Assignee may maintain infringement action notwithstanding pending recordal of assignment in the Register of Trade Marks.

The Plaintiff, a Belgian entity, claims proprietorship of the "HAMON" trade marks (registered in Classes 7 and 11) via a chain of title originating from ENGETRA S.A.

In July 2022, the Plaintiff acquired the global HAMON brand portfolio from Hamon CIE (International) S.A. ("HCI") through a Court-authorized Transfer Agreement following HCI's bankruptcy.

Defendant No. 1, formerly a subsidiary of HCI, was sold to a third party (Mr. Chorasiya) in September 2022.

The Plaintiff alleges that Defendant No. 1’s rights to use the "HAMON" mark were limited to a temporary "Brand Usage Right" to complete ongoing projects, which has since expired.

Despite this, Defendant No. 1 continued using "HAMON" in its corporate name and applied for new marks like "HAMON COOLING" on a "proposed to be used" basis.

The Court applied Section 29 of the Trade Marks Act, 1999 regarding infringement of registered marks, and Section 34 regarding the protection of prior users.

It relied on Skol Breweries Ltd. v. Som Distilleries and J.K. Jain v. Ziff-Davies Inc. to establish that a trade mark assignment is effective inter partes upon execution, and a pending recordal on the Register does not bar an infringement suit.

The principles of "permitted use" under Section 2(r) and "acquiescence" under Section 33 were considered, as was the doctrine from Power Control Appliances v. Sumeet Machines that a licensee’s use inures to the benefit of the proprietor.

The "Triple Identity" test for passing off (reputation, misrepresentation, and damage) was also central.

The Court found the Plaintiff demonstrated a clear prima facie chain of title via the Transfer Agreement and Confirmatory Deed, noting that one mark (No. 1836422) was already recorded in the Plaintiff's name.

It rejected Defendant No. 1’s challenge to the assignment's validity, noting that under Parksons Cartamundi (P) Ltd., a third party cannot impeach an assignment that the assignor itself has not challenged.

Regarding Defendant No. 1's defense, the Court observed a fatal inconsistency: the Defendant claimed "prior use" under Section 34 while simultaneously admitting its use was with the "implied or express consent" of HCI.

Such derivative use belongs to the proprietor and cannot create independent rights.

The Court further noted the Defendant’s "proposed to be used" applications were a "solemn declaration" that contradicted its claim of continuous use since 1999.

Actual confusion was evidenced by third-party emails, satisfying the requirements for passing off.

The Court held that the balance of convenience favored the Plaintiff, as Defendant No. 1 was misrepresenting its corporate lineage to secure public projects.

Any hardship to the Defendant was deemed "self-created" due to its continued use post-expiry of limited rights.

Following the order, a three-week stay on the operation of the injunction was granted at the Defendant's request.