Infosys Technologies Ltd. v. Jupiter Infosys Ltd. & Ors.

The case analysis revolves around the removal of trademark once registered. The Sections 46 and 56 of the Trade and Merchandise Act, 1958 were applicable but the Supreme Court gave a very apt judgement in view of all developments.
CITATION(2011) 1 SCC 125
COURTSupreme Court of India
JUDGES/CORAMJustice Aftab Alam and Justice R.M. Lodha
DATE OF JUDGEMENT09.11.2010

Introduction

Once a trademark is filed, it can be canceled or rectified. But an application for cancellation or rectification can only be filed by a person aggrieved.  Person aggrieved may be a prior user of the mark or to whom substantial damage is being caused if the trademark remains registered.  Under the Trade and Merchandise Marks Act, 1958 such an application could be filed under Sections 46 and 56. As per the new Trade Marks Act, 1999 the applicable sections are Sections 47 and 57. In the present case, an application for removal of the trademark ‘Infosys’ is in dispute.

Facts

The facts of the case are as follows: The plaintiff, Infosys Technologies Ltd., was in a dispute against Jupiter Infosys Ltd. for having used the former’s mark ‘Infosys’ in its business dealings. The plaintiff had registered its trademark ‘Infosys’ way back in 1987 in relation to certain classes of goods. Though the defendant company was incorporated under the name Jupiter Agencies Pvt. Ltd., they changed their name of Jupiter Infosys Pvt. Ltd. in 1995 and subsequently started using the mark ‘Infosys’ in their dealings.

The defendant applied for removal of the mark ‘Infosys’ from the Trade Marks Registry which was challenged by the plaintiff. In the final judgment on the case, judges of the Apex Court of the country- Justice Aftab Alam and Justice R.M. Lodha- stated that the Intellectual Property Appellate Board (IPAB) had not considered the requirement for such applications of removal/rectification of trademarks that the applicant must be a ‘person aggrieved’ and so sent back the applications to IPAB for re-consideration.

Issues

The main issue in the case is:

  1. Whether or not the findings of the Intellectual Property Appellate Board (IPAB) are correct. Whether or not, for an application under Section 46 or Section 56 of the Trade and Merchandise Marks Act, 1958 it is a pre-requisite that the applicant must be a person aggrieved.
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Summary of court decisions and judgment

In 1996, the plaintiff first instituted a suit in the Calcutta High Court to obtain a perpetual injunction and an ad-interim order against the defendant company from using their mark ‘Infosys’ or any similar marks in course of their trade. The plaintiff was granted the ad-interim order in the same year.

Next, in the year 2000, the plaintiff also filed a writ petition before the Calcutta High Court to restrain the Registrar of Companies from registering any companies bearing the name ‘Infosys’. The same was allowed by the High Court. Further in 2001, the plaintiff filed yet another suit in the Madras High Court for a permanent injunction to restrain the defendant company from offering shares to the public in their Initial Public Offer (IPO). An interim order was passed to the same effect.      

In 2002, a suit for infringement of trademark and passing off was instituted by the plaintiff, against the defendant company. The plaintiff received a temporary injunction which restrained the defendants or any connected personnel from using the trademark and name ‘Infosys’ or any deceptively similar name, in any manner. This suit was transferred to Court of Additional District Judge, Tis Hazari Court in Delhi wherein an affidavit was filed by the defendant stating that it had changed its name to Jupiter International Ltd. and a certificate to the same effect was issued under the Companies Act, 1956. Owing to the aforementioned affidavit, the suit was only partially decreed in favor of the plaintiff. But the defendant filed a suit against the decree and order, in the Court of Additional District Judge, Delhi to set them aside.

In 2001, the defendant filed three separate applications before the Madras High Court praying for the removal of the trademark ‘Infosys’ from the Register of Trade Marks, under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. These applications were opposed by the plaintiff on diverse grounds. During the pendency of the suit, Trade Marks Act, 1999 was enacted and so the applications were transferred to the Intellectual Property Appellant Board (IPAB) under Section 100 of the new Act. The IPAB ordered the removal of ‘Infosys’ from the Register of Trade Marks in 2004 in respect of selected categories and the same was appealed against by the plaintiff by way of special leave, before the Supreme Court.

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The Supreme Court found that the IPAB did not consider the aspect of ‘aggrieved person’ filing the application under the 1958 Act and hence was erroneous in its decision. Accordingly, the applications in question were sent back to IPAB for fresh consideration.

Analysis

While considering applications under Sections 46 and 56 of the 1958 Act, it was pertinent to identify ‘person aggrieved’ so as to determine the locus standi of the applicant. Section 46 of the old Act clearly stated that “application to a High Court or to the Registrar by any person aggrieved” in respect of removal/rectification of a registration. Now, who is a ‘person aggrieved’ under Sections 46 and 56 has to be determined.

A bare reading of the concerned sections reveals that it is a pre-requisite that the applicant when filing an application under Section 46 and/or Section 56 must be a person aggrieved. Under Section 46, a person aggrieved is the one whose interest is affected in some possible way by the disputed trademark remaining on the register. But person aggrieved under Section 56 has a different connotation from Section 46. In the present case, while the applications were being considered by the Madras High Court, the plaintiff did not raise the objection of locus standi and person aggrieved and hence, no issues were made regarding the same. Consequentially when the applications were transferred to the IPAB, the question of aggrieved person was not looked into again. This was erroneous and the Board should have considered the question. The onus of proving the applicant being a person aggrieved rests upon the applicant himself. Even once the proof is established, it is necessary that the applicant must be a person aggrieved on the date of application and must remain so until the removal or rectification is finally decided. All of these peculiarities were not considered by the IPAB and hence its decision was flawed and erroneous.

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Conclusion

The importance of IPR should never be underestimated. With an increase in business and competition, one small mistake may land one in great problems. Setting up the IPAB has strengthened the IPR regime in India but a few mistakes on the Board’s part, like the one in the present case, may cause havoc if the matter is too big. Regulation of IPR is a herculean task but with proper institutions and laws in place, it is an achievable objective.