Case: Infosys Technologies Ltd Vs. Jupiter Infosys Ltd.

2. The appellant is Infosys Technologies Limited. It was incorporated and registered under the Companies Act, 1956 on July 2, 1981 in the name of Infosys Consultants Private Limited. The appellant got the trade markregistered in 1987 in Classes 16 and 9 in connection with computer stationery, computer manuals, printed manual for computer instruction and teaching materials; computer hardwares, computer interface, computer peripherals, electronics telex interface and in 1988 in Class 7 in connection with machine and machine tools and motors (not for land vehicles). The particulars with reference to the trade mark registered by the appellant are as follows:DateRegistration No.ClassGoods15.7.1987475269Class 16Computer Stationery, Computer Manuals, Printed Manuals for Computer Instruction and teaching materials etc.15.7.1987475267Class 09Computer Hardwares, Computer Interface, Computer Peripherals, Electronics Telex27.1.1988484837Class 07Interface and all goods covered in class 09. Machine and Machine Tools and Motors (not for land vehicles) included in Class 07.3. On April 21, 1992, the name of the company—Infosys Consultants Pvt. Limited—was changed to Infosys Technologies Pvt. Ltd. and thereafter on June 2, 1992, the name was changed to the present name, i.e. Infosys Technologies Limited.4. The first respondent is Jupiter Infosys Limited. The first respondent was incorporated and registered in September 1978 under the name of Jupiter Agencies Pvt. Limited. The name of the first respondent was changed to Jupiter Infosys (P) Limited in August, 1995 and now since July, 2003, the name is changed to Jupiter International Limited.5. On October 11, 1996, the appellant instituted a suit in the Calcutta High Court for perpetual injunction, inter alia, restraining the first respondent from infringing theby using the markby itself or in combination with other marks in course of its trade. The appellant also prayed for an interim order in the suit. On November 22, 1996, the Calcutta High Court by anorder restrained the first respondent from using the wordin any manner in relation to the goods for the time being. Theorder was confirmed on November 29, 1996.6. The appellant having come to know of several instances of misuse of markalso filed a writ petition (being writ petition No. 14214 of 2000) before the Calcutta High Court, inter alia, praying that the Registrar of Companies be restrained from registering the companies bearing the nameOn September 13, 2000, the Calcutta High Court restrained the Department of Company Affairs and Registrar of Companies from incorporating any company bearing the namewithout the permission of the appellant.7. In January 2001, the appellant filed yet another suit before the High Court of Judicature at Madras for permanent injunction restraining the first respondent from offering shares to the public as claimed in the Initial Public Offer (IPO) usingThe Single Judge of the Madras High Court passed an interim restraint order on February 1, 2001 against the first respondent. The said order was confirmed on May 22, 2001 to remain operative till disposal of suit.8. The first respondent then filed three separate applications before the Madras High Court, inter alia, under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (‘the 1958In O.P. No. 764 of 2001, the first respondent prayed for the removal/rectification of the entry in the register of trade mark in respect of trade mark No. 475269 in Class 16 while in the other two applications being O.P. No. 765 of 2001 and O.P. No. 766 of 2001, the first respondent prayed for removal/rectification of trade mark No. 475267 in Class 9 and trade mark No. 484837 in Class 7 respectively.9. The appellant opposed these applications on diverse grounds by filing counter affidavits.The 1958 Act was repealed by the Trade Marks Act, 1999 (for short, ‘the 1999In terms of Section 100 of the 1999 Act, the three petitions filed by the first respondent before the Madras High Court for rectification/removal of registered trade mark Nos. 475269, 475267 and 484837 were transferred to the IPAB.12. Some more facts may be noticed. The appellant filed yet another suit (being suit no. 2115 of 2002) before Delhi High Court for infringement of trade mark and passing off against the first respondent. In that suit, the appellant also made an application for grant of temporary injunction. The vacation Judge of the Delhi High Court, on December 27, 2002 passed an order of temporary injunction against the first respondent asfor 24th March, 2003 before the Joint Registrar.Heard. Perused the averments made in the suit and application which are duly supported by documents on record. I am of the opinion that in case ex parte ad interim orders are not granted, the relief claimed itself may be rendered infructuous. Accordingly it is directed that pending further consideration of the matter after notice for the next date of hearing, the defendants are restrained by themselves, their directors, employees, agents and/or others acting on its behalf, from using the trade mark/corporate name INFOSYS or any other mark/name deceptively similar trade mark or colourable imitation thereof as a mark and/or corporate name or as part of a mark and/or business name, in respect of goods and/or services, for publicity on propaganda, on websites and or in domain names, in any way, whatsoever, thereby causing infringement of the registered trade mark INFOSYS of the plaintiff in isolation or in combination with words/letters/numbers their advertisements as part of their corporate name either in isolation or in goods and services, or in or by way of any advertisement/publicity campaigns, etc.Compliance of Order 39 Rule 3, CPC within threesaid suit was