R. Ayya Nadar Karthik vs P. Iya Nadar Charitable Trust And ... on 3 December, 2004 (rectification of trademark)

Intellectual Property Appellate Board

Equivalent citations: 2005 (31) PTC 105 IPAB
Bench: S Jagadeesan, R Singh
R. Ayya Nadar Karthik vs P. Iya Nadar Charitable Trust And Ors. on 3/12/2004

JUDGMENT

S. Jagadessan, Chairman

1. The petitioner filed these two petitions for rectification of the registered trade mark label 'CAMEL' bearing registration numbers 109120 and 439372 in class 34 in respect of safety matches and card board safety matches in the name of the first respondent. The case of the petitioner is that one P. Iya Nadar set up a match factory in the year 1945 under the name and style of South Indian Lucifer Match Works for the manufacture of safety matches. He conceived the brand name of 'CAMEL' which was registered in his favour on 4.4.1945 under the Trade Marks Act, 1940 as TM 109120. Originally being a proprietory concern, it was converted into a partnership firm in the year 1955 under a deed of partnership dated 15.12.1955 by which the said P. Iya Nadar had taken his daughters Rajathiammal and Banumathi Raja, respondents 6 and 7 herein as partners. After formation of the partnership firm, a request in form TM-24 was made on 24.6.1959 for effecting an amendment to the Register and the same was carried out. On 12.3.1962 the partnership firm was dissolved and a deed of dissolution was entered into on 4.7.1962 and thereby the South Indian Lucifer Match Works once again became a proprietory concern of the founder P. Iya Nadar. A request in form TM-24 was duly made and accepted. Thereafter, the registered trade marks had been periodically renewed from time to time. In the year 1973 once again the said Iya Nadar converted the business into a partnership and subsequently on 15.10.1974 the 10th respondent herein was readmitted to the benefits of the partnership alongwith respondents 11 to 13 and the petitioner. The petitioner and respondents 11 to 13 were all minors on the date of their induction to the benefit of the partnership firm. The request in form TM-24 was made on 24.5.1975 for including all the new partners of the firm and the same was duly carried out. Once again the partnership firm was dissolved under a dissolution deed dated 31.8.1980 and a deed of settlement dated 1.10.1980 was executed by the said Iya Nadar in favour of the first respondent trust. Again a due request was made in form TM-24 on 12.6.1981 and the same was accepted by the Trade Mark Registry on 2.4.1984. During the process the said Iya Nadar died on 27.12.1982.

2. The second trade mark No. 439372 had been directly applied for in the name of the Trust and the mark is to be treated as an associated trade mark with the earlier registered mark bearing No. 109120 in Part A of the Register. Subsequently the first respondent trust stopped the manufacturing and trading activity in its name and instead started licensing the mark to various other entities including companies owned by the petitioner's father and the petitioners apart from several third parties as well. The first respondent trust also resumed manufacturing and trading activity after passage of several years. The petitioner was a minor at the time when he was inducted for the benefit of the partnership firm as well as the time of dissolution of the partnership firm and the settlement in favour of the first respondent trust. He attained majority only on 5.1.1992. The petitioner was not aware of any of the business matters as he was not involved in the family business due to his concentration on his education. In the year 1995 he took over the management of another family business M/s Janaki Packaging Pvt. Ltd. which was in the business of tin printing and can manufacturing. Though he became a Director in some of his father's match factory units in the year 1996 he was not involved in the match industry. However, he came to know through his father that litigation is pending before the Madras High Court as well as District Court, Virudhunagar between his father and the first respondent trust. Rajapalayam Industries and Commercial Syndicate Ltd., of which the petitioner is also a Director, filed the petition for rectification of the subject mark and for expunging the same which was transferred to this Appellate Board and Numbered as TRA No. 43/2003/TM/CH. The petitioner on independent legal advice now has filed this petition for rectification for the removal of the first respondent trust's name on the ground that the first respondent trust's ownership was entered in the Register without notice to the other partners and consequently direct the reinstatement of the petitioner and respondents 2 to 13 as the co-owners of the registered mark 'CAMEL' on the following grounds:-

(i) When the form TM-24 was accepted by order dated 2.4.1984, no notice was served on the other partners and as such there is procedural irregularity in the entry of the Register while the dissolution of partnership and the settlement in favour of the first respondent trust were entered into.

(ii) The Register had entered in the register the dissolution of the partnership without a valid deed of reconstitution or dissolution. Similarly, the settlement in favour of the first respondent is not enforceable as the trade mark 'CAMEL' became the property of the firm constituted by virtue of deed of partnership dated 1.4.1973 and 5.10.1974.

(iii) The TM-24 ought not to have been acted upon in the absence of joint application by all the partners or in the alternative without any notice to those who have not signed the application.

(iv) The petitioner being minor at the time of dissolution of the firm and the settlement in favour of the first respondent, the minor's interest could not have been dealt with without prior permission of the Court and as such the dissolution of the partnership thereby the petitioner's interest in the business had been deprived is quite invalid.

