The Madras High Court has set aside an Intellectual Property Appellate Board (IPAB) order which directed the removal of Rally mark for fans owned by Mahavir Home Appliances, from the country’s trademark registry. The IPAB, in 2012, had ordered the removal of Rally mark, in favour of Kolkata-based Rallifan Ltd, which has the ownership of ‘Rallifan’, a phonetically identical trademark.
Triggering a trademark battle, Rallifan had filed a rectification petition against Mahavir’s Rally mark, while the latter filed a similar counter rectification plea against the former’s ‘Rallifan’ mark.
Rallifan had submitted before the IPAB that the associated trademarks of Rallifan- including one called Rallies had been lapsed as they had not been renewed and that they are fighting for the only live mark Rallifan.
Contesting this, Mahavir submitted that since the mark Rallifan had been associated with two other marks, there can not be any assignment of one mark without the marks with which it was associated. However, the IPAB ordered in favour of Rallifan against which Mahavir approached the high court.
The high court, while setting aside the IPAB order has asked the trademarks tribunal to re-consider the case afresh by giving priority, as the case dates back to 2006.
The high court quashed the IPAB order pointing out the matter required to be re-examined in the context of the
new factual position that the associated trademarks of
‘Rallifan’-owned by Rallifan, were indeed renewed up to 2002 which is now found to be different from what was persuaded by the IPAB in removing the mark.
The high court bench comprising Chief Justice Sanjay Kishan Kaul and Justice Pushpa Sathyanarayana said: “Unfortunately the matter would have to be re-examined in the context of the new factual position which has emerged before us, as one of the basis of the order itself which is now found to be different from what was persuaded by the IPAB. We are thus left with no other option except to set aside the impugned order and remit the matter back to the IPAB for reconsideration.”
The IPAB while ordering removal of Rally mark had observed that the assignment was for the only mark that was alive, the registered proprietor had not renewed the other two marks and had allowed them to lapse.
“The assignment was of the only mark that was alive.
A partial assignment is frowned up to because it would run counter to the principle, one source, one mark, and would injure public interest. But in this case the other marks had been expunged, this mark alone had been renewed and kept alive. So, the objection to the effect that the assignment of associated marks can only be as a whole, and not separately, is rejected,” the IPAB had said.
The case of Rallifan before the IPAB was that they have been the registered proprietor of the mark Rallifan since 1975 in respect of electric fans.
