Owner of a registered trade mark cannot be changed in a mechanical or a perfunctory manner: Delhi HC

The Delhi High Court has held that the owner of a registered trade mark cannot be changed in a mechanical or a perfunctory manner, simply upon filing of any Form. (M/s S. K. Cosmetics vs The Controller General of Patents, Designs and Trade Marks and Ors).The Court has held that the owner of a registered trade mark can be changed after a request is made on Form TM-P and appropriate orders are passed by the Trademark Registry after considering the objections, if any..The order was passed by a Single Judge Bench of Justice Prathiba M Singh in a petition by M/s S. K. Cosmetics (Petitioner) challenging the online status changes made by the Trademark Registry in respect of its registered trademarks..The Petitioner had two partners, Shyam Sunder Nagpal and Naresh Kumar Nagpal..After the Petitioner filed Forms TM-33 and 34 for changing of description and for changing the address of the proprietor, the Registry changed the name of the proprietor..The ownership of the trademark passed on to Naresh Kumar Nagpal instead of the original proprietor i.e the Petitioner or Shyam Sunder Nagpal..The Petitioner thus moved the High Court seeking a direction to the Registry to rectify its records/Register of Trade Marks..It was the Petitioner’s case that under the garb of form TM-33 and 34, the ownership of the trade mark could not be changed..It was submitted that there were disputes with regard to the parties in respect of the ownership of the marks, which were confounded by the changes reflected in the Online status on the website of the Trade Marks Registry..The Court held that Forms TM 33 and 34 were not meant to change the ownership or the proprietary nature of the mark, but only to carry out any change in the description or in the address etc..If there was any assignment or change in ownership that is pleaded by either party, the same would have to be made in the form of a request on Form TM-P, the Court added..The Court observed that the recordal of assignments or transmission of registered trade marks was a serious matter, especially if there are disputes pending in respect of ownership of the marks..“The owner of a registered trade mark cannot therefore be changed in a mechanical or a perfunctory manner, simply upon filing of any Form to which any interested party would be entitled to object.”Delhi High Court .The Court clarified that any objections against the assignment have to be adjudicated by the Registrar, usually, after giving a hearing to the parties, and only then can a change in ownership be effected..“The same has to be after fulfilment of various formalities, explanation on affidavit of the reasons for the assignment/transmission sought supported by documents, inviting of objections, if any, and affording of a hearing, if required. Where there are no disputes in respect of the mark, then the assignment can be recorded without a hearing – say in the case of a mark being assigned from one group company to another.”Delhi High Court .The Court further held that in the case of assignment of marks to a third party, the Registrar has to record satisfaction and only then pass orders recording the assignment..If a civil court is seized of the dispute as to ownership, usually, the decision of the court ought to be awaited before allowing the recordal of the assignment, it added..As far as the present case was concerned, the Court concluded that the Petitioner’s case did not survive as the status quo had been resorted by the Registry..The Court, nonetheless, clarified that if any party makes a request under form TM-P, the same shall be proceeded with in accordance with law after objections, if any, being heard and appropriate orders being passed by the Trademark Registry..The Petitioner was represented by Advocates MK Miglani, Prithvi Gulati, Anubhav Chhabra..Registry was represented by Centrak Government Standing Counsel Kirtiman Singh with Advocate Waize Ali Noor..Naresh Kumar Nagpal was represented by Advocates Mahir Malhotra, Satish Kumar, Mansi Gulati.