Infosys Technologies Ltd vs Jupiter Infosys Ltd. & Anr

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 mark `Infosys' registered 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 :

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 the appellant's mark `Infosys' by using the mark `Infosys' by 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 an ad- interim order restrained the first respondent from using the word `Infosys' in any manner in relation to the goods for the time being. The ad-interim order was confirmed on November 29, 1996. 3

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) using `Infosys'. The 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 1958 Act'). In O.P. No. 764 of 2001, the first respondent prayed for the 4 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.

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, 8 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.

We are afraid, this is hardly an objection about maintainability. Apart from it, on September 12, 2005 after hearing both parties, special leave was granted by this Court. In the backdrop of these peculiar facts, in our view, it is not appropriate to relegate the 17 appellant at this distance of time to challenge the impugned order passed by the IPAB in writ petition before the High Court. The objection about maintainability of the appeals is, accordingly, overruled.

user i.e. under Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply for its removal. An applicant must therefore show that "in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by `possible' I mean possible in a practical sense, and not merely in a fantastic view.... All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them".

We concur with the above statement.

35. In view of the above, these appeals are allowed in part and the impugned order dated September 9, 2004 is set aside. The applications being TRA Nos. 25 to 27 of 2003 (OP Nos. 764 to 766 of 2001) are restored to the file of Intellectual Property Appellate Board, Chennai for hearing and disposal afresh in accordance with law. The parties shall bear their own costs.

(R.M. Lodha) NEW DELHI, NOVEMBER 9, 2010.