V. R. Holdings v. Hero InvestCorp Limited and Anr.

2. This is a fresh cancellation petition seeking cancellation of trademark registration No.2047366 in Class 10 for the trademark ‗HERO GROUP‘ registered in favour of Respondent No.1. The Petitioner is the trade mark holding entity of the Petitioner‘s group of companies which includes entities such as Hero Ecotech Limited, Hero Eco Med Private Limited, Hero Electric Vehicles Private Limited, and Hero Exports. The Petitioner relies upon the Family Settlement Agreement dated 20th May, 2010 for seeking rectification. Issue notice.

3. Mr. Luthra accepts notice on behalf of the Respondent No.1. Let a reply along with any documents relied upon, be filed within four weeks. Rejoinder be filed within four weeks thereafter.

4. Both parties agree that the matter can be decided on the basis of the pleadings and documents which will be filed by the parties.

5. Let a fresh paper book be served upon the ld. Counsel for the Respondent No.1 by the ld. Counsel for the Petitioner within three days.

6. On behalf Respondent No.2, let a copy of the paper book be served upon Mr. Harish V. Shankar, ld. CGSC.

7. List for hearing on 18th July, 2022.‖ (Emphasis supplied) It was agreed between the parties, therefore, that the present petition could be decided on the basis of pleadings and documents filed by the parties. Impliedly, therefore, the parties did not seek to subject the present proceedings to the rigour of recording of evidence, examination, cross examination, etc. 7.[3] By subsequent order dated 4th August 2022, this Court noted that pleadings stood complete in the present petition, which was to be finally heard. The order read thus: ―1. This hearing has been done through hybrid mode.

2. The present petition has been received on transfer.

3. Pleadings are complete in the cancellation petition. The matter is to be finally heard.

4. List for final hearing on 13th October, 2022.‖ 7.[4] Subsequently, this case was argued in detail, by Mr. Akhil Sibal, learned Senior Counsel for the petitioner and by Mr. Rajiv Nayar, learned Senior Counsel for Respondent 1. 7.[5] During the course of proceedings, certain additional documents were sought to be brought on record, by the petitioner vide I.A. 20294/2022. Though Mr. Rajiv Nayar objected to the said documents being taken on record and submitted that, if the court was inclined to allow the said documents to be filed at that stage, the respondent would have the right to lead evidence to controvert the said documents, I am of the opinion that the submission cannot be accepted. The order dated 18th April 2022 clearly recorded the agreement, of both sides, that the matter could be decided on the basis of the pleadings and the documents which will be filed by the parties. The right of the parties to file documents was, therefore, reserved by the order dated 18th April 2022, with consent of both sides. It is not open, therefore, to Mr. Nayar to object to the filing of additional documents by the petitioner under I.A. 20294/2022. 7.[6] In view of the order dated 18th April 2022, this Court allows the said application. The documents filed with the application are taken on record. 7.[7] The respondent also filed I.A. 20341/2022 during the course of present proceedings, praying that the petition be summarily dismissed in view of certain admissions allegedly made by the petitioner in its pleadings. Inasmuch as the court is finally deciding the present petition after hearing both sides, this application has been rendered infructuous and is disposed of as such. Rival Contentions

8. Contentions of Mr. Akhil Sibal, learned Senior Counsel for the petitioner 8.[1] Mr. Akhil Sibal points out that Section 18 of the Trade Marks Act specifically allows the proprietor of a trademark to apply for its registration. None other than a proprietor can, therefore, seek registration of a trademark. Mr. Sibal‘s contention is that the F-3 Group, represented by Respondent 1, was not entitled, under the FSA and TMNA, to regard itself as the lawful proprietor of the HERO GROUP trademark in respect of medical equipment. The F-3 group could not, therefore, seek registration of the mark HERO GROUP in its favour for medical equipment. The impugned registration is, therefore, according to Mr. Sibal, violative of Section 18 of the Trade Marks Act. 8.[2] This position is sought to be explained from the various Clauses of the TMNA thus:

(i) Clause 2 of the TMNA specifies the manner in which the various trademarks would be owned and used by the four Family Groups. According to the said Clause,

(i) the F-1 Family Group (represented by the petitioner) would have exclusive right of ownership and use over the F-1 Family Group Trade Marks, and

(ii) the F-3 Family Group would have exclusive right of ownership and use over

(ii) Clause 2(v) further stipulated that, notwithstanding anything to the contrary contained in the TMNA, the F-3 Family Group would have exclusive right of ownership and use of the HERO GROUP trade mark in relation to all Other Products and Services and Future Products and Services. (iii) ―Other Products and Services Trademarks‖ was defined in Clause 1.1.[9] of the TMNA as the trademark HERO with or without suffixes, in relation to or in connection with, ―Other Products and Services‖. (iv) ―Other Products and Services‖, as defined in Clause 1.1.[8] of the TMNA meant all goods and services currently manufactured or provided and excluded, inter alia¸ the F-1 Family Group Products and Services. (v) ―F-1 Family Group Products and Services‖, as defined in Clause 1.1.[6] included, in sub-clause (e), medical products. As such, medical products stood expressly excluded from the ambit of ―Other Products and Services‖ under Clause 1.1.[8] of the TMNA. (vi) ―Future Products and Services Trade Marks‖ was defined, in Clause 1.1.11 of the TMNA as the trademark ―HERO‖, with or without suffixes, used in relation to or in connection with Future Products and Services. (vii) ―Future Products and Services‖ were defined in Clause 1.1.10 as all goods or services not currently manufactured or provided.

(viii) The right of the F-3 Group to use HERO GROUP in respect of medical products would, therefore, depend on whether medical products could be treated as ―currently manufactured and provided‖, i.e. manufactured and/or provided on the date of execution of the FSA and TMNA. If they were, they would stand excluded from the ambit of the expression ―Future Products and Services‖ as defined in Clause 1.1.10; else, they would be included within the said expression.

(ix) Medical products had to be regarded as ―currently manufactured‖ for the following reasons: (a) Medical Products were contractually deemed to be currently manufactured or provided. This was sought to be explained thus:

(i) Clause 1.1.[8] defined ―Other Products and

Services‖ to mean all types of goods and services currently manufactured or produced and excepted, from its ambit, F-1 Family Group Products and Services. This itself indicated that F-1 Family Group Products and Services were, but for the exception, currently manufactured or provided. Else, there was no need for the exception.

(ii) Clause 1.1.6, which defined ―F-1 Family

(iii) Read in juxtaposition, therefore, Clause

1.1.[8] and 1.1.6(e) together, therefore, deemed medical products to be ―currently manufactured‖ on the date of execution of the FSA/TMNA.

(iv) As there was a contractual presumption that medial goods were ―currently manufactured and produced‖ on the date of execution of the FSA/TMNA, it was not open to the respondent to urge otherwise. (b) The invoices placed on record with I.A. 20294/2022 also indicated that medical products were ―currently manufactured‖ on the date of execution of the FSA/TMNA.

(c) The following recitals, in Business Realignment

Agreement (BRA) dated 31st January 2011, executed between the F-1 and F-4 groups, confirmed that the New Cycles Division of Hero Cycles Ltd (HCL), which was realigned in favour of the F-1 group under the FSA (as per Schedule 7 in part D of the FSA, which enlisted the undertakings which were to be realigned in favour of the F-1 Group), was manufacturing medical products: ―1. HCL is a closely held public limited company, primarily engaged in the business of manufacturing, marketing, distribution and sales of bicycles and bicycle components, auto components, hospital equipments, assembly of electric vehicles by way of job work and is also engaged in the business of production and sale of cold rolled steel.

2. The aforementioned business of manufacturing and sale of bicycles, bicycle components apart from being carried out in other division/units/facilities is also being carried out by HCL in a separate independent division namely ―New Cycle Division‖ along with manufacturing of hospital equipments and assembly of electric vehicles by way of job work with manufacturing facility at Focal point, Phase-VIII, Chandigarh Road, Ludhiana, operation of which are independently managed by Vijay Munjal ji. *****

5. HCL agrees to effectuate the realignment of ownership of the New Cycle Division/undertaking as a going concern, pursuant to the FSA, together with the Business, Assets and Liabilities (both existing and contingent) thereof as more particularly described hereinafter, on the terms, conditions and provisions set forth therein;‖

(x) As the definition of ―Future Products and Services‖, in

Clause 1.1.10, covered only goods and services which were not currently manufactured and produced, medical products did not fall within the ambit of the definition.

