Registration of trademarks gives the exclusive right to use the mark in respect of goods for which one has registered it and the infringement of such right gives him the right to initiate proceedings against the person who uses the mark without his consent. Besides being the prima facie evidence of the validity of the trademark it also establishes the date of use of trademark.
The Trademarks Act, 1999 empowers the Registrar to renew the registration on an application filed only by the registered proprietor of the trade mark. Registered proprietor has been defined by the Act as the person for the time being entered in the register as proprietor of the trade mark. The question arises whether the proprietor on the Register can still call himself as the registered proprietor after the expiry of the period of registration. Whether such proprietor can transfer rights of the impugned trademark? Whether the transferee gets into the shoes of such proprietor and seek the renewal of registration of the impugned trademark? The IPAB, Chennai while dealing with these question in Three-N-Products (P) Ltd. v. Jocil Ltd. & Ors. (2006 (3) PTC 402 (IPAB)) has held:
"When once the registration comes to an end, the benefits derived out of the registration by the owner will also come to an end".
In the present case the 1st respondent after the expiry of the period of registration did not renew his registration twice with respect of trademark ‘AYUSH’ for soaps and detergents. Thereafter he assigned his rights in respect of impugned trademark alongwith goodwill to the 2nd respondent by the Deed of Assignment. The 2nd respondent in an attempt to legalise the registration of the impugned mark filed forms for renewal and restoration of the mark and paid the requisite fees through its Attorney. The petitioner was the registered proprietor of the trade mark ‘AYUR’ on various applications in respect of goods falling in different classes of the 4th Schedule of the Act. Appeal against the decision of the Registrar who renewed the impugned mark and made the registration alive had been filed in the High Court of Madras which was transferred to IPAB, Chennai. While deciding all the issues mentioned above and following the ruling of Delhi High Court in M/s Thapsons Pvt. Ltd. v. M/s Ashok Food Industries and Another (1992 (12) PTC 50 (Del.)) the IPAB further held:
"so long as the mark is on the Register, the original proprietor in whose name the mark had been registered is the original proprietor. In our view, on the date of the assignment, there is no valid registration since admittedly, the mark has not been renewed and consequently the first respondent cannot transfer a non-existing right. The application for renewal was not made by the registered proprietor of the trade mark and consequently the application filed by the second respondent ought to have been rejected and renewal ought not to have been made".
Thus the point on the law is now settled that only the registered proprietor can renew and transfer his rights over the trademark. He cannot transfer the non-existing rights which accrued due to his non-renewal of the registration. Further the Deed of Assignment which transfers the rights to the other party much after the date of renewal granted for registration would be of no help to the party getting the transferred rights.
© Lex Orbis 2006
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