(v) Even assuming the petitioner was represented by his father or mother as the guardian, it is to be tested whether they have got such authorisation or power to give up the rights of the petitioner.

The petitioner also stated that the present petition is not barred by limitation and he came to know about the dissolution deed and the settlement in favour of the first respondent trust only in August, 2003 and thereafter he has filed this petition.

3. The first and second respondents filed counter. They generally denied the allegations and further added that the founder P. Iya Nadar originally started the business as a proprietory concern and later converted it into a partnership firm and the partnership firm was dissolved and once again the partnership firm was reconstituted and dissolved. The settlement deed dated 1.10.1980 and the dissolution deed dated 31.8.1980 are with the full knowledge of the petitioner's father and as such it is not open now to the petitioner to challenge the same. Moreover, the petitioner after attaining majority in the year 1992 was fully aware about the transactions and he did not propose to challenge the action of his grand father immediately on attaining majority. Except the petitioner the other respondents do not challenge either the dissolution deed or the deed of settlement. In fact the father of the petitioner who filed TRA No. 43/2004 for removal of the trade mark from the Register did not dispute the dissolution deed and also the settlement deed in favour of the first respondent trust. Now the petitioner has challenged the deeds which were executed nearly 24 years back and as such the proceedings are barred by limitation. Further, the petitioner did not attribute any mala fide intention to his parents and as such everything done with the knowledge of his guardian regarding the dissolution deed of partnership must be taken as valid. The inordinate delay in initiating these proceedings clearly establishes that this is only an after thought on the part of the petitioner without any real grievance. The nature of dispute raised by the petitioner can be adjudicated only before a Civil Court and this Board cannot go into such details. The petitions are not maintainable under the provisions of the Act and the same are liable to be dismissed.

4. We have heard the arguments of Shri S. Natarajan and Shri R. Rajaram learned counsel for the petitioner and Shri Madan for R1 and R2 on 13.10.2004 and 14.10.2004.

5. After the matter was argued the learned counsel for the petitioner requested time to produce the original partnership deed and the dissolution deed. Time was granted till 28.10.2004. The petitioner filed those documents on 9.11.04 with a petition for condoning the delay. We perused those documents also.

6. Learned counsel for the petitioner vehemently contended that the petitioner and the respondents 11 to 13 were taken as partners when Iya Nadar converted the business into a partnership firm. At that time the petitioner and others were minors. Subsequently in the year 1980 once again the partnership firm was dissolved and the business was settled in favour of the first respondent trust under a deed of settlement dated 1.10.1980. The minors interest cannot be dealt with even by the natural guardian without the sanction of the Court and as such the dissolution of the partnership by taking away the rights of the minors without any legal sanction from the Court is illegal and as such the said dissolution deed ought not to have been acted upon by the Registrar. He further contended that the other partners were not given any notice before the order was passed on TM-24 filed by the said Iya Nadar. He also contended that the petitioner made an attempt to get the certified copy of deed of dissolution of partnership and the Trade Marks Registry was unable to furnish the same. The certificate obtained from the Registrar of Firms in respect of South Indian Lucifer Match Works reveal the induction of the partners in the year 1973 and induction of the petitioner as partner represented by his father and natural guardian in the year 1974. The certificate is dated 3.9.3003 which do reveal neither the dissolution nor the reconstitution of the firm. In that case there is no dissolution deed and the entry made by the Registrar in the Register on form TM-24 with regard to the dissolution is without any dissolution deed and as such the entry is illegal and the entries cannot be allowed to continue in the Register. Hence, the rectification is to be ordered.

7. On the contrary the learned counsel for the respondent with equal force contended that the petition is barred by inordinate delay. Due to the delay the Registrar of Trade Marks as well as the parties are not in a position to lay their hands on the original documents. There is every possibility that the documents might have been destroyed after lapse of a reasonable time. The non-availability of the dissolution deed after lapse of 25 years cannot be taken for granted that the entry in the Register is without any valid documents. Moreover, the petitioner is challenging the action of his guardian for giving concurrence to the dissolution, assuming if any, and such action cannot be raised before this Appellate Board. It can be gone into only by a Civil Court. Hence, there is absolutely no merit in these petitions.

8. Out of the arguments the questions that arise for consideration are;

(a) Whether the Registrar has made an entry on form TX-24 regarding the dissolution of the partnership firm dated 1.3.1980 on the basis of any valid dissolution deed or in the absence of any dissolution deed?

(b) Whether the action of the guardian of the petitioner in concurring for the dissolution of the partnership firm in which the petitioner was a partner during his minority is binding on the petitioner?

(c) Even assuming that the action of the guardian of the petitioner is binding on the petitioner, whether such entry is bad for want of notice to the petitioner and the other partners?

(d) Whether this Board can direct reinstatement of the petitioner and respondents 2 to 13 as co-owners of the registered marks on the ground that the dissolution deed dated 31.8.80 is illegal?

(e) To what relief the petitioner is entitled, if any?