(xi) Mr. Sibal advances the following further submissions to justify his contention that medical products could not be brought within Clause 1.1.10 or, therefore, Clause 1.1.11 of the TMNA: (a) Including medical products within the ambit of ―Future Products and Services‖ as defined in Clause 1.1.10 would result in conflict between the manner in which Clause 1.1.10, on the one hand and Clauses 1.1.6(e) and 1.1.8, on the other, apply. Where, read with Clause 1.1.6(e), Clause 1.1.[8] expressly excluded, from the ambit of ―Other Products and Services‖, medical products, it would run contrary to the intent of the contract to include medical products within the entitlement of the F-3 Group by regarding them as ―Future Products and Services‖ in Clause 1.1.10. In other words, the contention is that where the right of the F-3 Group to use ―HERO‖, with or without suffixes, for medical products, stood expressly excluded by Clause 1.1.8, that right could not be conferred by Clause 1.1.10. It would amount, in other words, to giving by one hand what the other hand was taking away. (b) Including medical products within ―Future Products and Services‖ in Clause 1.1.10 would also result in conflict between Clause 1.1.10 and Clause 1.1.7(c). Clause 1.1.7(c) granted exclusive right of use and ownership, to the F-1 Group, of the HERO ECO mark for medical goods. If medical goods were to be treated as ―Future Products and Services‖ under Clause 1.1.10, that would mean that the F-3 Group could use HERO or other suffixes for medical goods. In other words, the F-3 Group would then have the right to use even HERO ECO for medical goods. That would infract the exclusive right to use HERO ECO for medical goods, granted to the F-1 Group by Clause 1.1.7(c).

(xii) Resultantly, medical products did not fall within the ambit either of the expression ―Other Products and Services‖ or of the expression ―Future Products and Services‖. Neither Clause 2(iii), nor Clause 2(v) of the TMNA could, therefore, entitle the F-3 group to use the HERO GROUP mark for medical products.

(xiii) Mr. Sibal further submits that without prejudice to his contention that, in view of Clause 1.1.[8] read with Clause 1.1.6(e), there was a contractual presumption that medical goods were ―currently manufactured‖ on the date of the FSA/TMNA, against which the F-3 Group, being bound by the FSA/TMNA could not seem to contend, even if it were to be assumed, arguendo, that, in fact, medical goods were not manufactured prior to or on the date of the FSA/TMNA, the remedy with the respondent F-3 Group would be to apply for rectification of the contract under Section 26 of the Specific Relief Act, 1963. That, however, was never done. 8.[3] Mr. Sibal submits that, comparing the interpretations accorded to the Clauses of the FSA and TMNA by the petitioner F-1 Group and the respondent F-3 Group, it became clear that the petitioner‘s interpretation was more in accordance with the contractual intent. It was clear that the FSA and TMNA intended to compartmentalise ownership and usage, by the various groups, of the various Trade Marks as well as the goods and services in respect of which they could be owned or used. Overlap of Trade Marks in respect of the same goods within one territory was, therefore, contrary to the contractual intent. Any interpretation which would result in one Family Group becoming entitled to use the HERO formative Trademarks for the same goods within the same territory was, therefore, required to be eschewed. The FSA and TMNA, therefore, conferred exclusivity on

(i) the F-4 Group in respect of bicycle/automotive

(ii) the F-1 Group in respect of the F-1 Family Group Trade

(iii) the F-3 Family Group in respect of Other Products and

Services Trade Marks, and Future Products and Services Trademarks, being the trademarks relating to the residual goods and services after excluding the goods and services which fell to the lot of the F-1 and F-4 Family Groups. For this purpose, Mr. Sibal has placed reliance on:

(i) para 64 of the report in Ramdev Food Products

(ii) para 16 of the report in Bangalore Electricity

(iii) page 912 of the report in Investors Compensation

(iv) page 296 of the report in Jumbo King Ltd v

(v) para 176 of the report in Phoenix Commercial

(i) paras 10 and 18-19 of Riverdale School Society v.

(ii) paras 22, 25 and 28 of Donaldson Filtration

(iii) B.S. Ramappa v. B. Monappa10,

Mr. Sibal contends that the Trade Mark Register is liable to be rectified by deleting, therefrom, the registration of the impugned HERO GROUP mark in favour of the Respondent F-3 Group in Class 10 in respect of medical equipment.

9. Contentions of Mr. Rajiv Nayar, learned Senior Counsel for Respondent 1 9.[1] Mr. Rajiv Nayar, submits, at the very outset, that the petitioner has no locus standi to maintain the present petition, as it is not a ―person aggrieved‖ within the meaning of Section 57 of the Trade Marks Act. The petitioner, he points out, is not a party to the TMNA. He invokes, for the said purpose, Section 69(2)11 of the Indian Partnership Act, 1932. 9.[2] Mr. Nayar further submits that the petition is bad for nonimpleadment of necessary parties. Inasmuch as the rights canvassed by the petitioner are predicated on the FSA and TMNA, Mr. Nayar submits that all parties to the FSA and TMNA were required to be impleaded in the petition. As this has not been done, Mr. Nayar submits that the petition is liable to be dismissed even on that ground. 9.[3] Mr. Nayar further submits that Clause 12.[1] of the FSA, by providing that there would be no non-compete restrictions among the businesses of the four family groups, clearly entitled all family groups to compete with each other for any business. He submits that the F-1 Family Group had received ₹ 850 crores from the F-3 Family Group for limiting its rights under the FSA and TMNA, which fact the petition conceals. Having received the said payment, Mr. Nayar submits that the F-1 group could not even maintain a petition challenging the registration of the HERO GROUP mark in favour of the F-3 group.

69. Effect of non-registration. – ***** (2) No suits to enforce a right arising from a contract shall be instituted in any Court by or on behalf of a firm against any third party unless the firm is registered and the persons suing are or have been shown in the Register of Firms as partners in the firm. 9.[4] The right of the F-1 Family Group under the TMNA, submits Mr. Nayar, is restricted to Clause 1.1.7. Under the said clause, the F-1 Family Group was entitled only to use four specific marks, in respect of specified goods. The four marks which the F-1 Family Group could use were HERO EXPORTS, HERO ELECTRIC, HERO ECO and HERO. In each case, the right of ownership and usage applied to the marks as such. In other words, the rights of F-1 Family Group did not expand to the use of the said marks with any prefixes or suffixes. This, he submits, is in stark contradistinction to the right of usage conferred on the F-3 Family Group by other clauses of the TMNA, which extended to the use of the mark ―HERO‖ with or without suffixes or prefixes. 9.[5] Insofar as medical products and equipments are concerned, the right of the F-1 Family Group was restricted to Clause 1.1.7(c), which was limited to the HERO ECO mark. The petitioner did not, therefore, enjoy any right of ownership or usage for the HERO GROUP mark, as the HERO GROUP mark was not one of the four marks which devolved on the petitioner under Clause 1.1.[7] of the TMNA. 9.[6] The petitioner could not, therefore, claimed to be ―aggrieved‖ by the impugned registration of the HERO GROUP mark in favour of the F-3 Group in respect of medical products. Not being, thus, a ―person aggrieved‖, Mr. Nayar submits that the present petition was not maintainable at the instance of the petitioner under Section 57 of the Trade Marks Act. 9.[7] Even the right to use the mark ―HERO‖, per se, without any suffixes or prefixes, was vested in the F-1 Family Group, by Clause 1.1.[7] (d), only for export of bicycles and bicycles parts to certain select countries. Though ―medical products & lifestyle care equipment for hospitals, rehabilitation and homes‖ was included within the definition of ―F-1 Family Group products and services‖ in Clause 1.1.[6] (e) of the TMNA, the right conferred on the F-1 Group, by Clause 2(ii), was in respect of the ―F-1 Family Group Trade Mark‖, and the definition of ―F-1 Family Group Trade Mark‖, in Clause 1.1.7, did not make reference to the definition of ―F-1 Family Group products and services‖ in Clause 1.1.6. 9.[8] As such, the inclusion of medical products in ―F-1 Family Group products and services‖ by clause 1.1.[6] (e) did not affect, positively or negatively, the scope and ambit of the expression ―F-1 Family Group Trade Marks‖ as defined in Clause 1.1.7. Insofar as medical products were concerned, the ambit of ―F-1 Family Group Trade Marks‖ in Clause 1.1.[7] extended only to the use of the HERO ECO mark. In this context, Mr. Nayar also placed reliance on Clause 1.2(a) of the TMNA, which provided that headings and bold typefaces, as used in the TMNA, were to be ignored while interpreting its provisions. 9.[9] Even otherwise, Mr. Nayar submits that the petitioner V.R. Holdings is not a party either to the FSA or the TMNA. It cannot, therefore, claim to be a ―person aggrieved‖, under Section 57 of the Trade Marks Act. The petitioner VR Holdings enjoys no proprietorial rights over the ―HERO GROUP‖ mark, either under the FSA or the TMNA.

