1. American Home Products Corporation v. Mac Laboratories Pvt. Ltd.

, (1986) 1 SCC
465, wherein it has been held as under:—

“36. The object underlying Section 46(1) is to prevent trafficking in trade marks. This
is, in fact, the object underlying all trade mark laws. A trade mark is meant to distinguish
the goods made by one person from those made by another. A trade mark, therefore,
cannot exist in vacuo. It can only exist in connection with the goods in relation to which it
is used or intended to be used. Its object is to indicate a connection in the course of trade
between the goods and some person having the right to use the mark either with or
without any indication of the identity of that person. Clause (v) of Section 2(1) which
defines the expression “trade mark” makes this abundantly clear. Trade marks became
important after the Industrial Revolution as distinguishing goods made by one person
from those made by another; and soon the need was felt to protect traders against those
who were unauthorisedly using their marks and accordingly registration of trade marks
was introduced in England by the Trade Marks Registration Act, 1875, which was soon
replaced by more detailed and advanced legislation. When a person gets his trade mark
registered, he acquires valuable rights by reason of such registration. Registration of his
trade mark gives him the exclusive right to the use of the trade mark in connection with
the goods in respect of which it is registered and if there is any invasion of this right by
any other person using a mark which is the same or deceptively similar to his trade mark,
he can protect his trade mark by an action for infringement in which he can obtain
injunction, damages or an account of profits made by the other person. In such an action,
the registration of a trade mark is prima facie evidence of its validity. After the expiry of
seven years from the date of the registration a trade mark is to be valid in all respects
except in the three cases set out in Section 32. The proprietor of an unregistered trade
mark whose mark is unauthorisedly used by another cannot, however, sue for the
infringement of such trade mark. His only remedy lies in bringing a passing-off action, an
inconvenient remedy as compared to an infringement action. In a passing-off action the
plaintiff will have to prove that his mark has by user acquired such reputation as to
become distinctive of the plaintiff's goods so that if it is used in relation to any goods of
the kind dealt with by the plaintiff, it will be understood by the trade and public as
meaning that the goods are the plaintiff's goods. In an infringement action, the plaintiff is
not required to prove the reputation of his mark. Further, under Section 37 a registered
mark is assignable and transmissible either with or without goodwill of the business
 concerned while under Section 38, an unregistered trade mark is not assignable or
transmissible except in the three cases set out in Section 38(2).

37. As the registration of a trade mark confers such valuable rights upon the
registered proprietor thereof, a person cannot be permitted to register a trade mark when
he has not used it in relation to the goods in respect of which it is sought to be registered
or does not intend to use it in relation to such goods. The reason for not permitting such
trade marks to be registered was thus stated by Romer, J., in Registered Trade Marks of
John Batt & Co., In re and Carter's Application for a Trade Mark, In re [(1898) 2 Ch D
432, 436 : 15 RPC 262, 266]:

“. . . . one cannot help seeing the evils that may result from allowing trade marks
to be registered broadcast, if I may use the expression, there being no real intention
of using them, or only an intention possibly of using them in respect of a few articles.
The inconvenience it occasions, the cost it occasions, is very large, and beyond that I
cannot help seeing that it would lead in some cases to absolute oppression, and to
persons using the position they have obtained as registered owners of trade marks
(which are not really bona fide trade marks) for the purpose of trafficking in them
and using them as a weapon to obtain money from subsequent persons who may want
to use bona fide trade marks in respect of some classes in respect of which they find
those bogus trade marks registered.”

