oriental Extractions) in Class – 3 for “ayurvedic bath soap”. The rectification application was filed by Mr. S. Sivasubramanyan, Proprietor of M/s Divine Pharmaceuticals, Kollam before Deputy Registrar of Trade Marks. The Order noted that the mark was inherently incapable of distinguishing the goods within the provisions of Section 9(1) (a) of Trademarks Act. It also satisfied S. 9(1) (b) which precluded trademarks designating kind / quality / quantity / intended purpose / values / geographical origin from being registered.
On 10th February, 2011, the Deputy Registrar of Trademarks Mrs. N.D. Kasturi, in response to the interlocutory petition filed by Oriental Extractions and another rectification application filed by Mathewsons Exports and Imports (P) Ltd (hereinafter Mathewsons), issued another Order on “Manjal” available here. It was held that the rectification application filed by Mathewsons had abated, citing the removal of mark by the earlier Order. Prima facie, the instant Order appears to be logically congruent with the earlier Order. But a deeper scrutiny into this instant Order raises some grave concerns. Interestingly, as in the earlier rectification application, the counsel for the registered proprietor was absent. [Note – Since the substantive issue in the instant Order i.e validity of mark “Manjal” had already been discussed earlier, I shall not be touching upon it.]
Firstly, the cause title of the Order is wrong!! As can be discerned from the Order, the rectification application was filed by Mathewsons against Oriental Extractions (P) Ltd. The cause title, on the other hand, states that the rectification application was filed by Divine Pharmaceuticals (P) Ltd against Oriental Extractions (P) Ltd.
Secondly, the instant Order reveals that Marico had been assigned the mark “Manjal” by Oriental Extractions Pvt. Ltd way back in 2003. This pertinent fact was not mentioned in the earlier Order. If this fact was mentioned, it would have been difficult to blunt the argument of Oriental Extractions on S. 125. [For discussion on jurisdiction, see here]
As per S. 125 (1), where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant, the issue pertaining to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and notwithstanding Ss. 47 or 57, such application shall be made to the Appellate Board and not to the Registrar. In the rectification application filed by Divine Pharmaceuticals, the registered proprietor, referring to the above provision and the pending suit between Marico Ltd and Divine Pharmaceuticals, (O.S No. 550 / 2008) questioned the jurisdiction of Trade Marks registry. The applicant successfully blunted this argument by citing the difference in parties in the pending suit (Marico Ltd and Divine Pharmaceuticals) and the rectification application (Oriental Extractions and Divine Pharmaceuticals). In the light of instant revelation, it becomes clear that the parties were in fact the same and not different. In other words, the Registrar could not have exercised jurisdiction in entertaining the application of Divine Pharmaceuticals by virtue of S. 125.
Further, in the above mentioned pending suit (O.S No. 550 / 2008 ), the Delhi High Court on 7th December, 2010, adjourned the matter to 4th May, 2011 citing the intention of parties for amicable settlement. In this context, it is interesting to note the timing of the earlier Order – 21st January, 2011. I must, however, note that I could not figure out the date of hearing of this application.
Thirdly, the instant Order has to be analysed in the light of pending suit filed by Marico Limited against Hind Cosmetics in the Delhi HC (O.S No. 380 / 2008). Since none appeared for the defendant, HC initiated ex-parte proceedings by Order dated 14th January, 2009.
In the instant interlocutory petition before the Registrar, Marico contended that Hind Cosmetics was the licensee of Mathewsons. Therefore, by virtue of S. 125 of Trademarks Act, the Registrar could not exercise jurisdiction (p.2 of the Order). On the other hand, Mathewsons argued that the assignment in favour of Marico did not comply with the provisions of Trademarks Act and therefore, Marico Ltd could not be considered as the registered proprietor. It was also argued that the suit was filed by Marico against Hind Cosmetics and not Mathewsons.
Mrs. Kasturi did not examine the relationship between Mathewsons and Hind cosmetics. She examined the deed of assignment and held that the deed did not recognise the impugned mark “manjal” as distinctive under section 9 of the Act and therefore, change in proprietorship could not be allowed. I am unable to concur with this reasoning.
Paragraph 5.2 of the deed of assignment states as follows: “The Assignor represents that the IPR sought to be assigned to the Assignee under this agreement are free from any infirmities in their respective registrations wherever already registered or in the applications or the process for registration, wherever the registration is yet to be received, on any ground, including but not limited to an argument that the terms “Manjal”, “Pasupu”, “Arishina”, “Haldi”, “Holudh” and “Haldar” are descriptive of the products in which the assignor currently carries on any business or that they have a generic meaning associated with them in one or more Indian languages”. As evident from this paragraph, the assignor represented that the IPRs which were sought to be assigned were free from “infirmities”. This representation specifically covered “Manjal” and some other marks (as the deed says “including but not limited to”). In other words, this is an absolute warranty. This could not be interpreted to mean that the mark was not distinctive under section 9 of the Act and therefore, change in proprietorship could not be allowed. This reasoning lacks logic and coherence which are essential elements of legal reasoning.
If Hind Cosmetics was indeed the licensee of Mathewsons, then the parties in the pending suit and the rectification application might have been the same – of course, depending on the nature of licence. If so, the Registrar of Trademarks could not have exercised jurisdiction by virtue of S. 125. Therefore, the relationship between the two should have been analysed first. Unfortunately, Mrs. Kasturi looked into the validity of assignment deed without examining the above mentioned aspect. She decided both the interlocutory petition filed by the registered proprietor questioning the jurisdiction and the rectification application together by the same Order.
Fourthly, the language, paragraph sequence and arguments in the written submission of the applicant for rectification, as mentioned by the instant Order (pp. 3 & 4), is same as that of the earlier Order. This may be a sheer coincidence. Or else, the written submission may have been simply copied from the earlier Order!