Trade Mark Act, 1999 Section 45

Infringement of trade mark THEOBID

I also find that under Section 2(l)(w) a registered trade mark is a trade mark which is on the Register and is in force. Registered trade mark is thus different from registered proprietor. Assignment under Section 2(b) is an assignment in writing by act of parties concerned. Assignment does not require registration. The Register of Trade Mark under Section 6 is to contain trade marks with the name etc of proprietor. Section 37 empowers the person entered in the Register as proprietor of trade make to assign the same. Section 38 makes the trade mark a tradeableproperty I commodity subject to restrictions in Sections 40 to 44. Thus registered trade mark is different from proprietor thereof. Thereafter, Section 45(1) provides "where a person becomes entitled by assignment ..to a registered trade mark, he shall apply in the prescribed manner to the Registrar to Register his title..." meaning thereby that assignment of title in registered trade mark is complete on assignment within the meaning of Section 2(b), i.e., on writing between the assignor and the assignee. For assignment to be complete, the Registrar is not involved. It is further borne out from language supra of Section 45(1) that the assignee acquires title to registered trade mark on assignment and not by registration. Registration is of title acquired by assignment. The inquiry which a Registrar is to make before such registration of title acquired by assignment is of satisfaction of proof of title and as to disputes if any as to assignment. This inquiry is limited to this extent only in contradistinction to inquiry which the Registrar is to make before registering a trade mark. A dispute as to assignment can be raised by the assignor or by some person claiming prior assign¬ment and not by strangers or by persons claiming adversely to the assignor. [Para 11]

Secondly and more importantly, though Section 45(2) couched in peremptory language, is however subject to a direction to the otherwise of the court. The ultimate decision, therefore, is of the court, whether to admit into evidence or place reliance on any document of assignment or transmission of trade mark, inspite of the same being not entered in the Register. The legislature has thus after laying down the general rule of an unregistered document of assignment being not admissible in evidence, still left the discretion in the court, to be of course exercised in accordance with law and depending on facts and circumstances of each case. Section 45(2) appears to have been inserted more for the reason of ensuring the enforcement of Section 45(1). In the absence of Section 45(2), assignees of registered trade mark would not have bothered to apply for registration with the Registrar and which would have led to disputes as to who is the registered proprietor. It is in the nature of Section 35 of the Stamp Act prohibiting the courts from admitting into evidence documents not duly stamped. However, the intent there also is not to extinguish the rights under the documents but only to ensure collection of stamp duty. This provision is unlike that of Registration Act, whereunder there can be no conveyance of title without a registered document. For the same reason, the latter part of Section 45(2), after providing for the prohibition provides "unless., the court otherwise directs." Seen in this light, the contention of the counsel for the plaintiff that there can be no hiatus and the title as registered proprietor cannot remain in abeyance is well founded. [Para 15]

I thus find that the plaintiff notwithstanding being not registered is entitled to exercise rights as a registered proprietor of trade mark THEOBID. [Para 16]