9.10 The invoices which the petitioner had placed on record, too, points out Mr. Nayar, indicate use of the mark ―HERO ECO‖ by Hero EcoTech Ltd. and not by V.R. Holdings. The petitioner V.R. Holdings, even as per the recitals in the petition, he points out, is stated to be engaged in the business of automotive components. As such, it is not even manufacturing or dealing in medical products.

9.11 Mr. Nayar contests the claim of the petitioner that it was the ―Trade Mark holding entity‖ for the purposes of the FSA and TMNA. He points out that, against column (ix) in the rectification petition filed by the petitioner, the entry which required the Trade Mark holding entity to be defined, the form was left blank.

9.12 Mr. Nayar further submits that the present petition suffers from serious delay and laches. He points out that Respondent 1 applied for registration of the HERO GROUP mark in its favour on 1st November 2010, and the mark was registered in favour of Respondent 1 on 30th August 2016. Relying on the judgment of the Supreme Court in Khoday Distilleries Ltd. v. Scotch Whisky Association12, Mr. Nayar submits that a rectification petition which is so belated cannot be entertained on merits.

9.13 Mr. Nayar further relies on certain collateral documents which, according to him, evince recognition, by the petitioner, of the right of Respondent 1 to use of the mark HERO GROUP in respect of medical equipment. He refers to e-mail dated 4th June 2013 from Ashok Goyal of HERO ECO to Amit Aggarwal of Respondent 1, in which it was specifically stated that all references to ―HERO GROUP‖ had been removed from the websites of the F-1 Group. He further referred to power of attorney dated 13th June 2013 by Vijay Kumar Munjal, which recognises the right of the F-3 Group, under the FSA and TMNA, to obtain registration of any HERO mark, with prefix or suffix, except the four marks specifically allocated to the F-1 Group under Clause 1.1.7, i.e., HERO EXPORTS, HERO ELECTRIC, HERO ECO and HERO.

9.14 Insofar as the rights of the F-3 Group to use of the mark HERO GROUP in respect of medical equipment was concerned, Mr. Nayar submits that the rights of the F-3 Group flow both from Clauses 1.1.[8] and 1.1.[9] (which dealt with other products and services) and Clauses 1.1.10 and 1.1.11 (which dealt with future products and services), read with Clause 2 (v) of the TMNA.

9.15 He explains this position thus:

(i) Clause 2 (v) granted exclusive right and ownership, to the

(ii) The expression ―future products and services‖ was defined in Clause 1.1.10. It included all goods and services not currently manufactured or rendered by the parties, their affiliates, group companies, joint venture companies and subsidiary companies.

(iii) Medical products and equipments were not currently manufactured or produced or any member of the HERO GROUP of companies on the date of execution of the TMNA. For this purpose, Mr. Nayar points out that (a) in para 7 of the present petition, the petitioner has admitted use, by the petitioner, of the mark HERO ECO for medical products and equipments since November 2011, (b) the application dated 1st November 2020, submitted by the petitioner for registration of the HERO ECO mark also claimed use since 29th November 2011 and

(c) the affidavit of use filed by the petitioner accompanying the said application also claimed user of the HERO ECO mark, for medical equipments and products only since November 2011.

9.16 As such, Mr. Nayar submits that there was no manufacture or production of medical products or equipments by any of the HERO GROUP of companies prior to 29th November 2011 and, in any case, medical products and equipments could not be stated to be among the goods which were ―currently manufactured‖ on the date of execution of the TMNA. In that view of the matter, Mr. Nayar submits that the F-1 Group was entitled, by virtue of Clause 1.1.10 read with Clause 2(v), to use the HERO GROUP mark for medical products.

9.17 Mr. Nayar also claims that his right to use the HERO GROUP mark for medical products and services cannot be said to fall within the exclusionary part of Clause 1.1.[8] of the TMNA. For this purpose, he has relied on Clause 2(ix) of the TMNA, to contend that the omnibus right to use the mark ―HERO‖ with or without suffixes, for all categories of goods, vests in the F-3 Family Group, except for the specific carves out in favour of the F-1 Family Group and the F-4 Family Group by Clause 1.1.[7] and 2(i)13 of the TMNA.

9.18 Insofar as medical products and equipments is concerned, he submits that the only specific carve out is in favour of the F-1 Group, for use of the mark HERO ECO. As such, the exclusionary part of Clause 1.1.8, in Mr. Nayar‘s submission, has to be restricted to use of the mark HERO ECO in respect of medical goods and products. It cannot be extended to cover areas where no right has been conferred for use of the mark on any other family group.

9.19 As such, Mr. Nayar submits that the petitioner‘s right cannot be curtailed by reference to the exclusionary part of Clause 1.1.[8] of the TMNA.

9.20 Mr. Nayar further submits that the rectification of the register or removal of a mark therefrom under Section 57 of the Trade Mark cannot be sought on the basis of a private contract. It is only where the registration of the mark is prohibited by some provision in the Trade Marks Act that rectification of the register and removal of the mark can be sought. He points out that Section 57(2) permits rectification, by removal of a mark from the register, either where the entry is made without sufficient cause, or is wrongly remaining on the register. An entry is made without sufficient cause when the entry is contrary to the statutory provisions on the day it is made, whereas and entry wrongly remains on the register when, owing the circumstances which were not existing on the day when the entry was made, its continuance

(i) F[4] Family Group shall have the exclusive right of ownership and use over Bicycle/Automotive on the register has become illegal. In either case, the registration of the mark has to be shown to be contrary to Section 9, 11 or 12. Section 57(2), submits Mr. Nayar, cannot be used to determine serious and disputed contractual issues. What the petitioner seeks, according to him, is a declaration that the petitioner is entitled to own and use the HERO mark for goods in Class 10 under the TMNA. Such a declaration could only be given by a Civil Court under the Specific Relief Act, and not by the Court, or any other forum, examining an application for rectification under Section 57.

9.21 For this purpose, Mr. Nayar also relies on Section 45(3)14 of the Trade Marks Act which, too, according to him, provides that where the validity of an assignment is in dispute, a Civil Court would first have to adjudicate thereon. Mutatis mutandis, he would submit, where the rival rights of the petitioner and Respondent 1 under the TMNA are in dispute, a Civil Court has first to adjudicate thereon. He also submits that, for an adjudication on the rival rights to the use and ownership of the HERO mark, the petitioner has already instituted an arbitration, which is in seisin before a learned three Member arbitral tribunal. To support these submissions, Mr. Nayar relies on Janinder Jain v Registrar of Trade Marks15 and The Financial Times Ltd v. The Times Publishing House Ltd16. He has also cited some foreign decisions, to which I do not deem it appropriate to refer, as the Court has not been informed of the statutory regime in place in the jurisdictions where the said decisions were rendered, so that their Trademarks;

45. Registration of assignments and transmissions.— ***** (3) Where the validity of an assignment or transmission is in dispute between the parties, the been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.

9.22 The entire case of the petitioner being predicated on the private contractual relationship constituting the FSA and TMNA, Mr. Nayar submits that the petition has no legs to stand on. He submits that the petitioner could not seek adjudication of private contractual rights under Section 57 of the Trade Marks Act by invoking, for the purpose, Section 18. He further submits that Respondent 1 did not claim proprietorial rights to use the HERO GROUP mark for medicinal products under the TMNA, and there was no material to otherwise discountenance the claim of Respondent 1, within the four corners of the Trade Marks Act.

