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2013 Supreme(SC) 1076
SUPREME COURT OF INDIA
K.S. RADHAKRISHNAN, A.K. SIKRI, JJ.
Lakha Ram Sharma - Appellant
Versus
Balar Marketing Private Limited & Ors. - Respondents
CIVIL APPEAL NO. 10679-10680/2013 [Arising out of Special Leave Petition (Civil) No. 28967-28968 of 2012]
Decided on : November 27, 2013
IMPORTANT POINT
If legal remedy is pursued bona fide in wrong jurisdiction, provision of section 14, Limitation Act gets attracted.
Headnote:Limitation Act, 1963 - Section 14 - Appellant pursuing his case bona fide, albeit in wrong jurisdiction - Section 14 gets attracted in such case - It should have been noted that there is no delay on part of appellant - Matter remitted back to IPAB. (Paras 12 and 13)
Facts of the case:
The appellant had been using the trade mark KUNDAN/ KUNDAN CAB and the name Kundan Cables India since 1980.
When the appellant came to know that Respondent No. 1 was using the trade mark Kundan, he immediately filed the suit for injunction against Respondent No. 1 in the District Court of Delhi.
During the pendency of this suit Respondent No. 1 obtained registration of trade mark 'KUNDAN' in its favour in the year 1995. The appellant prompltly filed the petition under Section 45 and 46 of the Trade and Merchandise Marks Act for rectification of the said registered trade mark and for cancelling/ expunging the same.
The Delhi High Court ordered return of the petition. However, before the petition was actually returned on 2.11.2004, IPAB was constituted.
The appellant filed his petition before the IPAB which ultimately dismissed it on ground of delay and laches. High Court agreed.
Finding of the Court:
Appellant entitled to relief u/s 14, Limitation Act.
Result : Matter remitted back to IPAB.
JUDGMENT
A.K. SIKRI,J.
1. Leave Granted.
2. Before adverting to the core issue it would be apposite to note down
the genesis of the dispute.
3. The appellant herein is the proprietor of a concern by the name of Kundan Cables which is engaged in the manufacture of electric accessories and fittings including electrical switches, main switches, fuse units, wires and cables and electrical irons. Since 1980 the petitioner has been using the trademark Kundan/ Kundan Cab and the trade name Kundan Cables India in respect of the said goods. The appellant has also been supplying the said goods under the aforesaid trade marks and names to Respondent No. 1.
4. Sometime in the year 1994, the appellant came to know that Respondent No. 1 was using the Trade Mark 'KUNDAN'. The appellant immediately filed a suit for injunction in the District Court at Delhi which was registered as Suit No. 102 of 1994. During the pendency of the said suit, Respondent No. 1 obtained registration of the said Trade Mark in its favour. The registration was obtained by Respondent No. 1 by virtue of an assignment deed executed by Respondent No. 2 in respect of a pending application for registration. This prompted the appellant to file an application under Sections 46 and 56 of the Trade and Merchandise Marks Act in the High Court of Delhi for rectification of the registered Trade Mark No. 507445 in class 9 and for cancelling/expunging the same. It was filed on 2.5.1995. In the said proceedings an objection was raised by Respondent No. 1 as to the territorial jurisdiction of the Delhi High Court to entertain the said petition.
5. Vide orders dated 10.10.2001, a single Judge of the Delhi High Court upheld the objection regarding territorial jurisdiction and directed that the petition be returned for presentation before the appropriate Court. This order was upheld by the Division Bench. A Special Leave Petition against the order of the Division Bench being Special Leave Petition (Civil) No. 16800 of 2002 was also dismissed vide order dated 20.9.2002.
6. As per the aforesaid orders of the High Court, which was upheld by this Court also, the appellant was supposed to file the petition for rectification of the registered trade mark before the appropriate Court, as Delhi High Court did not have the territorial jurisdiction to adjudicate the matter. The petition filed in Delhi High Court was, thus, directed to be returned for presentation before the appropriate Court. However, before the application for rectification could be returned by the Registry of Delhi High Court, the Intellectual Property Appellate Board (hereinafter to be referred as 'IPAB') was constituted on 15.9.2003. On the establishment of this IPAB, such rectification applications are now to be entertained by the IPAB which has the exclusive jurisdiction to deal with such applications. The Registrar of Delhi High Court passed the orders dated 29.10.2004 directing return of the Rectification Petition to the Counsel for the appellant and it was finally returned on 2.11.2004. On same date, the appellant presented the petition before the IPAB.
7. Notice was issued by the IPAB to the Respondent Nos. 1 & 2 who filed their replies. The Respondent No. 1 filed a miscellaneous petition, being M.P. No. 31 of 2005 on the ground that the Rectification Petition could not have been filed as a continuity of the earlier proceedings before the Delhi High Court. For uncertain reasons, the matter dragged on before the IPAB for quite sometime and ultimately vide orders dated 9.3.2012 the IPAB dismissed the Rectification Petition on the ground that it was filed after a lapse of about 10 years from the date when registration was obtained by Respondent No. 1. The IPAB took the view that Rectification Petition was wrongly filed in the Delhi High Court as jurisdiction vested in the Madras High Court. Therefore, presentation of the petition before the IPAB on 2.11.2004 was taken as the date of filing the petition wherein rectification order was
