Karnataka High Court allows Classic Legends to use ‘Yezdi’ trademark for its motorcycles

A Division Bench of the Karnataka High Court has overturned a 2022 single judge Bench order that had restrained Classic Legends Pvt Ltd, founded by Boman R Irani of Rustomjee Group and Mahindra & Mahindra, from using the trademark 'Yezdi' for the sale of motorbikes [Classic Legends Private Ltd. & Boman R. Irani v. The Official Liquidator of M/s Ideal Jawa (India) Ltd & Ors.].

The single-judge Bench had earlier restrained Classic Legends from using the 'Yezdi' mark after the official liquidator (OL) of the mark's first owner, Ideal Jawa, asserted rights over this trademark. This verdict was challenged by Classic Legends before a Division Bench of the Court.

On November 27, a Bench of Justices DK Singh and Venkatesh Naik T noted that Ideal Jawa (India) Limited had not used the mark for over 15 years and that the company had made no efforts to renew its rights over the mark after it lapsed.

The Division Bench, therefore, ruled that Classic Legends can continue commercial use of the mark.

"In view of the aforesaid discussions, we allow the appeals and set aside the impugned judgment and order passed by the learned Single Judge," the Court said.

Ideal Jawa, used to sell bikes under the name Yezdi. The Yezdi trademark was assigned to Ideal Jawa by its founder, Rustom S Irani, to remember his Persian roots (Yezdi having been a place in Persia, now Iran).

Rustom Irani passed away in 1989. In the early 90s, insolvency petitions were filed against Ideal Jawa, which eventually ceased the production of Yezdi motorbikes in 1996.

In 2001, a company court ordered the winding up of Ideal Jawa and its liquidation.

In the meantime, Rustom Irani's son, R Boman Irani, had begun operating a website www.yezdi.com in an attempt to revive the brand. Later, after Ideal Jawa's trademark rights over 'Yezdi' lapsed, Boman Irani also initiated proceedings to get the registration of the Yezdi mark in his favour.

In June 2015, he and Mahindra & Mahindra co-founded Classic Legends.

In August the same year, the official liquidator (OL) of Ideal Jawa sent a letter to the trademarks authorities, claiming that the Yezdi trademark belonged to Ideal Jawa and that rights over the mark cannot be assigned to anyone else. The OL also moved the High Court seeking permission to sell the said trademark.

In 2018, Boman Irani, who had got the Yezdi trademark registered in his name, gave Classic Legends an exclusive license to use the same mark. Ideal Jawa's OL then filed a petition to declare the trademark registration given in Boman Irani's favour void. The Ideal Jawa Employees Association also filed a similar plea to declare this trademark registration null and void.

In December 2022, a single judge of the High Court allowed the applications filed by the OL.

The single judge ruled that the trademark vested with Ideal Jawa and was in the custody of the court from the time the liquidation proceedings commenced.

Further, the Court had said that the registrations obtained by Irani in his personal capacity were invalid, and that the Registrar of Trade Marks should restore Ideal Jawa's expired marks.

This verdict was challenged by Classic Legends, which contended that matters relating to validity, rectification, cancellation or restoration of trademarks fall exclusively under the Trade Marks Act.

A company court cannot order the cancellation of registrations or restore lapsed marks, it argued. It further contended that the prolonged non-use of the mark by Ideal Jawa indicated an abandonment of the mark.

The Division Bench found merit in these arguments and questioned how the OL could claim rights over the Yezdi mark when no efforts were taken to protect Ideal Jawa's rights over the said mark for several years.

"It would be difficult to say in a wider proposition that the company in liquidation can assert rights in the trade marks when no action was taken for over 15 years for renewal of the trade marks registered in the name of the company and the trade marks were not used by the company since 1996 and the registration of the trade marks got lapsed. The right over the trade marks would not continue indefinitely in limbo," said the Court.

The Court concluded that the single judge’s directions could not be sustained. Therefore, it allowed the appeals and set aside the single-judge ruling.

Arguments for Classic Legends Private Limited were led by Senior Counsel SS Naganand. Advocates Saikrishna Rajagopal, Julien George, Gitanjali Miriam Mathew, Anu Paarcha, Meghana Satish Singh, Sudarshana MJ, Chanda Shashikant, Mythili Girish and N Parvati of Saikrishna & Associates and Vikram Unni Rajagopal of Rajagopal & Menon Associates also represented Classic Legends.

Boman R Irani was represented by Senior Counsel Udaya Holla and advocate P Chinnappa.

The Official Liquidator of M/s Ideal Jawa (India) Ltd. was represented by Senior Counsel Aditya Sondhi, along with advocate KS Mahadevan.

The Ideal Jawa (India) Employees Association were represented by Senior Counsel Dhyan Chinnappa along with advocates Bhavna Arul and Poorna Chandra B Pattar.

The Union of India and associated respondents were represented by Central Government Counsel MN Kumar.

[Read Judgement]