9.23 In fine, Mr. Nayar has reiterated the contention that the petitioner, not being the proprietor of the HERO GROUP mark even under Section 18, has no locus standi to maintain the present petition. Per contra, he submits, Respondent 1 is the registered proprietor of the HERO GROUP mark in 39 classes. There was, therefore, in his submission, no irregularity in the application, filed by Respondent 1 for registration of the HERO GROUP mark under Class 10 for medical products proceeding to registration.

10. Submissions of Mr. Sibal in rejoinder 10.[1] Apropos Mr. Nayar‘s objections to the maintainability of the present petition, Mr. Sibal responds thus:

(i) Any ―person aggrieved‖ could file a rectification petition under Section 57 of the Trade Marks Act.

(ii) The expression ―person aggrieved‖ in Section 57 had to be interpreted liberally, as the aim of Section 57 was to preserve the purity of the Trade Marks register and prevent public mischief which would result if a wrong mark were allowed to remain therein. He relies, for the purpose, on paras 28 to 33 of Infosys Technologies Ltd v. Jupiter Infosys Ltd17 and paras 28 to 34 of Hardie Trading Ltd v. Addisons Paint & Chemicals Ltd18.

(iii) Besides, the petitioner was a registered partnership firm of Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal, who were members of the F-1 group. Hence, they were ―aggrieved‖ by any prejudice caused to the rights of the F-1 group. Mr. Sibal submits, relying on para 3 of N Khadervali Saheb v. N Gudu Sahib19, that a partnership firm is not an independent entity, but is only a compendious name by which to designate the partners for the sake of convenience. Registration, too, does not convert the firm into a separate legal entity, as held in para 11 of V. Subramanium v. Rajesh Raghuvandra Rao20.

(iv) Besides, Respondent 1 admitted that the F-1 group could use the HERO ECO mark for medical products. Hero Ecotech Ltd, which was an F-1 group Company, had assigned the right to use the HERO ECO mark, along with its goodwill, to the petitioner. The petitioner had, thereafter, applied for registration of the HERO ECO mark in its name for medical products. In its capacity as such applicant, too, the petitioner had the locus standi to maintain the present petition.

(v) Were the petitioner to secure registration of the HERO

ECO mark for medical products, it could sue Respondent 1 for using a deceptively similar mark HERO GROUP for identical goods. In such a situation, the impugned HERO GROUP registration held by Respondent 1 would afford a complete defence against the suit, in view of Section 28(3)21 of the Trade Marks Act.

(vi) The Power of Attorney dated 13th June 2013, executed between the F-1 and F-3 groups and relied upon by Respondent 1 was executed by Vijay Munjal as a partner of the petitioner V.R. Holdings.

(vii) The F-1 group, through Sunil Kant Munjal, also executed

Special Power of Attorney dated 14th June 2013, in favour of the petitioner, as a part/trade mark holding entity of the F-1 group.

28. Rights conferred by registration.— ***** (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 10.[2] Mr. Sibal further characterised Mr. Nayar‘s reliance on the application filed by the petitioner for registration of the HERO ECO mark for medical products claiming user since 2011 to contend that medical products could not be treated as ―currently manufactured‖ on 20th May 2010, when the TMNA was executed, as misguided. The issue in controversy, submits Mr. Sibal, is not the date of commencement of use of the mark HERO ECO for medical goods, but the date of commencement of manufacture of medical goods itself. 10.[3] Mr. Nayar‘s plea that the petitioner had acquiesced to the entitlement of the F-3 group to own and use the HERO GROUP mark for medical products, submits Mr. Sibal, is unacceptable, being contrary to the covenants of the FSA and TMNA. He cites, for the purpose, Clauses 22.[5] and 22.6(b) of the FSA (reproduced earlier). 10.[4] The e-mails exchanged between the parties, submits Mr. Sibal, do not amount to waiver/amendment in writing of Clause 2(v) of the TMNA. Similarly, the removal, by the F-1 group, of the mark HERO GROUP from its website did not result, ipso facto, in the creation of a right, in favour of the F-3 group, to do so. 10.[5] The Special Power of Attorney executed by the F-1 group in favour of F-3 group, submits Mr. Sibal, does not extend the rights of the F-3 group beyond those conferred by Clauses 2(iii) and (v) of the TMNA. The SPA was merely intended to facilitate international registrations. 10.[6] Besides, submits Mr. Sibal, post-contractual correspondence between the parties could aid interpretation of the contract only where the terms of the contract were ambiguous, and not otherwise. Reliance has been placed, in this context, on para 16 of The Godhra Electricity Co. Ltd v. State of Gujarat22. 10.[7] Apropos Mr. Nayar‘s contention that the petition was belated, Mr. Sibal submits that the law does not stipulate any limitation for filing of a rectification petition. Khoday Distilleries12 allowed delay to be borne in mind as a consideration while examining a rectification petition only where it led ―to acquiescence or waiver or abandonment‖. No such delay could be attributed to the petitioner in the present case, as the impugned registration of the HERO GROUP mark in favour of Respondent 1 came to the notice of the petitioner in September 2020, and the rectification petition was filed in December

2020. As the F-3 group was not engaged in any business in medical products, the petitioner claims not to have noticed the advertising of the application of the F-3 for registration of the impugned mark. 10.[8] Acquiescence, submits Mr. Sibal, requires a positive act, and not merely silence. He cites, for the proposition, para 26 of Power Control Appliances v. Sumeet Machines Pvt Ltd23. The plea of waiver was also contrary to Clause 22.[5] of the FSA (reproduced earlier). 10.[9] Mr. Sibal further submits that the circumstances in which rectification of the Trade Marks register by removal of a mark therefrom can be sought under Section 57(2) are not restricted to those adumbrated in Sections 9 and 11 of the Trade Marks Act. Section 57(3), in fact, empowers the Court to decide any question that may be necessary or expedient in connection with rectification of the register. The fact that Respondent 1 was not the proprietor of the HERO GROUP mark, therefore, he submits, was an issue which this Court could decide, while deciding the prayer of the petitioner for rectification.

10.10 Apropos Mr. Nayar‘s contention that the petitioner ought to be relegated to the civil court to adjudicate on the issue of ownership and entitlement to the HERO GROUP mark, Mr. Sibal relies on paras 29, 31 and 32 of Patel Field Marshal Agencies v. P.M. Diesels24 to contend that the civil court is, in fact, bound by the decision in the rectification proceeding. Section 45(3), on which Mr. Nayar relies, deals, as Mr. Sibal points out, with validity of assignment or transmission, and not with validity of a registration. Mr. Sibal further submitted that, in view of para 77 of the judgement of the Supreme Court in Vidya Drolia v. Durga Trading Corpn25, the present dispute is not arbitrable.

11. From the facts and the rival submissions recorded hereinabove, the following primary issues arise for consideration:

(i) Whether the present rectification petition is maintainable at the instance of the petitioner V. R. Holdings?

(ii) Whether the application submitted by Respondent 1 for registration of the Hero Group mark in respect of medical products was violative of Section 18(1) of the Trade Marks Act?

(iii) Whether the F 3 Group was entitled to registration of the

(iv) Whether the F[1] Family Group was entitled to registration of the Hero Group mark in respect of medical products?

(v) Whether the rectification petition is liable to be dismissed on the ground of delay and latches?

(vi) Whether the rectification petition was liable to be dismissed on the ground that rectification was sought on the basis of a private contract and involved adjudication of competing contractual rights which could only be decided by a Civil Court?

12. I proceed to address them, although not seriatim.

13. Locus standi of petitioner 13.[1] Mr. Nayar questions the locus standi of the petitioner V.R. Holdings to maintain the present petition, on the following grounds:

(i) The petitioner was not a party either to the FSA or the

TMNA. It was acknowledged, in the petition, that the petitioner was engaged in the business of automotive components. No document, indicating any involvement of the petitioner in the business of medical products, was forthcoming.

(ii) The contention, of the petitioner, that it was the ―trade mark holding entity‖ of the entire Hero group of companies was not borne out by the documents. The contention was also belied by the fact that column (ix) in the format preceding the present petition was left blank.