2. Cycle Corporation of India Ltd. Vs. T. I. Raleigh Industries Pvt. Ltd. and Ors.

11. The High Court recorded a finding and it is not disputed across the bar, that the
appellant had entered into an agreement with Sen Raleigh which was a permitted user and
used the trade mark till November 1, 1976 and thereafter by registered user agreement dated
December 20, 1976 used trade mark for a period of 5 years. It is not in dispute that till date of
filing of the application, the appellant used the trade mark in passing off the bicycles under
the trade mark of the respondent. The question, therefore, is : whether the appellant must be
deemed to be a bona fide user of the trade mark, though there was no agreement nor was it
registered as permitted user under
Section 48(1)? On admitted position and in the facts and circumstances, we are of the view
that the appellant was a bona fide user of the trade mark of the respondent in passing off the
bicycles under the trade mark of the respondent who, admittedly, is a registered proprietor. It
is true, as held by this Court, that to get a trade mark
registered without any intention to use it in relation to any goods but merely to make money
out of it by selling it to others, the right to use it as a commodity would be trafficking in that
trade mark. It requires to be prevented and prohibited. The Court would not lend assistance to
such registered proprietors of the trade mark. There must be real trade connection between
the proprietor of the trade and licensee of the goods
and the intention to use the trade mark must exist at the date of the application for registration
of trade mark and such intention must be genuine and bona fide and
continue to subsist in order to disprove the charge of trafficking in trade mark. It is a question
of fact in every case. The question is : whether the trade connection exists to dispel the charge
of trafficking in the trade mark? This question was considered bythis Court in American
Home Products Corporation v. Mac. Laboratories Pvt. Ltd. and Anr. MANU/SC/0204/1985 :
AIR1986SC137 and they need no reiteration.

3. Thukral Mechanical Works v. P.M. Diesels (P) Ltd., (2009) 2 SCC 768 : (2009) 1
SCC (Civ) 719 : 2008 SCC OnLine SC 1930 at page 779
25. While we say so, we are not oblivious of the fact that trafficking in trade mark is to be
discouraged. A registered proprietor of a trade mark should not be permitted to circumvent
the law of user of the trade mark for a long time by assigning the same from time to time. But
then such a case has to be made out. Allegation of trafficking is a serious one. It must be
proved in presence of the person against whom such allegations are made. At the time of
grant of original registration, advertisements are issued and objections are called for. Renewal
of registration, in a sense, also is not automatic. A person who had been using the said trade
mark as a proprietor thereof by user is supposed to keep itself abreast with such applications
filed by another either for registration of the trade mark or renewal thereof. The non-user for
a long time would disentitle a registered proprietor from renewal of the registration.

In the case on hand, the petitioner company is doing trade in respect of Perfume, Incense
sticks, dhoop and hair oil and the trademark of the petitioner was registered in Class 3.
Though the petitioner had registered trademark in Class 21 for ‘Glasswares, domestic
utensils, containers trap parts’, and also since the petitioner claimed registration in Class 21
also, it is undisputed fact that they have never used the trademark with reference to
“Glasswares, domestic utensils, containers trap parts’. In this regard, it would be appropriate
to place reference in the decision of the Hon'ble Supreme Court reported in (1997) 4 SCC
201 (Vishnudas Trading v. Vazir Sultan Tobacco co. Ltd.), wherein it has been held that non-
user of the trademark should not be allowed to enjoy monopoly, otherwise, he will indulge in
mischief of trafficking in Trademark and prevent all bone fide user of such common word.

4. . Veena Nalin Merchant v. Laljee Godhoo & Co., 2015 SCC OnLine Bom 2034

98. In so far as the judgment of the Supreme Court in the case of Cycle Corporation of
India Ltd. v. T.I. Raleigh Industries Private Ltd. (supra) is concerned, it is held by the
Supreme Court that to get the trademark registered without any intention to use it in relation
to any goods but to make money out of it by selling it to others, the right to use it as a
commodity would be trafficking in that trade mark and it is required to be prevented and
prohibited. It is also held that there must be real trade connection between the proprietor of
the trade and licensee of the goods. It is not in dispute that the Respondents had offered to the
Claimant No. 1 34% shares in the Partnership after demise of Mr. Nalin Merchant and by
virtue of which the Claimant No. 1 also could have jointly use the said trademark after her
name would have been registered as the registered proprietor along with others. The Claimant
No. 1 did not agree with the said decision.

