-Report by Shweta Sabuji
In the recent case of K.T.V. OIL MILLS PRIVATE LIMITED VERSUS THE SECRETARY TO GOVERNMENT, UNION OF INDIA & ORS., an appeal filed in opposition to the judgment and decree rendered on the file of the Commercial Division of this Honourable High Court on July 3, 2018, by the learned Single Judge in A.No.1253 of 2018 in C.S.No.706 of 2017.
The appellant was established in 2008 as a company under the Companies Act of 1956. The purpose of forming this Company was to take over K.T.V. Oil Mills’ operations. The late Shri. K. T. Varadaraj Chetty launched an oil trading company in Kotwal Market in 1971. Under the name and style “K.T.V Oil Mills,” the company operated from 1999 to 2008 as a partnership firm. The partnership firm was then changed into a private limited company in 2008 under the name “K.T.V. Health Food Private Limited,” and they applied to the Trademark Registry for the registration of the trademark “ROOBINI,” claiming usage as of June 1, 1995.
On December 30, 2007, K.T.V. Oil Mills and the appellant engaged in an assignment deed, and as a result, the trademark “ROOBINI” was transferred. The K.T.V. Oil Mills partners all acquired shares in the appellant-Company. The assignment deed was completed in favor of the appellant by the partners of K.T.V. Oil Mills because they chose to operate the company under the appellant’s Company name. As a result, the appellant learned that the respondent was using the contested trademark “ROOBEN” in 2017, which is a slavish replica of the appellant’s trademark “ROOBINI” regarding a similar product.
The plaintiff responded to the request for the plaint to be rejected by filing a counter, claiming that the plaintiff’s predecessor, K.T.V. Oil Mills, conducted business from 1995 to 2007 under the name and style of “ROOBINI,” and that all necessary applications for the trademark’s registration were also made. Ultimately, the trademark “ROOBINI” was registered on 22.01.1999 under registration number 837894, claiming use from 01.06.1995. Totake its business to the next level, K.T.V. Oil Mills, a partnership firm, became a private limited company. As a result, the Partners of K.T.V. Oil Mills assigned their ownership of the entire business as well as the trademark “ROOBINI” to the appellant-Company, which then became known as “K.T.V. Health Food Private Limited.”
On December 30, 2007, an assignment deed was made. After that, the appellant filed the proper paperwork to transfer the trademark “ROOBINI” that the Partnership Firm had previously assigned to the appellant in favor of the plaintiff. As a result, the Trademark Registry registered the same on January 25, 2018. Due to the assignment deed executed on December 30, 2007, only theappellant/plaintiff is currently the owner of the trademark “ROOBINI” at the time the lawsuit was filed.
Additionally, the appellant submitted the required paperwork in 2015 to modify the registration in the appellant Company’s name. As a result, the plaintiff is the “ROOBINI” trademark’s owner. Since the plaintiff has been conducting business through its branch office on Chennai’s Thambu Chetty Street, which is squarely within this Court’s jurisdiction, the matter was brought before this Hon’ble Court.
Following a hearing with both parties, the learned Single Judge granted the request to dismiss the complaint, concluding that the telephone bills by themselves were insufficient to establish that the appellant was operating at the branch office, which is located at Thambu Chetty Street in Chennai. Furthermore, the appellant/plaintiff was not the owner of the trademark “Roobini” when it was registered. Even if it is assumed without admission that the assignment deed was executed in the plaintiff’s favor and that the trademark “Roobini” was registered in the plaintiff’s name as a result of the said assignment deed, the plaintiff is not entitled to any rights in the trademark “ROOBINI” based on the assignment deed.
The plaintiff is also not permitted to file the current lawsuit in this court without having their principal place of business within its jurisdiction, even though they maintain a branch office at Thambu Chetty Street in Chennai, which they claim is within that court’s jurisdiction because those provisions, as well as Sections 134(2) of the Trademarks Act and Section 62(2) of the Copy Act, define “carrying on business” respectively.
The plaint is therefore susceptible to being dismissed as long as neither the defendant nor the plaintiff’s primary place of business is engaged in business within the jurisdiction of this Court. As a result, the plaint was dismissed by the contested order. The appellant has chosen the current Original Side Appeal because he is unhappy with the aforementioned order.
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