(iii) The TMNA did not confer any proprietorial right, on the petitioner, of the HERO GROUP mark, either for ownership or for use. Clause 1.1.[7] entitled the F-1 group – which the petitioner claimed to represent – only to use of the HERO ECO mark for medical products. Even the right to use the mark HERO, conferred on the F-1 group by the said clause, was for use of the mark per se, without prefixes or suffixes. Moreover, the HERO mark, without prefixes or suffixes, too, was made available to the F-1 group only for export of bicycles and bicycle parts to selected countries. The proprietorial dispensation of the marks, in favour of the F-1 group, was entirely governed by Clause 1.1.7, and was unaffected by the inclusion of medical products in Clause 1.1.6(e). The petitioner could not, therefore, claim to be ―person aggrieved‖ by the registration of the ―HERO GROUP‖ mark, for medical products, in favour of Respondent 1. 13.[2] Mr. Sibal submits, per contra, that the petitioner is a ―person aggrieved‖ within the meaning of Section 57 of the Trade Marks Act. He advocates a liberal construction of the expression. On facts, the contention is predicated on the fact that

(i) the partners of the petitioner firm are all members of the

(ii) the petitioner was an assignee of Hero Ecotech Ltd for use of the HERO ECO mark for medical products, in which capacity the petitioner had applied for registration of the HERO ECO mark for medical products,

(iii) were the petitioner to secure the said registration, it would have the right to sue Respondent 1 for using a deceptively similar HERO GROUP mark for medical products,

(iv) in such action, the petitioner would also be entitled to question the validity of the registration of the HERO GROUP mark for medical products in favour of Respondent 1, and

(v) Vijay Munjal, in his capacity as partner of the petitioner, had executed SPA dated 13th June 2013, on behalf of the F-1 group, with the F-3 group. 13.[3] The present petition, in my opinion, cannot be thrown out on the ground of want of locus standi of the petitioner to maintain it. The challenge is, in fact, in my opinion, not so substantial as would justify any detailed judicial analysis. 13.[4] The partnership deed dated 1st May 2010, whereby the petitioner was created as a partnership, identifies Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal as the partners. That Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal are four of the nineteen members of the F-1 group is also apparent from Schedule I to the FSA. As a Family Settlement Agreement, which divided the assets of the members of the HERO GROUP and the Munjal Family, and also divided the properties and the rights to use the various trademarks, every members of the Munjal Family would, to one extent or the other, have an interest in ensuring that the covenants of the FSA and the TMNA were adhered to, and that no person or group was permitted to arrogate, to itself, any right in excess of that which was conferred by the FSA and the TMNA. Vijay Munjal, Rekha Munjal, Naveen Munjal and Gaurav Munjal could have individually maintained the present suit against the respondents, as members of the F-1 group. They chose to do so, not in their individual names, but in their name of their partnership firm in which they alone, and no one else, were a partner. 13.[5] The issue in controversy involves ensuring that the terms of the FSA and the TMNA are honoured. The Supreme Court has, in Hari Shankar Singhania v. Gaur Hari Singhania26, underscored the importance of family settlement and held that family settlements are sacrosanct and are required to be strictly complied with. To reiterate, every member of the family would have an interest in ensuring such compliance. 13.[6] Additionally, the dispute involves the question of the entity would be entitled to use HERO group marks in respect of medical products. As such, the court has to examine the devolution of the intellectual property rights in respect of HERO Group mark for medical products, as ordained by the FSA and the TMNA. 13.[7] It is eminently in public interest to ensure that Intellectual Property Rights are not infringed and that no person, who is not legally entitled to be the proprietor of intellectual property, holds himself out as such. Mr. Sibal is correct in his submission that the purity of the register of Trade Marks hangs in the balance. 13.[8] Indeed, the issue appears to be covered by the judgment of the Supreme Court in Infosys Technologies Ltd17, on which Mr. Sibal placed reliance. Section 57(1) uses the expression ―person aggrieved‖. Sections 56(1) and (2) of the Trade Marks, Act 1958 (―the 1958 Act‖), were the pari materia parallel provisions to Section 57(1) and (2) of the present Trade Marks Act. In the context of the 1958 Act, the Supreme Court, in para 28 to 33 of the report, held thus: ―28. The position that emerges from the above provisions is this. Whether the application is under Section 46 or under Section 56 or a composite application under both sections, it is a prerequisite that the applicant must be a person aggrieved. Section 46(1) of the 1958 Act enables any person aggrieved to apply for removal of registered trade mark from the register on the ground of non-use as stated in clause (a) and/or clause (b). To be an aggrieved person under Section 46, he must be one whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi.

29. In Kerly's Law of Trade Marks and Trade Names (11th Edn.) at p. 166, the legal position with regard to ―person aggrieved‖ has been summarised thus: The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed—where it is a question of removal—from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. We accept the above statement of law.

30. Insofar as Section 56 is concerned, it provides for varying situations in which the person aggrieved may apply for rectification of the registered trade mark from the register. Although both sections, namely, Sections 46 and 56 require the ―person aggrieved‖ to apply for removal of the registered trade mark from the register or rectification of a trade mark in the register, the expression ―person aggrieved‖ for the purposes of these two sections has different connotations.

31. The interpretation of the expression ―person aggrieved‖ occurring in Sections 46 and 56 has come up for consideration before this Court on more than one occasion. In Hardie Trading Ltd18 this Court stated as follows: (SCC pp. 105-06, paras 30-34) ―30. The phrase ‗person aggrieved‘ is a common enough statutory precondition for a valid complaint or appeal. The phrase has been variously construed depending on the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with the removal of a registered trade mark from the register on the ground of non-use. This section presupposes that the registration which was validly made is liable to be taken off by subsequent non-user. Section 56 on the other hand deals with situations where the initial registration should not have been or was incorrectly made. The situations covered by this section include: (a) the contravention or failure to observe a condition for registration; (b) the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions are commenced for the ‗purity of the register‘ which it is in public interest to maintain. Applications under Sections 46 and 56 may be made to the Registrar who is competent to grant the relief. ‗Persons aggrieved‘ may also apply for cancellation or varying an entry in the register relating to a certification trade mark to the Central Government in certain circumstances. Since we are not concerned with a certification trade mark, the process for registration of which is entirely different, we may exclude the interpretation of the phrase ‗person aggrieved‘ occurring in Section 69 from consideration for the purposes of this judgment.

31. In our opinion the phrase ‗person aggrieved‘ for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the register.

32. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined ‗person aggrieved‘ in Powell's Trade Mark, In re [Powell's Trade Mark, In re, Powell v. Birmingham Vinegar Brewery Co.27: (AC p. 10) …although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation. Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved. (emphasis added in Hardie Trading Ltd18 case )

33. But if the ground for rectification is merely based on nonuser i.e. under Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply for its removal. An applicant must therefore show that ‗in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by ―possible‖ I mean possible in a practical sense, and not merely in a fantastic view…. All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them.‘

34. Addisons' application was one under Section 46 and the test to determine whether the applicant was a ‗person aggrieved‘ within the meaning of that section should have been the one laid down by Romer, J. in Wright case and not the one propounded by the House of Lords in the matter of Powell's 1894 AC 8 (HL) Trade Mark27. The High Court and the Joint Registrar fell into error in not drawing this distinction. However, it is not necessary to dilate on this aspect of the matter as the appellant has really argued on the second and third aspects of Section 46 viz. the alleged non-use of the trade marks by Hardie and special circumstances.‖

32. In Hardie Trading Ltd18 this Court approved the test applied by Romer, J. in Royal Baking Powder Co. v. Wright, Crossley and Co28., which has been reproduced in para 33 of the Report. We respectfully agree.

33. Hardie Trading Ltd18 has been followed by this Court in a recent decision in Kabushiki Kaisha Toshiba29. This Court stated that Section 46 speaks for private interest while Section 56 speaks of a public interest.

