Due Process of Law Must be Followed by the Registrar While Examining Requests for Recordal of New Proprietor in Trademark Register

Due Process of Law Must be Followed by the Registrar While Examining Requests for Recordal of New Proprietor in Trademark RegisterThe order in the case of Electronica India Ltd vs Electronica Hitech Machines Pvt Ltd & Ors arises out of two Commercial Miscellaneous Petitions – CMP No. 47 of 2022 and 51of 2022 filed by the petitioner against the Trademark Registry, Mumbai, for bringing on record the name of the respondent as subsequent proprietor of the mark ELECTRONICA based on their request filed by way of Form 24. The matter arose before the Mumbai High Court, which admitted the plaint to be registered as a suit.


Electronica Hitech Machines Pvt Ltd had moved two Form-24 Applications before the Trademark Registry, Mumbai, to record their name as the subsequent proprietor of the trademarks bearing nos—1313395 and 1313396, which were earlier registered by the partnership firm M/s Electronica since 2004. In 2011, all three partners of the firm M/s Electronica became directors of Electronica Hitech Machines Pvt Ltd when the firm was converted into a Company under the Companies Act. Consequently, Electronica Hitech Machines Pvt Ltd claimed ownership of the trademarks mentioned above.

The petitioner, who uses the tradename Electronica India Ltd, also wanted to register the mark ELECTRONICA and challenged the respondent’s use of Electronica in a case instituted in the district court of Pune. In the meantime, in the recordal of name proceedings before the Registrar at Mumbai, the respondent filed a false affidavit in which they did not disclose the fact that the petitioner had filed any such case disputing their right to use the name ELECTRONICA.

The petitioner, pursuing the matter in Pune court, learned that the Trademark registry in Mumbai had entered the name of the respondents as the owner of the two registered trademarks as successor in interest vide order dated January 25 2018. However, when the petitioner, by way of an RTI application, asked for a copy of the order dated January 25, 2018, by which the name of the respondent was put on record, he was given a communication dated May 18, 2018. On further, on examining the records, it was found that there were two versions of the Letter dated May 18, 2018 and even had two different signatures on them. The petitioner questioned the logic behind multiple orders being passed against the same request of the respondent by the Registry. All these discrepancies prompted the petitioner to file the two instant writ petitions before the High Court seeking the removal of the name of the respondent, which had been recorded by the Registrar of Trademarks.

On the part of the Respondents, Mr. Kamath argued that on the conversion of the Partnership firm to a company under Part IX of the Companies Act, the assets of the partnership firm were automatically transferred to the Respondent company as successor in interest, and there is no transfer taking place since there is no transferor or transferee. As such, there is no need for any instrument or document to cause or substantiate the transfer. As such, the transmission is by operation of law and not through any agreement or transfer deed. Thus, when an application is made under Section 45 of the Trademarks Act, there is no requirement to examine any other documents to record the name of the company in place of the partnership firm. Just the Certificate of Incorporation of the Company is sufficient to establish the existence of the successor in the interest of the partnership firm. Accordingly, the Registrar was right in recording the name of the respondent as the new owner of the two trademarks.

He further argued that if the Registrar did not record the company’s name as the subsequent proprietor, then the marks would exist in a vacuum as the Partnership Firm no longer exists and has been converted into the Respondent Company in terms of the procedure under Part IX of the Companies Act. Thus, if the order is set aside, the respondent will suffer real prejudice.

Decision of the Court

After duly considering the arguments put forward by both parties, the learned judge opined that the recordals of the name of the Respondent Company in place of the erstwhile Partnership Firm could not be considered an automatic transfer. The Registrar had asked the Respondent company to furnish an affidavit regarding any disputes with respect to the Trademarks in question, but the Respondent Company did not disclose the dispute going on with the petitioner herein.

Further, the petitioner had also tried to approach the Registrar independently, but his submission was not taken on record. Above all, there is no Speaking Order by the Registrar that can suggest that these aspects have been duly examined and deliberated upon before passing the order to bring the name of the Respondent Company on record.

As such, the Hon’ble Judge disposed of the petitions by ordering that the recordal of the name of the Respondent Company in the register of Trademarks as the subsequent owner of the impugned trademarks stands cancelled, and the Registrar shall examine the case afresh, taking into account all aspects such as the outcome of the case before the Pune District Court and the appeals in the matter which have been filed against the orders of the Pune District Court.

The Registrar shall examine the dispute pertaining to ownership of the trademarks from the beginning and give the petitioner an opportunity to express his reservations against the recordal of the name of the respondent company. After duly examining all the points, the Registrar shall issue a Speaking order duly recording the reasons for the decision to register the name of the petitioner or the respondent herein, which will conform with Section 45 of the Trademarks Act 1999. Both the petitions were disposed of by this common order without any order regarding the costs of litigation.

Authors: Manisha Singh and Puja Tiwari

First Published by: Mondaq here