REPORTABLE  IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION

                   CIVIL APPEAL NO(s). 4052-4054 OF 2003

COMMNR., CENTRAL EXCISE, BANGALORE                Appellant (s)

                VERSUS

M/S. MEYER HEALTH CARE PVT. LTD. & ORS.           Respondent(s)

O R D E R

These appeals are directed against the judgment and order  

of  the  Custom,  Excise  and  Gold  (Control)  Appellate  Tribunal  

(CEGAT),  South  Zone  Bench  allowing  the  appeal  filed  by  the  

Appellant before the Tribunal and holding that since there is an  

Assignment Deed in favour of the respondent in the present case,  

therefore, the respondent shall be entitled to the benefit of the  

Exemption Notification.  The aforesaid findings of the Tribunal  

are under challenge in this appeal on which we have heard the  

learned counsel appearing for the parties.  

Counsel appearing for the appellant has submitted that on  

the date when the case was registered against the respondent,  

there was no Assignment Deed executed in favour of the respondent  

and, therefore, the respondent is not entitled to take benefit of  

the aforesaid Assignment Deed to avail benefit under the exemption  

notificaton.  The counsel appearing for the respondent, however,  

refutes the aforesaid submission contending, inter alia, that so

: 2 :

far the brand name is concerned, the owner of the brand name has  

assigned  the  trade  mark  in  favour  of  the  respondent  and,  

therefore, in view of the decision of the Supreme Court in CCE,  

Ahmedabad Vs. Vikshara Trading & Invest P. Ltd. & Anr. Reported in  

2003(58)  RLT  604(SC) the  respondent  is  entitled  to  avail  the  

benefit of the Exemption Notification.  However, our attention is  

drawn to another decision of this Court by the counsel appearing  

for  the  appellant  in  Meghraj  Biscuits  Industries  Ltd.  Vs.  

Commissioner of C. Ex., U.P. Reported in 2007 (210) ELT 161 (SC)  

wherein almost a similar issue came to be considered by this Court  

and while dealing with the same, this Court observed thus:

“On reading the above quoted paragraphs from the above  judgment,  with  which  we  agree,  it  is  clear  that  the  effect of making the registration certificate applicable  from  retrospective  date  is  based  on  the  principle  of  deemed equivalence to public user of such mark.  This  deeming fiction cannot be extended to the Excise Law.  It  is confined to the provisions of the Trade Marks Act.  In  a  given  case  like  the  present  case  where  there  is  evidence  with  the  Department  of  the  trade  mark  being  owned by M/s. Kay Aar Biscuits (P) Ltd. and where there  is evidence of the appellants trading on the reputation  of M/s. Kay Aar Biscuits (P) Ltd. which is not rebutted  by the appellants (assessee), issuance of registration  certificate with retrospective effect cannot confer the  benefit of exemption notification to the assessee.  In  the present case, issuance of registration certificate  with  retrospective  effect  from  30-9-91  will  not  tantamount to conferment of exemption benefit under the  Excise  Law  once  it  is  found  that  the  appellants  had  wrongly used the trade mark of M/s. Kay Aar Biscuits (P)  Ltd.”

: 3 :

According to the provisions of the Trade Marks Act, for  

getting registration of a trade mark, an application is required  

to be filed in accordance with the provisions incorporated in the  

said Act.  Such an application is required to be advertised and a  

detailed procedure is required to be followed before grant of a  

registration  in  favour  of  a  claimant.   Since  a  variety  of  

procedural  steps  are  required  to  be  taken  like  issuing  an  

advertisement,  hearing  objections,  if  any  filed,  it  becomes  a  

lengthy procedure and, therefore, time consuming for grant of a  

registration in matters of trade mark.  But once registration is  

granted in respect of a particular trade mark in terms of the  

application according to the provisions of the Trade Marks Act,  

the  registration  dates  and  relates  back  to  the  date  of  

application.  However, the position appears to be different as has  

been held by this Court so far excise law is concerned.  This  

Court has already held in the aforementioned decision that effect  

of  making  the  registration  certificate  applicable  from  

retrospective  date  under  the  trade  mark  law  is  based  on  the  

principle  of  deemed  equivalence   to  public  user  of  such  mark  

whereas such deeming fiction cannot be extended to the excise law  

and that the same is only confined to the provisions of the Trade  

Marks Act.   

Admittedly,  in  the  present  case, the  assignment of the

: 4 :

trade mark in question granted in terms of the agreement entered  

into between the parties was on 6.10.1998, which is subsequent to  

the date of registration of the case by the Department, which was  

done on 19.9.1998.  As to whether or not the effect and in fact,  

the aforesaid Assignment Deed which is granted in favour of the  

respondent would relate back prior to a date of 19.9.1998 and  

consequence  thereof  is  a  matter  which  is  not  decided  by  the  

Tribunal.   Since  the  same  is  an  issue  which  is  relevant  and  

relates  to  determination  of  the  factual  aspects,  it  would  be  

appropriate to have a decision of the Tribunal on the said issue.  

We consider that it may not be proper for us to decide such  

a disputed question of fact by ourselves.  We, therefore, remit  

back  this  matter  to  the  Tribunal  for  consideration  of  the  

aforesaid issue as to whether or not the Assignment Deed which was  

entered into between the respondent and the owner of the trade  

mark on 6.10.1998 would also be applicable to the case in hand and  

would date back prior to a period of 1998 to be considered and  

decided by the Tribunal by recording an effective and reasoned  

decision.  Therefore, we set aside the order of the Tribunal to  

the aforesaid extent and remit back the matter to the Tribunal for  

de novo consideration of the aforesaid issue as expeditiously as  

possible, preferably within a period of six months.  

: 5 :

The appeal is allowed to the aforesaid extent.  

In view of the aforesaid order, IAs are also disposed of.  

We make it clear that this order is confined only to the aforesaid  

issue and nothing more at this stage.  

.......................J. (Dr. MUKUNDAKAM SHARMA)

......................J. (ANIL R. DAVE)

NEW DELHI, APRIL 07, 2011