This case arises out of a Writ Petition filed by SK Cosmetics in the High Court of Delhi seeking order of direction in the nature of mandamus.1 The Hon’ble Court dealt with a limited challenge in this writ petition i.e. when a Trade Mark Form no. 33 (for change name or description of a registered proprietor of trade mark) or Trade Mark Form no. 34 form (for altering the address of the principal place of business or of residence in India or of the address in the home country abroad) is filed to make relevant changes in the official register of trademarks, whether the possession can be shifted of a certified brand owner.
Facts of the case:
M/s. SK Cosmetics has two partners, namely Mr. Shyam Sunder Nagpal and Mr. Naresh Kumar Nagpal. Mr. Naresh Kumar Nagpal is also one of the respondents in this matter. The company owns and uses various trademarks. The firm filed the petition to challenge the changes made by the trademark Registry over numerous registered trademarks owned by the company. Initially, the company had filed Form TM-33 & TM-34 to change the description and the address of the company as proprietor of the trademarks. However, the trademark registry made changes to the name of the proprietor which resulted in assignment of ownership of trademark to Mr. Naresh Kumar Nagpal (Respondent) instead of the company of Shyam Sunder Nagpal.
Issue:
Whether ownership of trademark can be transferred under the garb of forms TM-33 & TM34?
Reasoning by the bench:
The Hon’ble Court gave a clear disapproval to the effect of forms TM-33 or TM-34 resulting in transfer of ownership of the trademark. The court’s reasoning is based on the nature of the two forms concerned in this matter. The court opined that these forms are not meant to change the ownership or the proprietary nature of the mark rather only to alter the description or the address mentioned pertaining to the concerned trademark. The process of changing the ownership of the trademark is more stringent and different from the process that entails after filing Form TM-33/34; which is also the very reason why there is a separate Form TM-P (earlier Form TM-23 or TM- 24 which facilitates filing of an application to make postregistration changes in a trademark) for that purpose. When a proprietor files for transfer of ownership of the trademark and if the trademark is in dispute, any interested party can object to such transaction. However, if this process is not followed the transfer of ownership of trademark will be carried out without any notice to the interested parties. Moreover, if an entitled party objects to such transfer, the objections will have to be adjudicated by the Registrar after giving a hearing to the concerned the parties, only then can a change be brought into effect in the ownership of the trademark. The court stressed on the fact that transfer of the ownership of a trademark is a more serious matter than merely changing its description or its proprietor’s address. Therefore, the owner of a registered trademark cannot be changed in a mechanical or perfunctory manner.
Analysis of the Judgment:
The Court while dealing with this matter implied that to give effect to transfer of ownership various formalities have to be complied with. This involved explanation on affidavit highlighting the reasons for seeking a transmission or assignment of the trademark, which is also to be supported by documents, inviting of possible objections and if required, affording a hearing. If, in case, there are no disputes pertaining to the trademark sought to be transferred/assigned, only then assignment can take effect without a hearing. For instance, a trademark being assigned from one group company to another. In case there are any disputes the assignment or transfer cannot take effect without the satisfaction of the Registrar and orders being passed in furtherance of recording the assignment. In this matter the Court concluded in favour of the petitioners that a change in ownership would only be considered if it is filed for, through Form TM-P.
Any decision otherwise on this issue would be ill-founded in law on account of its failure in being unable to satisfy the conditions laid out in the procedure for assignment of trademark under the Trade Marks Rule 2017, Chapter V, Section 75 which clearly states that an application for Assignment of trademark shall be under Form TM-P: “Request to replace subsequent proprietor as registered proprietor on register, request to amend the details of registered proprietor or registered user(s); request to amendment of registered trademarks; request for amendment in specification of goods or services; request for conversion of goods; request for dissolution of association between trademarks.”2
Conclusion
In conclusion, any party should refrain from going around the procedure established by law. It has been stated in the Trade Marks Rule 2017 that an application for assignment or transfer of ownership shall be made under Form TM-P, therefore an application under a form which has a different purpose altogether shall not be accepted and procedure established by law shall be adhered to at every given instance.
Article by Manisha Singh and Simran Bhullar, 1st published on Lexology.