Legal Eagle     

Published: June 30, 2023
Updated: June 30, 2023

Limits of Legal Metrology Act Summons cannot be ad hoc

Suresh Deshpande, Mumbai: There have been instances in our company that, now and again, Legal Metrology officers visit the premises and issue notices in the name of the Board Members. There is prosecution under law. Then the Magistrate orders summons and we have to rush to the High Court for immunity. Is there any way out of this?

I am sure this judgement will help you especially and you will be saved the rigour of getting complaints quashed against Board Members due to the illogical prosecution under the Legal Metrology Act.

Avinash Desai, Ahmedabad: We have family-run group companies and some disputes amongst them. All the group companies are using the same word mark but this word mark is not registered. We want to get the same registered in the name of an individual who was the creator of the word mark in his personal capacity. Is there any possibility of getting the word mark registered in a personal capacity?

Shilpa Sharma: A word mark can be registered in an individual capacity as it is covered under the definition as per Section 2 (m) and 2 (zb) of the Trade Marks Act. But it can be registered if the following are complied with:

It is mandatory for him to provide an affidavit showing prior use of the word mark is used in his personal capacity, as per Rule 25 of Trade Mark Rules, 2017

• The affidavit has to be provided with relevant supporting documents like “date of first use”, invoices, promotions, etc
• There have to be agreements by the said family-run group companies wherein they allow and have no objection for the word mark to be registered in the said individual’s name.
• Post the no-objection, all the marks applied for by all the companies for trade mark can be assigned in favour of the said individual in whose name the word mark is to be registered with an appropriate valuation of goodwill.

If the above is not possible, then each family business can have an arrangement to differentiate businesses and apply separately for the said word as per the classifications of goods and services mentioned under the Act. In case of any overlapping of classifications, the entities can provide NOCs to each other.

Advocate Shilpa Sharma is a founder of Counsel & Council, a boutique collaboration law firm, a unique concept in India.

Shilpa has spent several years in managing corporate legal affairs with a large business group in India as corporate legal head, in addition to being in a partner position in various law firms, including the Big 4, and an independent practitioner.

During her career, she has handled nonlitigation including advisory, negotiations, compliance, etc as well as litigation matters for more than 200 companies comprising manufacturing as well as service industries. She holds strong credentials in conducting an entire range of civil, criminal, indirect tax and IPR matters with a remarkable rate of success in securing the prayed-for relief.

Shilpa has won many awards during her career, including Forbes and CCAI. She has been a speaker at various forums.