34. It is true that the appellant in opposition to the applications for removal/rectification of trade mark did not specifically challenge in its counter-affidavits the locus standi of the first respondent to be heard as a person aggrieved. Obviously, in the absence of any specific objection by the appellant to that effect, no specific issue was framed by the High Court whether the applicant was an aggrieved person. The applications having been transferred to IPAB in terms of Section 100 of the 1999 Act, IPAB examined the matter in light of the issues that were framed by the High Court although in the written submissions before it, the objection was raised that the first respondent has ceased to have locus standi in view of the subsequent events, particularly change of the name of the first respondent from Jupiter Infosys Ltd. to Jupiter International Ltd. The question is, whether in these circumstances it was incumbent upon IPAB to consider and satisfy itself about the locus standi of the first respondent to be heard as a person aggrieved. In our considered view, it was.‖ To the same effect are paras 28 to 34 of the report in Hardie Trading Ltd.18, which read thus: ―(a) Person aggrieved

28. On this issue the Joint Registrar held that Addisons was a ―person aggrieved‖. The principal ground for doing so was the fact that Addisons carried on the same trade and its applications for registration had been rejected on the ground of the existence of Hardie's marks. [(1898) 15 RPC 377

29. The learned Single Judge upheld the decision of the Hardie ―and may be able to use the said mark in relation to own goods but for the existence of the registered marks in the name of Hardie‖. The Division Bench affirmed this view.

30. The phrase ―person aggrieved‖ is a common enough statutory precondition for a valid complaint or appeal. The phrase has been variously construed depending on the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with the removal of a registered trade mark from the Register on the ground of non-use. This section presupposes that the registration which was validly made is liable to be taken off by subsequent non-user. Section 56 on the other hand deals with situations where the initial registration should not have been or was incorrectly made. The situations covered by this section include: (a) the contravention or failure to observe a condition for registration; (b) the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions are commenced for the ―purity of the Register‖ which it is in public interest to maintain. Applications under Sections 46 and 56 may be made to the Registrar who is competent to grant the relief. ―Persons aggrieved‖ may also apply for cancellation or varying an entry in the Register relating to a certification trade mark to the Central Government in certain circumstances. Since we are not concerned with a certification trade mark, the process for registration of which is entirely different, we may exclude the interpretation of the phrase ―person aggrieved‖ occurring in Section 69 from consideration for the purposes of this judgment.

31. In our opinion the phrase ―person aggrieved‖ for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register.

32. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined ―person aggrieved‖ in the matter of Powell's Trade Mark27: ―… although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation. Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved.‖ (emphasis added)‖

33. But if the ground for rectification is merely based on nonuser i.e. under Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply for its removal. An applicant must therefore show that ―in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by ‗possible‘ I mean possible in a practical sense, and not merely in a fantastic view…. All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them‖.

34. Addison‘s' application was one under Section 46 and the test to determine whether the applicant was a ―person aggrieved‖ within the meaning of that section should have been the one laid down by Romer, J. in Wright30 case and not the one propounded by the House of Lords in the matter of Powell's Trade Mark27. The High Court and the Joint Registrar fell into error in not drawing this distinction. However, it is not necessary to dilate on this aspect of the matter as the appellant has really argued on the second and third aspects of Section 46 viz. the alleged non-use of the trade marks by Hardie and special circumstances.‖ 13.[9] Applying the law enunciated with respect to the expression ―person aggrieved‖ as used in Section 56 of the Trade Marks Act, I (1898) 15 RPC 131 am of the opinion that the petitioner satisfies the definition of the expression ―person aggrieved‖, as explained in Infosys Technologies Ltd17 and Hardie Trading Ltd.18.

13.10 The reliance, by Mr. Sibal, on the assignment, by HERO ECO Tech, to the petitioner, of the right to use the HERO ECO mark in respect of medical products, is also well taken. As an entity entitled, by assignment, to own and use the HERO ECO mark for medical product, the petitioner can also claim to have the prevailing interest in ensuring that the competing HERO group mark, for identical medical products, was not used by any other group or person without due sanction in law. For that reason, too, the petitioner would be entitled to maintain the present petition, challenging the registrations granted to Respondent 1 of the HERO group for medical products.

13.11 As such, I reject the contentions of Mr. Nayar that the petitioner did not possess the requisite locus standi to maintain the present petition as a ―person aggrieved‖ under Section 57 of the Trade Marks Act.

14 Non-impleadment of other Family Groups 14.[1] Mr. Nayar sought to submit that, as the claim of the petitioner was predicated on the FSA and TMNA, all parties to the FSA and TMNA, which would include all Family Groups, were required to be impleaded in the present case. I cannot agree. 14.[2] The challenge in the petition is, plainly and simply, to the registration of the mark HERO GROUP in favour of Respondent 1, as representing the F-3 Group, in respect of medical products. The only question that the Court has to determine is, therefore, whether the F-3 Group was entitled to registration of the HERO GROUP mark in its favour in respect of medical products. The petitioner, as representing the F-1 Group, contended that the F-3 Group was not entitled to register the HERO GROUP mark in its favour in respect of medical products. The F-1 group does not itself claim any entitlement to registration of the HERO GROUP mark, in respect of medical products or any other goods. The petitioner‘s contention is that no group is entitled to register any trade mark for medical products, except the F-1 group which is entitled to register the HERO ECO mark in respect thereof. The Court has, therefore, to determine the entitlement, or otherwise, of the F-3, group, to registration, in its favour, of the HERO GROUP mark for medical goods in the light of these submissions. 14.[3] As such, the rival rights involved were of the F-1 and F-3 Groups. It is nobody‘s case that any of the other Groups was entitled to obtain registration in respect of medical products of the HERO GROUP mark. There was, therefore, no requirement of impleading any of the other Groups in the present litigation, which is essentially between the F-1 and F-3 Groups.

15 Re: Clause 12.[1] of FSA 15.[1] Clause 12.[1] of the FSA, to my mind, has no application in the present case at all. We are not concerned, here, with any non-compete restrictions. Nor does the petitioner invoke any such non-compete restrictions to question the entitlement of Respondent 1 to use the HERO GROUP mark for medical products. The case of the petitioner is predicated on the covenants of the FSA and the TMNA, particularly the TMNA. If, under the TMNA, Respondent 1 is not entitled to use the HERO GROUP mark for medical products, the registration of the mark in favour of Respondent 1 would ex facie be illegal. There is no occasion in so holding to seek recourse to Clause 12.[1] of the FSA. 15.[2] The reliance, by Mr. Nayar, on Clause 12.[1] of the FSA is, therefore, misguided.

16 Re: Plea of delay 16.[1] Mr. Nayar sought to contend that the rectification petition could not be examined on merits, as it was highly belated. Khoday Distilleries12, in his submissions, holds that a belated rectification petition cannot be entertained on merits. Mr. Sibal contends, per contra, that Khoday Distilleries12 applies only where the delay on the part of the petitioner has led to acquiescence, waiver or abandonment. 16.[2] The answer to Mr. Nayar‘s contention is, in fact, to be found in para 49 of Khoday Distilleries12 itself. In the said paragraph, the Supreme Court holds that ―delay would be a valid defence where it has caused a change in the subject matter and action or brought about a situation in which justice cannot be done‖. The paragraphs that precede para 42 in Khoday Distilleries12, as Mr. Sibal correctly points out, essentially deal with the aspects of acquiescence and waiver. 16.[3] In the present case, there is nothing to indicate that, prior to September 2020, the registration of the HERO GROUP mark in respect of medical products in favour of Respondent 1 ever came to the notice of the petitioner. The case of the petitioner is that the fact the registration of the HERO GROUP mark in favour of Respondent 1 in respect of medical products came to its notice in September 2020. The present rectification petition was filed in December 2020. It cannot, therefore, be said that the rectification petition was belated in any way. 16.[4] The submission of delay, as advanced by Mr. Nayar, is also, therefore, rejected.

