Indian trademark held hostage by disgruntled ex-employee amid allegations of potential registry complicity 23 Sep 16
Police in Mumbai have arrested a builder who allegedly ‘stole’ a trademark belonging to a business he used to work for in the course of a dispute over severance compensation, it was reported this week. In the wake of the alleged incident, questions have been raised about potential fraud at the city’s trademark registry.
According to the Times of India, contractor Gobind Jadhwani was arrested by police after a complaint was filed by his former employer Varun Asrani, managing director at real estate firm Safal Group. Asrani alleged that Jadhwani transferred ownership of the company's trademark to himself, threatening to sell the asset to a third party if demanded changes to his retirement compensation package were not met.
Asrani further alleges that when Jadhwani retired in 2015, he gave a written assurance that he had received all of the compensation he had expected. However, Asrani learned from the local trademarks registry that Jadhwani had renewed the Safal trademark in July 2016, and had been using it to promote his own business.
Jadhwani apparently owned a 10% stake in a subsidiary of Safal, and held a director’s role as a result. Testifying before court this week, police investigation officer MV Lad stated that back in 2006 Jadhwani had “allegedly submitted the company's letter heads, balance sheets, brochures and other documents and registered Safal Group's trademark in his own personal name”. Police sources told the Times that they are probing whether any official from the trademarks registry improperly assisted Jadhwani in making the rights transfer.
It is certainly no simple task to change ownership of a trademark, says Ranjan Narula, managing partner at RNA IP Attorneys in Gurgaon. “Transfer of rights require as assignment deed to be signed by the assignor or transferor to assignee or transferee,” he explains. “It has to be attested by a witness for each party and the assignment document needs to be stamped and notarised.”
Furthermore, the trademarks registrar requires an affidavit from the assignor to confirm that no legal proceedings concerning the mark are pending between the parties, and any assignment must be published in the Trademark Journal, he adds. “Thus it is not easy, but if someone does forge documents, the Registrar has no mechanism to determine and will accept the documents at face value.”
As to the possible outcome, according to Narula Safal may be able to pursue remedies under both civil and criminal statutes. “Under civil law, the owner can go to the court seeking a restraining order to stop use of the mark and further transfer to any other party,” he says. “It can also seek a declaration to have the assignment declared as null and void.”
Under criminal law, a party committing forgery would be liable for various offences under the Indian penal code including personating [Section 416], forgery [Section 464] and cheating [Sections 419 and 420].
As it stands there is no evidence of any wrongdoing on the part of the registry – indeed it may itself be the victim of fraudulent paperwork - but officials will hope that the police enquiries are quickly concluded, so this can be conclusively proved and any rumours of complicity dispelled.
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