9. In a nutshell it can be clearly stated that the petitioner's grievance at this stage is that he was taken as a partner in the partnership business South Indian Lucifer Match Works in the year 1974. Consequently the partnership was reconstituted in 1978 and 1979. Thereafter the partnership was dissolved by a dissolution deed dated 31.8.1980 and the business was settled in favour of the first respondent trust under the settlement deed dated 1.10.1980. During the execution of both the deeds the petitioner was a minor and as such the dissolution of the partnership taking away the petitioner's rights without a sanction of the Court is illegal and the entry on TM-24 without notice to the other partners including the petitioner is null and void and consequently such illegal entry cannot be permitted to be continued in the Register. Even if issue by issue the discussion is to be made, these are all the relevant matters to be discussed.

10. The petitioner has filed this application under Section 57 read with Section 125 of the Trade Marks Act, 1999. Section 125 is an enabling provision for filing rectification petition before the Appellate Board. Section 57 which deals with the power to cancel or vary the registration makes it clear, that on an application made to the Appellate Board or to the Registrar by any person aggrieved, the authority can make such order as it may think fit for cancelling or varying the registration of the trade mark on the ground of any contravention, or failure to observe a condition entered on the Register in relation thereto. Sub-section (2) of Section 57 empowers the rectification if a person is 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. A perusal of the provisions and the plea raised in the petition would lead to the fact that the petitioner is seeking rectification on the ground that the entry made in the Register is without sufficient cause and the same is wrongly remaining on the Register. Without the fear of repetition we have to recall the reasons for such plea.

11. One is the non-availability of the dissolution deed of partnership. Though the said plea was available at the time of argument, in view of the production of the same, no longer the said plea is available to the petitioner. Regarding the question of want of notice is concerned, except the petitioner none of the respondents came forward to support his plea. The respondent No. 5 being father of the petitioner and who is the petitioner in TRA-43/2004 which was also heard on 14.10.2004 did not support the petitioner. Moreover, the petitioner was admittedly a minor on the date of the application, in form TM-24 and as such the petitioner is not entitled for any notice. Section 30 of the Indian Partnership Act deals with the rights of the minors admitted for the benefit of the partnership. With the consent of all the partners a minor can be admitted for the benefit of the partnership. In the case on hand, the petitioner, Ms. Malaraval, R-13 and Thirumagal R-12 were as minors admitted for the benefit of the partnership under the deed dated 3.4.1979 by the then partners Shri Iya Nadar and Mrs. Rajathi Kanagamani R-10. Thereafter, Ms. Thirumagla became major and after her exercising the option under Section 30(5) she was taken as a partner and the other minors Ms. Malaraval R-13, petitioner and one Shri Abiruban who is not a party to this petition were admitted for the benefits of the partnership under the deed dated 1.3.1980. The three partners signed the deed. Similarly the three partners signed the dissolution deed dated 31.8.1980. All these documents were produced by the petitioner. Section 39 of the Indian Partnership Act provides for dissolution of the partnership by consent of all the partners. Since the dissolution deed was signed by all the partners it has to be taken that the dissolution is only with the consent of all the partners. The said deed also mentions about the settlement of the minors' shares. The petitioner who was admitted for the benefit of the partnership cannot challenge the dissolution which is with the consent of all the partners. When once the dissolution had taken place and necessary entries were made in the Register of Trade Marks the request in form TM-24, the same cannot be said to be an entry without sufficient cause. Hence the petitions have to fail.

12. Apart from that the entries regarding dissolution were made in the Register in 1980. A direction for the continuation of partnership cannot be made without the consent of other partners. When the partnership was dissolved during the minority of the petitioner, it is not open to him to seek for such a direction after 24 long years. There is no doubt the petitioner was set up by his father for filing these petitions as alternate for his petition TRA/43/2003/TM/CH and this is clear from the request made by the petitioner to have a joint hearing of all the rectification petitions. The dissolved partnership cannot be revived by a direction of the Court especially when such dissolution is only with the consent of the partners. The relief sought in these petitions is totally a misconceived one.

13. Moreover, the petitioner has now raised the dispute with regard to the assignment of the disputed trade marks in favour of the first respondent trust which was originally owned by the partnership, firm. Section 45 of the Act deal with the registration of assignments and transmissions. Proviso to Sub-section (1) of the Section 45 specifies that where a validity of assignment or transmission is disputed between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court. The proviso makes it clear that such dispute with regard to validity of the assignment of the marks cannot be enquired by the Registrar and it is open to parties to go before a Civil Court, which means such disputes with regard to the validity of the assignment is beyond the scope of this Act and thereby the authorities constituted under this Act has no power to go into the questions or disputes which falls outside the scope of the Act. Moreover, in this case no dispute was raised before Registrar. On this ground also the dispute raised by the petitioner cannot be gone into by this Board.

14. Since, the petitioner has miserably failed to establish that the entries in the Register are without any sufficient cause, we are of the view that these petitions are liable to be dismissed. Hence, the petitions are dismissed with cost of Rs. 5000.


Source: http://www.indiankanoon.org/doc/275824/