17. Re: Section 45(3) and contention that rights emanating from private contract cannot be examined in rectification petition under Section 57 17.[1] Mr. Nayar contends that Section 45(3) of the Trade Marks Act, in conjunction with the principle on the rights arising from a civil contract cannot be adjudicated in rectification proceedings, forbears this Court to, in the present proceedings which have been instituted under Section 57 of the Trade Marks Act, return findings regarding the rival rights of the parties before the Court, as they arise from the covenants of the FSA and the TMNA. 17.[2] The submission, in my opinion, is devoid of substance. 17.[3] Section 45 of the Trademarks Act deals with registrations of assignments and transmissions. Sub-section (1) thereunder requires a person, who becomes entitled to a registered trademark by assignment or transmission, to apply to the Registrar to register him as the proprietor of the trademark, providing, in the process, the particulars of such assignment or transmission. Sub-section (2) empowers the of proof of title in the event of reasonable doubt about the veracity of the statement and document furnished by him. Sub-section (3), which Mr. Nayar invokes, provides that, where the validity of the assignment or transmission is in dispute between the parties, the Registrar can refuse to register the assignment or transmission till the rights of the parties are determined by a competent court. This clause, therefore, applies only where an application has been filed before the Registrar for registering the applicant as the proprietor of a trademark which already stands registered in favour of someone else, on the basis of assignment or transmission of the said mark made by such other person in his favour. In such a case, when the parties are already locked in litigation with respect to the validity of the document of assignment or transmission, Section 45(3) permits the Registrar to refuse to register the applicant as the proprietor of the mark till such dispute is decided by the competent civil court. 17.[4] Here, the petitioner is not asserting its right, or questioning the right of Respondent 1 to registration of the HERO GROUP mark in respect of medical products, on the basis of any assignment or transmission of the right to the said mark by an earlier holder thereof. The FSA and TMNA cannot be regarded as documents of assignment or transmission of marks. They divide, among the various Family Groups, the right to use the different marks in respect of specified goods. It is not, therefore, as though the HERO GROUP mark stood earlier registered in favour of someone else, who assigned the right to the mark either to the F-1 Group or to the F-3 Group or any other family group. 17.[5] Secondly, Mr. Nayar has not drawn my attention to any proceedings in which the validity of any such document of assignment or transmission of the right to use the HERO GROUP mark in respect of medical products was transferred by one party to another was under challenge. 17.[6] The prerequisites of Section 45 do not, therefore, apply in the present case. 17.[7] I am also not impressed with Mr. Nayar‘s submission that, in rectification proceedings, the Court or the authority adjudicating the matter cannot examine civil contractual rights. The submission is, in my considered opinion, in the teeth of Section 18 of the Trademarks Act. Section 18 requires any application for registration of a mark to be made by the proprietor of the mark. The establishment of proprietorial rights in respect of a mark is, therefore, a sine qua non, before registration of the mark can be sought. Where, as in the present case, the right of the registrant to registration of the mark is questioned under Section 57 on the ground that the registrant does not have proprietorial rights over the mark, the Section 57 Court would necessarily have to examine the issue. Examination of the existence or otherwise of proprietorial rights would, in most cases, involve examination of contractual provisions. 17.[8] Though Sections 9 and 11 of the Trademarks contain absolute and relative grounds on which registration can be refused, they do not detract from the requirement, engrafted in Section 18(1) of the Trademarks Act, for the applicant seeking registration of a mark to be required to claim himself to be the proprietor of such mark. The sequitur would, therefore, be that a person questioning the validity of the registration of the mark in favour of another, can always base the challenge on the lack of proprietorial rights of such other person to the mark which stands registered in his favour. 17.[9] Section 57 of the Trade Marks Act does not, in any manner, fetter or restrict the scope of inquiry or investigation which the Court, approached under the said provision, is empowered to undertake. As such, I am unable to subscribe to Mr. Nayar‘s contention that civil rights emanating from a contract cannot be adjudicated in a rectification proceeding under Section 57 of the Trademarks Act. The contention is, therefore, rejected.

18. The rival rights of the parties on merits 18.[1] Coming, now, to the meat of the matter. 18.[2] The F-3 Group claims its right to registration of the HERO GROUP mark for medical products under Clause 2(iii) read with Clauses 1.1.[8] to 1.1.11 and Clause 2(ix) of the TMNA. The F-1 Group, as represented by the petitioner, does not claim any right to ownership or use of the HERO GROUP mark for medical products. The petitioner‘s case is, however, that by conjoint reading of Clauses 1.1.6(e) and 1.1.7(c), registration of any mark for medical products is permissible only in favour of the F-1 Group, of the HERO ECO mark. Clauses 1.1.6(e) and 1.1.7(c), therefore, read in conjunction, foreclose the right of any other Group to seek registration of any mark in its favour for medical products. This, therefore, would extend to the registration of the HERO GROUP mark in respect of medical products in favour of the F-3 Group. Medical products, the F-1 group would therefore urge, are its personal fiefdom. 18.[3] A careful reading of the FSA and the TMNA persuades me to accept the submission of Mr. Nayar and reject that of Mr. Sibal. To understand why I so hold, one may view the matter, first, from the point of view of the rights of the F-3 group under the TMNA and, thereafter, the rights of the F-1 group under the TMNA, in respect of registration of trade marks for medical products. 18.[4] Re: Right of F-3 Group 18.4.[1] Clause 2(iii) confers exclusive right of ownership and use over ―Other Products and Services Trademarks‖ and ―Future Products and Services Trademarks‖ on the F-3 Group. 18.4.[2] ―Other Products and Services Trademarks‖ are defined as the trade mark and name HERO with or without suffixes, used in relation to Other Products and Services. The expression ―HERO with or without suffixes‖ would, needless to say, include HERO GROUP. 18.4.[3] The definition of ―Other Products and Services‖ in Clause 1.1.[8] specifically excludes ―F-1 Family Group Products and Services‖. 18.4.[4] Clauses 1.1.[6] which defines ―F-1 Family Groups Product and Services‖ specifically includes in sub clause (e), ―Medical Products & Lifestyle Care equipment for Hospitals, Rehabilitation and Homes‖. 18.4.[5] Medical products being thus included in the definition of ―F-1 Groups Products and Services‖ ipso facto stands excluded from the definition of ―Other Products and Services‖ in Clause 1.1.8. 18.4.[6] No right to use any mark in respect of medical products can, therefore, enure in favour of the F-3 Group under Clause 1.1.8. 18.4.[7] Clause 1.1.11 defines ―Future Products and Services Trademarks‖ as the trademark and name HERO with or without suffixes, in relation to or in connection with Future Products and Services. 18.4.[8] Clause 1.1.10 defines ―Future Products and Services‖ as all goods and services which are not currently manufactured, sold/marketed, distributed, offered or rendered by the parties, or their affiliates, group companies etc. 18.4.[9] The word ―currently‖ is not defined in the FSA or the TMNA. P. Ramanatha Aiyar, in his Advanced Law Lexicon (5th edition) defines ―current‖ as ―running; now passing or present in his progress‖ and, alternately, as ―describing continuing state of affairs that is occurring or relevant at the present time and is expected to remain so and in the near future‖. Existence at the present time is, therefore, essential for something to be treated as ―current‖. As the challenger challenging the validity of the registration of the HERO GROUP mark in favour of Respondent 1 in respect of medical products, the onus was on the petitioner to prove, affirmatively, that medical products were currently manufactured by the HERO GROUP of companies; in other words, that they were, on the date of execution of the FSA and the TMNA, i.e. on 20th May 2010, being manufactured by one of other member of the HERO GROUP of companies. 18.4.10 No such positive or affirmative evidence is forthcoming. The last of the invoices produced by the petitioner is dated 24th March