transferred to the Court of the Additional District Judge, Tis Hazari Court, Delhi. In that suit, an affidavit came to be filed by the first respondent wherein it was stated that the name of the company has been changed from Jupiter Infosys Limited to Jupiter International Limited and a certificate to that effect has been issued by the Registrar of Companies, Kolkata under the Companies Act, 1956 and no dispute remains between the parties under the trade mark. The relevant statement made in the affidavit dated July 14, 2003 (we were informed that the date of the affidavit is July 14, 2004) reads asThat in the meantime the defendant has already changed the Trade Mark namely ‘Jupiter Internationalin place of ‘Jupiter InfosysThe copy of the incorporation on change of name which was issued by the Registrar of the Companies are being marked and annexed herewith as Annexure A.That now there is no dispute between the plaintiff and defendant under the Tradeon this affidavit, the suit was partially decreed in favour of the appellant on November 10, 2004.13. In 2007, however, the first respondent filed a suit in the Court of Additional District Judge, Delhi for setting aside the decree dated November 10, 2004. That suit is said to be pending.14. The IPAB proceeded with the matter in light of the issues that were already framed by the High Court and heard the parties. The IPAB in the impugned order while dealing with the plea of limitation raised by the appellant held that the first respondent was the appropriate aggrieved party in the matter in view of the fresh cause of action having arisen to the first respondent on filing of Civil Suit No. 71 of 2001 by the appellant before the Madras High Court. The IPAB in the impugned order held that the trade mark Nos. 475269, 475267 and 484837 have not been used by the appellant for more than a period of five years and one month and the appellant also failed to make out that it had been in manufacturing or trading of the goods for which it had taken Registration Nos. 475269, 475267 and 484837. Consequently, the IPAB allowed the applications made by the first respondent purportedly under Section 46(1)(b) of the 1958 Act and directed the Registrar to remove these registrations from the register.

Reasoning:
30. Hardie Trading Ltd. (supra) has been followed by this Court in a recent decision in the case of Kabushiki Kaisha Toshiba, This Court stated that Section 46 speaks for private interest while Section 56 speaks of a public interest.31. It is true that the appellant in opposition to the applications for removal/rectification of trade mark did not specifically challenge in its counter affidavits the locus standi of the first respondent to be heard as a person aggrieved. Obviously, in the absence of any specific objection by the appellant to that effect, no specific issue was framed by the High Court whether the applicant was an aggrieved person. The applications having been transferred to the IPAB in terms of Section 100 of the 1999 Act, the IPAB examined the matter in light of the issues that were framed by the High Court although in the written submissions before it, the objection was raised that the first respondent has ceased to have locus standi in view of the subsequent events, particularly change of the name of the first respondent from Jupiter Infosys Ltd. to Jupiter International Ltd. The question is, whether in these circumstances it was incumbent upon the IPAB to consider and satisfy itself about the locus standi of the first respondent to be heard as a person aggrieved. In our considered view, it was. In the first place, when the first respondent applied for rectification/removal in respect of three registrations in Classes 7, 9 and 16, it must have shown in respect of each of them that it is a ‘personand the IPAB must have separately considered in respect of each registration the locus standi of the first respondent as the considerations for each entry might not have been common. Secondly, and more importantly, during the pendency of the applications, certain events had taken place which had some bearing on the question of locus standi of the first respondent insofar as invocation of Section 46(1) of the 1958 Act is concerned. In the affidavit filed by the first respondent on July 14, 2004 before the Court of Additional District Judge, Delhi an unequivocal and categorical statement has been made that now there is no dispute between the plaintiff (appellant herein) and defendant (first respondent herein) under the trade mark and that defendant has already changed the trade mark namelyin place of2. In terms of Section 46(1), not only that the applicant has to show that he is an aggrieved person as his interest is being affected but the IPAB must also be satisfied, before it directs the removal of registered trade mark, that the applicant is an aggrieved person before it invokes the power in directing the removal of the registered trade mark. This is so because thefor exercise of power under Section 46(1) is that the applicant is a personour view, the grievance of the applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided. If during the pendency of such application, thecause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest. In Re: Apollinaris, (1891) 2 Ch.D 186while dealing with this aspect, Kekemich, J.that is a remedy given to the person aggrieved through the interposition of the Court for the benefit of the applicant, and if at the date of the trial he has no cause of complaint it seems to be monstrous to suppose that the Court will rectify the register at his instance when it can do him no good to rectify, and when the retention on the register can do him no harm merely because at the date of his application he may have had someconcur with the above statement.