99. It is clear that the Respondent No. 2 who continues to be a Partner of the Respondent
No. 1 firm has no objection if all the Respondents are allowed to continue to use the said
trademarks. In my view, a person who claims some shares in the trademarks and is not
registered as registered proprietor under the provisions of the Trade Marks Act, 1999, cannot
be allowed to raise any claim contrary to the claim of registered proprietors which would
breach the rights of the registered proprietors under the said Act. There cannot be rival claims
claiming exclusive rights in the trademarks when such trademarks are registered in the name
of various persons jointly with an intention to use of such trademark jointly by all of such
proprietors and not by claiming by any individual rights therein. In my view, the judgment of
the Supreme Court in the case of Cycle Corporation of India Limited (Supra) thus would
assist the Respondents and not the Claimants. Paragraph 11 of the said judgment reads thus:
 “11. The High Court recorded a finding and it is not disputed across the bar, that the
appellant had entered into an agreement with Sen Raleigh which was a permitted user
and used the trade mark till November 1, 1976 and thereafter by registered user
agreement dated December 20, 1976 used trade mark for a period of 5 years. It is not in
dispute that till date of filing of the application, the appellant used the trade mark in
passing off the bicycles under the trade mark of the respondent. The question, therefore,
is : whether the appellant must be deemed to be bona fide user of the trade mark, though
there was no agreement nor was it registered as permitted user under Section 48(1)? on
admitted position and in the facts and circumstances, we are of the view that the
appellant was a ago user of the trade mark of the respondent in passing off the bicycles
under the trade mark of the respondent who, admittedly, is a registered proprietor. It is
true, as held by this Court, that to get a trade mark registered without any intention to
use it in relation to any goods but merely to make money out of it by selling it to others,
the right to use it as a commodity would be trafficking in that trade mark. It requires to
be prevented and prohibited. The Court would not lend assistance to such registered
proprietors of the trade mark. There must be real trade connection between the
proprietor of the trade and licensee of the goods and the intention to use the trade mark
must exist at the date of the application for registration of trade mark and such intention
must be genuine and bona fide and continue to subsist in order to disprove the charge
of trafficking in trade mark. It is a question of fact in every case. The question is :
whether the trade connection exists to dispel the charge of trafficking in the trade mark?
This question was considered by this Court in American Home Products
Corporation v. Mac Laboratories Pvt Ltd [(1986) 1 SCC 465 in paragraphs 38 and 39]
and they need no reiteration.”

5. N. Ranga Rao & Sons Vs Shree Balaji Associates 2018 SCC OnLine Mad 13537 :
(2018) 75 PTC 135

22. In the case on hand, the petitioner company is doing trade in respect of Perfume,
Incense sticks, dhoop and hair oil and the trademark of the petitioner was registered in
Class 3. Though the petitioner had registered trademark in Class 21 for ‘Glasswares,
domestic utensils, containers trap parts’, and also since the petitioner claimed registration
in Class 21 also, it is undisputed fact that they have never used the trademark with
 reference to “Glasswares, domestic utensils, containers trap parts’. In this regard, it would
be appropriate to place reference in the decision of the Hon'ble Supreme Court reported in
(1997) 4 SCC 201 (Vishnudas Trading v. Vazir Sultan Tobacco co. Ltd.), wherein it has
been held that non-user of the trademark should not be allowed to enjoy monopoly,
otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone
fide
user of such common word.

6. Osram GmbH v. Mr. Rajesh Kumar and Ors 2022 SCC OnLine Del 1744
11. The present suit and the connected suits and petitions filed by M/s. Hengst being
CS(COMM)600/2021 have been filed against the same Defendants. The list of trade marks
applied for/registered by the Defendants leaves no manner of doubt in the mind of the Court
that the intent of the Defendants is to indulge in trafficking/hoarding in these marks. As per
the Defendants' statements they are not doing any genuine business under any of these marks
This Court cannot turn a blind eye to such large-scale illegality. Moreover, the Defendants
were earlier too visited with Rs. 2 lakhs as costs in CS(COMM) 1280/2018titled Valvoline
Licensing And Intellectual Property LLC v. Tejmee Singh Sethi respect of 18 trade mark
applications filed by them.