2006. The BRA, on which Mr. Sibal relies, is dated 30th November

2011. The BRA does not indicate, anywhere that, on the date of execution of the TMNA, i.e. on 20th May 2010, medical products were being manufactured by the HERO GROUP of companies. 18.4.11 Mr. Sibal also sought to contend that, apart from facts, the covenants of the TMNA required medical products to be treated as ―currently manufactured‖. For this, he advances three contentions, none of which, however, supports his submission. 18.4.12 Mr. Sibal submits, firstly, that Clauses 1.1.[8] and 1.1.6(e) of the TMNA, when juxtaposed, deem medical products to be currently manufactured. The submission, on its face, is difficult to accept. Whether an article is, or is not, currently manufactured, is a question of fact, and a fairly simple one at that. Any concept of ―deemed current manufacture‖ is, therefore, on its face illogical. That apart, the logic Mr. Sibal presses into service, to support his submission, is also, in my view, inherently fallacious. Mr. Sibal seeks to submit that, as the definition of ―Other Products and Services‖ in Clause 1.1.8, which means all types of goods currently manufactured excludes ―F-1 Family Group Products and Services‖, and ―F-1 Family Group Products and Services‖ as defined in Clause 1.1.[6] includes, in clause (e), medical products, therefore, medical products would be deemed to stand included in all types of goods currently manufactured. 18.4.13 I fail to see how. 18.4.14 The definition of ―Other Products and Services‖ in Clause 1.1.[8] does mean all types of goods currently manufactured, and does exclude F-1 Family Group Products and Services, but that does not mean, by any principle known to logic, that all products enumerated in the definition of ―F-1 Family Group Products and Services‖, as contained in Clause 1.1.6, must necessarily be deemed, by the TMNA, to be currently manufactured. The contention, in effect, interprets Clause 1.1.[8] effectively in reverse. All that the exclusionary part of the Clause does is to exclude, from the ambit of the Clause, goods and services covered by Clause 1.1.6. By no known principle of logic can it be inferred, from this, that all goods and services enumerated in Clause 1.1.[6] are thereby deemed to be currently manufactured. The argument is, therefore, fundamentally illogical. 18.4.15 If ―A‖ is defined as potatoes, cabbages, carrots and apples, and ―B‖ is defined as all vegetables other than A, does it mean that apples are deemed to be vegetables? The answer, to my mind, is obviously ‗no‘. It would, at best, only mean that potatoes, cabbages and tomatoes would not be included in A. Apples would not be affected by the definition of ‗A‘ precisely because apple is not a vegetable. To read the two clauses as deeming apples to be vegetables is, therefore, turning the definition of ‗A‘ on its head. Which is what, with respect, Mr. Sibal‘s submission does to Clause 1.1.[8] of the TMNA. 18.4.16 Mr. Sibal next submits that, if medical products were to be included in the ―Future Products and Services‖ under Clause 1.1.10, it would create conflict between Clauses 1.1.6(e), read with Clause 1.1.8, and Clause 1.1.10, as Clause 1.1.10 would then be including medical products which Clause 1.1.8, read with Clause 1.1.6(e), specifically excludes. This submission, too, is ex facie unacceptable. The reason is obvious. Clause 2(iii) independently entitles the F-3 group to rights of ownership and use over Other Products and Services Trade Marks and Future Products and Services Trade Marks. Including, in one (Clause 1.1.10), what is not includible in the other (Clause 1.1.8) does not, therefore, in any manner infract the TMNA. 18.4.17 Mr. Sibal lastly submits, on this issue, that including medical products within the definition of ―Future Products and Services‖ in Clause 1.1.10 would violate Clause 1.1.7(c), as the F-3 group would, then, become entitled to use even the HERO ECO mark for medical products. Again, the submission fails to impress. All that is needed is a harmonious interpretation of Clause 1.1.7(c) and Clause 1.1.10, in the light of their parent clauses 2(ii) and 2(iii). Inasmuch as Clauses 2(ii) and 2(iii) confer exclusive rights to the F-1 and F-3 groups over, in the former case, F-1 Family Group Trade Marks and, in the latter, Other Products and Services Trade Marks and Future Products and Services Trade Marks, it is obvious that the clauses have to be harmoniously read, so as not to efface each other out. So read, Clause 2(iii), read with Clause 1.1.10, would entitle the F-3 group to exclusive use of the HERO GROUP mark for all goods not currently manufactured – which would include medical products – and Clause 2(ii), read with Clause 1.1.7(c) would entitle the F-1 group to exclusive use of the HERO ECO mark for medical products. The attempt of Mr. Sibal to invoke Clause 1.1.7(c) so as to deny, to Clause 1.1.10, its legitimate scope and ambit cannot, therefore, sustain. 18.4.18 Resultantly, it cannot be held that, even contractually, medical products were ―currently manufactured‖. 18.4.19 The decisions in Ramdev Food Products[3], Bangalore Electricity Supply Co Ltd[4], Investors Compensation Scheme[5], Jumbo King[6] and Phoenix Commercial Enterprises[7] do not further the case that Mr. Sibal seeks to espouse. Mr. Sibal primarily relied on these authorities to submit that the covenants of the FSA and TMNA had to be construed in harmony with trade mark law, as contained in the Trade Marks Act. There can be no gainsaying the proposition that every contract has to be interpreted in accordance with extant law. However, as the manner in which I have chosen to interpret the various competing clauses of the TMNA does no insult to the Trade Marks Act, I do not deem it necessary to advert to each of these decisions. 18.4.20 Clause 1.1.10 cannot, therefore, be said to disentitle the F-3 Group from registration of the HERO GROUP trademark in its favour in respect of medical products; on the other hand, it permits such registration. 18.4.21 In view thereof, it is not necessary to pronounce on Clause 2(ix) but as Mr. Nayar has invoked the said provision, I deem it appropriate to observe that Clause 2(ix) cannot enure in favour of the F-3 Group, as it deals only with the trademark and name HERO per se, and not HERO with or without prefixes or suffixes. The right to registration of the mark HERO GROUP cannot, therefore be examined on the anvil of Section 2(ix). 18.4.22 The registration of the HERO GROUP mark, in respect of medical products, in favour of the F-3 Group does not, therefore, fall foul of Clause 1.1.10 read with Clause 2(iii) of the TMNA. 18.[5] Re: Rights of F-1 Group 18.5.[1] Mr. Sibal‘s contention that, as medical products are covered by Clause 1.1.6(e) of the TMNA, no other Group could seek to register any trade mark in its favour for medical products, cannot sustain legal scrutiny. There is no clause, in the TMNA, which proscribes registration of any mark other than HERO ECO, in respect of medical products, in favour of any of the Family Groups. 18.5.[2] In this context, it has to be borne in mind that (a) the right of the F-1 Group to ownership and use of the trademarks is covered by Clause 2(ii) of the TMNA, (b) Clause 2(ii) gives the F-1 Group exclusive right of ownership and use over F-1 Family Group Trademarks, and not over all trademarks in respect of F-1 Family Group Products and Services,

(c) the TMNA, therefore, confers exclusivity, on the F-1 group, only in respect of F-1 Family Group Trademarks (defined in Clause 1.1.7), and not in respect of F-1 Family Group Products and Services (defined in Clause 1.1.6), (d) ―F-1 Family Group Trademarks‖, in Clause 1.1.7, is not defined in terms of the definition of ―F-1 Family Group Products and Services‖ as contained in Clause 1.1.6, (e) the definition of ―F-1 Family Group Products and Services‖ in Clause 1.1.[6] is, therefore, irrelevant to the issue of the entitlement of the F-1 Group, under the TMNA, to use of any of the marks, (f) insofar as medical products are concerned, the only trademark, in the ―F-1 Family Group Trade Marks‖ as defined in Clause 1.1.7, is the trademark HERO ECO, (g) though medical products are covered under Clause 1.1.6(e), which defines ―F-1 Family Group Products and Services‖, the trademark entitlement of the F-1 Family Group is not defined in terms of Clause 1.1.[6] but in terms of Clause 1.1.[7] and (h) under Clause 1.1.7, the only right of the F-1 Family Group, in respect of medical goods, is for registration of the trademark HERO ECO.

19. Thus,

(i) the F-1 Family Group, therefore, does not possess any right of registration of the HERO GROUP mark – or, for that matter, of any other mark – in respect of medical products, under the TMNA,

(ii) the only entitlement of the F-1 Group, in respect of medical products, is to the registration of the HERO ECO mark,

(iii) there is no provision which prohibits any of the other family groups from registering any mark, to which it is entitled under the TMNA, in respect of medical products, and

(iv) consequently, there is no restriction on the F-3 Group, either, in having the HERO GROUP mark registered in its favour for medical products.

20. Thus, the Court holds that the F-3 family group is entitled to register the HERO GROUP mark in its favour under Clause 1.1.10 of the TMNA and that the said registration does infract any proscription contained either in the FSA or the TMNA. Conclusion

21. In view of the aforesaid discussions, the challenge by the petitioner, to the impugned registration of the HERO GROUP mark in favour of Respondent 1 in respect of medical products is found to be devoid of merit.

22. The petition is accordingly dismissed with no order as to costs.

23. Miscellaneous applications do not survive for consideration and stands disposed of.

24. Let this order be uploaded on the website of this Court within 24 hours.

C. HARI SHANKAR, J.