Trademark Dispute between Golden. Tobie vs. Golden Tobacco – A Complete Analysis

Tobie vs Golden Tobacco
Siddharth Verma
| Updated: Nov 10, 2021 | Category: Trademark

The trademark Dispute between the Golden. Tobie vs Golden Tobacco has remarked the controversy on the issue related to the trademark assignment in the present case. The question is whether it is arbitrable or not? In the matter above, both the parties entered into a supply agreement, a trademark license agreement, and an amendment agreement. Furthermore, the plaintiff was also granted an exclusive license that was non-assignable and non-transferable. The plaintiff received the permit to supply, sell, and distribute the defendant’s unique brands in local and foreign markets. The following were among the exclusive brands: Golden’s Gold flake, Golden classic, Taj chapp & Panama, and chancellor. 

Overview 

In Golden. Tobie vs Golden Tobacco, the case’s significance is related to the context of trademark infringement lawsuits. The court determined that this dispute over a trademark license agreement breach was arbitrable and directed it to arbitration. The plaintiff claimed that the defendant corporation said in a termination notification that there had been a lapse on the plaintiff’s side since the plaintiff failed to make timely payment in line with the terms and circumstances of the said agreement. The plaintiff’s failure to pay has resulted in the termination of the trademark license agreement. Furthermore, the plaintiff claimed that the defendant’s company said in a termination that there had been a lapse on the plaintiff’s part because the plaintiff had failed to make the timely payment following the terms and conditions of the agreement. The trademark license agreement was terminated due to the plaintiff’s failure to pay. The defendant had presented and quoted clause 12 of the License Agreement in answer to the litigation. By noting the current agreement between the parties to the case, the defendant asked that the case be moved to a single arbitrator. Furthermore, he requested that the only Arbitrator be appointed in line with clause 12 of the abovementioned trademark license agreement and the revision of the license agreement. 

Law applicability  

Section- 8 “The authority to submit parties to arbitration when an arbitration agreement exists. —

  1. Suppose a party to the arbitration agreement or any person claiming through or under him applies to the judicial authority before which an action is brought in a matter that is the subject of an arbitration agreement not later than the date of submitting his first statement on the substance of the dispute. In that case, the judicial authority shall, despite any decree and order of the or any other court, refer the parties to the arbitration until &unless it finds that prima facie no valid arbitration agreement exists. 
  2. The application referred to in paragraph (1) will not be considered unless accompanied by the original arbitration agreement or a fully certified copy of it. Provided, however, that if the original arbitration agreement or a certified copy thereof is not available to the party applying for arbitration under subsection (1), and the other party to the agreement retains the original arbitration agreement or a certified copy thereof, the party applying shall apply with a copy of the arbitral agreement and a petition asking the apex court to order the other party to produce arbitration agreement. 
  3. An arbitration may be initiated or continued, and an arbitral award may be given, notwithstanding that an application has been filed under subsection (1) and that the subject is pending before the judicial authority.” 

Reference cases in respect of Golden. Tobie vs. Golden Tobacco

  • Vidya Derolia and Ors. Vs. Durga  Trading corporations, in this case, the court dealt with the issue of arbitrability of disputes. The court has propounded a fourfold test to determine arbitrability. The Supreme Court upheld that registration and granting patents and trademarks are subjects & They provide monopoly rights and are non-arbitrable.
  • Hero electric Vehicle Pvt. Ltd. & Anr. Vs. Lectro E-mobility Pvt. Ltd. & Anr

In this case, the Delhi High Court dealt with a similar issue. One of the disputants objected to implementing the arbitrability provision while relying on the Vidya Drolia decision. The trademark assignment, in this case, resulted from the parties’ contract, while the trademark registration was already in place, according to the court. As a result, the issue arose due to a breach of contractual conditions rather than a violation of the Trademark Act. As a result, the court approved arbitration. These two judgments established a framework for assessing the arbitrability of intellectual property issues and explicitly specified the scope.

The decision of the court 

In the matter of Golden. Tobie vs Golden Tobacco the Delhi High court dismissed the suit in this instance. Furthermore, in rejecting the plaintiff’s lawsuit, the court referred the case to arbitration in line with the terms of the Arbitration Agreement. 

Conclusion 

Conclude here that in the present case Golden. Tobie vs Golden Tobacco, the trademark dispute between both the Companies on the issue related to the trademark assignment. Furthermore, trademark registration is a sovereign function, licensing or assigning is done through a Contract instrument. The rights and duties originating from the contract are confined to the parties to the contract, with no rights generated vis-à-vis the Rest of the world. When the parties have an arbitration agreement, and the cause of action arises as a result of a breach of a contract provision between the parties, if one of the parties wishes to refer the dispute before the Arbitral Tribunal[1], the arbitration agreement, cannot be ignored. An opportunity for the same must be provided, and the court should not absorb the dispute as That would amount to usurping the powers of the Arbitral Tribunal. 

Read our Article:Validity of a Trademark in Case of its Non-Utilization

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Siddharth Verma

Siddharth has completed his graduation in law (BA. LLB) from Guru Gobind Singh Indraprastha University. He has a keen interest in doing extensive research and writing on legal subjects, especially on Civil, criminal and corporate Law. He is a creative thinker and has a great interest in exploring legal subjects.

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