The Delhi High Court issued an order in SK Cosmetics vs. the Controller General of Patents, Designs and Trademark & Ors. The matter was represented by Advocate M.K.Miglani, Prithvi Gulati and Anubhav Chhabra for petitioner and Registry was represented by Central Government Standing Counsel Kirtiman Singh with Advocate Waize Ali Noor. The argument was heard by Justice Prathiba M. Singh and the petition was filed by S.K Cosmetics opposing various online status changes which were made by the Trademark Registry in respect to trademarks of M/S S.K Cosmetics. The case of the Petitioner was about the Forms TM-33 and 34, filed to modify the information and the address of the proprietor. When these forms were filed, the TMR, effected a change in the name of the proprietor itself, thereby resulting in the ownership of the trademark changing to Mr Naresh Kumar Nagpal instead of the original proprietor – M/s S. K. Cosmetics or Shyam Sunder Nagpal. The case of the petitioner is that the submission of forms TM-33 and 34 cannot change the ownership in this manner. The dispute caused due to ownership over the marks which have been confounded by the changes reflected on the Online Status on the website of TMR.
The challenge in this petition is very limited i.e., whether when Form – TM 33 or 34 is filed, the possession of the certified brand can be replaced or not. The disclosure is definitely in the glum. The answer is given in negative as the Form- 33 and 34 aren’t meant to change the ownership or the proprietary nature of the mark but they can only change the description or address, etc. The single bench mentioned after hearing the arguments from both the sides;
“The objections on the assignment would then have to be adjudicated by the Registrar, usually, after giving a hearing to the parties, and only then can a change in ownership be effected. Recordal of assignments or transmission of registered trademarks is a serious matter, especially if disputes are pending in respect of ownership of the marks. The owner of a registered trademark cannot, therefore, be changed in a mechanical or a perfunctory manner, simply upon the filing of any Form”.
Further, Justice Prathiba M.Singh ordered that “the present petition no longer survives. It is made clear that if any party requests form TM-P (earlier TM23 and 24) the same shall be proceeded with following law after objections if any, being heard and appropriate orders being passed by the Trademark Registry”.
- The Pending form shall be heard and disposed of not later than 31st July 2020.
- The change in ownership will not be affected and the same shall be considered only in Form TM-P.
- TM-33 under Trade Marks Rule 2002 was only for the change of name of Registered Proprietor without a change in ownership.
- M/s S.K Cosmetics had two partners- Mr.Shyam Sunder Nagpal and Mr Naresh Sundar Nagpal.
- It is the case of Naresh Sundar Nagpal, who is the Respondent-3 in this case as upon his retirement from the firm in 1997, the mark TONI had to exclusively vest in the Respondent-3.
Edited by J. Madonna Jephi
Approved & Published – Sakshi Raje
- Bar & Bench, Owner of a registered trade mark cannot be changed in a mechanical or a perfunctory manner: Delhi HC https://www.barandbench.com/news/litigation/owner-of-a-registered-trade-mark-cannot-be-changed-in-a-mechanical-or-a-perfunctory-manner-delhi-hc