Facts
The petitioner filed the connected contempt petitions alleging wilful disobedience of the Intellectual Property Appellate Board’s order dated 30 November 2018 and this Court’s consent order dated 27 February 2017 in CS(OS) 1562/2015.
Source reference: p. 2, para. 1Under the settlement between the parties, the respondents had undertaken not to use or seek registration of the marks “PRAKASHDEEP” or “PRAKASH”.
Source reference: p. 6, para. 6Although the settlement concerned Classes 6, 9 and 17, the IPAB subsequently allowed the petitioner’s rectification petition concerning Class 35 and cancelled Trademark Registration No. 1800087 for “PRAKASHDEEP” on 30 November 2018.
Source reference: p. 6, paras. 7–8Despite that order, the registration was renewed, and Respondent Nos. 1 and 2 in CONT.CAS(C) 16/2023 allegedly created third-party rights in the Class 35 registration.
Source reference: p. 6, para. 9The Registrar stated that the mark had ultimately been removed from the register on 19 December 2022.
Source reference: p. 7, paras. 12–14Counsel for Respondent Nos. 1 and 2 admitted that the transfer to a third party had been made in 2020.
Source reference: p. 7, para. 16Issues
Whether renewal of the Class 35 trademark registration after the IPAB’s cancellation order constituted disobedience of the settlement and the orders passed pursuant thereto
Source reference: p. 6, paras. 8–11Whether the creation or transfer of third-party rights in the cancelled Class 35 “PRAKASHDEEP” registration was contemptuous and legally valid
Source reference: p. 7, paras. 15–18Law Applied
The Court applied the principles governing civil contempt, namely that disobedience of a binding judicial order or an undertaking incorporated into a consent order may constitute contempt when the disobedience is deliberate or wilful.
Source reference: no citationIt further applied the legal effect of the parties’ settlement and the IPAB’s order dated 30 November 2018, under which the Class 35 registration for “PRAKASHDEEP” was cancelled and removed.
Source reference: p. 6, paras. 6–8The Court held that, after cancellation and in view of the settlement undertaking, the respondents could not lawfully maintain, renew, transfer, or create third-party rights in that registration.
Source reference: p. 7, paras. 17–18Reasoning
The Court found that the settlement prohibited the respondents from using or seeking registration of the relevant marks, and that the IPAB had cancelled the Class 35 registration on the basis of that settlement.
Source reference: p. 6, paras. 4–8Consequently, the Registrar had no occasion to renew the registration after the IPAB’s cancellation order.
Source reference: p. 6, para. 11More significantly, the admitted transfer of the registration to a third party in 2020 occurred after the cancellation order and was inconsistent with the settlement and the binding orders passed pursuant to it.
Source reference: p. 7, paras. 15–17The Court therefore characterised the transfer as contemptuous and held that any third-party right purportedly created in the mark was void.
Source reference: p. 7, paras. 17–18The subsequent removal of the mark from the register on 19 December 2022 did not negate the earlier contemptuous transfer.
Source reference: p. 7, paras. 12–14Holding
The Court held that the respondents’ renewal and subsequent transfer of the Class 35 “PRAKASHDEEP” registration were contrary to the settlement and the IPAB’s cancellation order.
The transfer in favour of the third party was declared void and contemptuous in nature.
Source reference: p. 7, paras. 17–18Respondent Nos. 1 and 2 tendered an unconditional apology, which the Court accepted.
Source reference: p. 7, paras. 19–20The contempt petitions were accordingly disposed of.
Source reference: p. 7, para. 21Original Court PDF
M/S Prakash Industries Ltd.vsThe Registrar Of Trade Mark & Ors.
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