Trademark Infringement and the Right of Assignees to Sue Pending Recordal of Assignment
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Case: John Cockerill Hamon SA v. Hamon Cooling Systems Private Limited
Court: Bombay High Court
Date: 06-07-2026
Law: Trade Marks Act.
Highlights of the Judgment:
- Analysis of the right of an assignee to maintain an infringement action pending the formal recordal of assignment in the Register of Trade Marks.
- Interpretation of Section 42 of the Trade Marks Act regarding the validity of assignments and the necessity of advertisement for transfers without goodwill.
- Application of the prior user defense under Section 34 and its legal unavailability to parties whose initial use was derivative or permissive.
- Examination of the doctrine of acquiescence under Section 33 and the requirement of a positive act of encouragement by the proprietor.
- Discussion on the inter partes effectiveness of trademark assignments upon the execution of the transfer instrument.
- Judicial scrutiny of dishonest intent evidenced by filing trademark applications on a proposed-to-be-used basis after decades of alleged independent use.