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SUPREME COURT OF INDIA
Ranjan Gogoi, Navin Sinha, JJ.
Patel Field Marshal Agencies and Anr. – Appellants
Versus
P.M. Diesels Ltd. and Ors. – Respondents
Civil Appeal Nos. 4767-4769 of 2001 With Civil Appeal No.19937 of 2017 (Arising Out of S.L.P. (C) No.1851 of 2009), Civil Appeal No.19938 of 2017 (Arising Out of S.L.P. (C) No.27309 of 2012) and S.L.P. (C) No.30121 of 2012
Decided On : 29-11-2017
AIR 1971 SC 898; (1983) 4 SCC 625; (2008) 38 PTC 576; 2016 (65) PTC 209 Delhi FB; 2006 (32) PTC 733 – Referred
(b) Trade and Merchandise Marks Act, 1958 – Section 111 – In a suit for infringement civil court not finding prima facie tenability of plea of invalidity – Remedy does not lie in sections 46/56 – Remedy lies in appeal against such decision of the civil court. (Para 28)
(c) Trade and Merchandise Marks Act, 1958 – Section 111 – Timeline for filing rectification on civil court prima facie finding tenability of plea of invalidity of registration – Mandatory – Failure to comply with Civil court order within the timeline resulting in abandonment of the plea of invalidity – Nothing survives thereafter – Concerned party cannot take recourse to section 46/56. (Para 32)
(d) Trade and Merchandise Marks Act, 1958 – Section 111 – Section 111 (Section 124, Trade Marks Act, 1999) – Framing of issue of invalidity of registration to vest jurisdiction in statutory authority – Not tantamount to ‘permission’ – Section 41 (b), Specific Relief Act, 1963 not attracted. (Para 35)
Facts of the case:
P.M. Diesels Ltd. is the registered owner of three trade marks. The three registration certificates issued by the Registrar of Trade Marks in favour of the respondent-Company is in respect of the mark "Field Marshal" (Registration No. 224879); the second certificate is in respect of trade mark "Field Marshal" in lettering style (Registration No. 252070) and the last certificate is in respect of trade mark "FM Field Marshal" (Registration No. 252071-B). The first registration certificate is dated 16.10.1964 and the second and third registration certificates are dated 4.10.1968.
In the year 1982 the appellants-Patel Field Marshal applied for registration of the trade mark "Marshal" for their use. The respondent served a legal Notice asking the appellants to desist from using the mark in question, i.e., "Marshal".
In the year 1989, the respondent instituted a suit before the High Court of Delhi (Suit No. 1612 of 1989) for infringement of trade mark, rendition of accounts of profit earned by the appellants from use of the mark "Marshal" and for perpetual injunction to restrain the appellants from using the trading styles "Patel Field Marshal Agencies" and "Patel Field Marshal Industries". An Interlocutory Application for temporary injunction was also filed.
The High Court dismissed the Interlocutory Application filed by the plaintiff-respondent for interim injunction on the ground of lack of jurisdiction. In appeal, the Division Bench directed for consideration of the Interlocutory Application for interim injunction on merits. The matter was brought to Supreme Court in Special Leave Petition (C) No.13512 of 1998. During the pendency of the aforesaid S.L.P., a learned single Judge of the High Court held that the court had no jurisdiction and, therefore, ordered for return of the plaint for presentation before the competent court in the State of Gujarat. The Division Bench directed the plaint to be returned to be filed in Rajkot.
The aforesaid Order of the Division Bench is the subject matter of challenge in the connected Civil Appeal arising out of S.L.P. (C) No. 1851 of 2009 also filed by the appellant.
However, when the suit in question was pending adjudication in the High Court of Delhi, the appellants herein initiated parallel proceedings before the High Court of Gujarat (in the year 1997) seeking rectification of the registration of the trade mark(s) granted to the respondent. Specifically, the appellants had filed three rectification applications bearing RA Nos. 1, 2 and 3 of 1997 under Sections 46/56 of the Trade and Merchandise Marks Act, 1958 for removal and cancellation of the three trade marks registered in favour of the petitioner bearing Nos. 224879, 252070 and 252071. The learned single Judge of the High Court of Gujarat dismissed the three applications in question. The said order has been affirmed in appeal by the Division Bench of the Gujarat High Court. This order has been subjected to challenge in Civil Appeal Nos.4767-4769 of 2001 presently under consideration.
Finding of the Court:
There is no merit in the appeals.
Result: Appeals dismissed.
JUDGMENT
Ranjan Gogoi, J.
Leave granted in S.L.P. (C) No.1851 of 2009 and S.L.P. (C) No.27309 of 2012.
2. A relatively simple question though of considerable importance in Intellectual Property Rights jurisdiction has presented itself for an authoritative pronouncement of this Court in the present bunch of appeals. The question arising will be formulated for an answer at a subsequent stage and for the present we will take notice of the relevant facts giving rise to the issue in question.
3. The respondent in Civil Appeal Nos.4767-4769 of 2001 (P.M. Diesels Ltd.) is the registered owner of three trade marks, the common feature of all of which is the words "Field Marshal". The three registration certificates issued by the Registrar of Trade Marks in favour of the respondent-Company (through its predecessor) is in respect of the mark "Field Marshal" (Registration No. 224879); the second certificate is in respect of trade mark "Field Marshal" in lettering style (Registration No. 252070) and the last certificate is in respect of trade mark "FM Field Marshal" (Registration No. 252071-B). The first registration certificate is dated 16.10.1964 and the second and third registration certificates are dated 4.10.1968.
4. It appears that some time in the year 1982 the appellants-Patel Field Marshal & Anr. applied for registration of the trade mark "Marshal" for their use. Having come to know of the said application and perceiving a similarity between the mark in respect of which registration was sought by the appellants and the mark(s) registered in favour of the respondent, the respondent served a legal Notice dated 23.07.1982 asking the appellants to desist from using the mark in question, i.e., "Marshal".
5. In the year 1989, the respondent instituted a suit before the High Court of Delhi (Suit No. 1612 of 1989) for infringement of trade mark, rendition of accounts of profit earned by the appellants from use of the mark "Marshal" and for perpetual injunction to restrain the appellants from using the trading styles "Patel Field Marshal Agencies" and "Patel Field Marshal Industries". An Interlocutory Application for temporary injunction was also filed.
6. The defendants in the suit, i.e., the appellants herein, contested the claims of the plaintiff-respondent on the ground of jurisdiction as well as on merits. In the written statement filed, the appellants-defendants also contested the validity of the registration of the respondent's trade mark "Field Marshal" and claimed that the same was liable to be rectified in the trade mark register. An issue to the said effect was framed in the suit.
7. The Delhi High Court by its Order dated 28.09.1995 dismissed the Interlocutory Application filed by the plaintiff-respondent for interim injunction on the ground that the High Court did not have jurisdiction, both, pecuniary and territorial, over the subject matter. In appeal, the Division Bench by Order dated 10.03.1998 reversed the decision of the learned single Judge and directed for consideration of the Interlocutory Application for interim injunction on merits. The matter was brought to this Court in Special Leave Petition (C) No.13512 of 1998. During the pendency of the aforesaid S.L.P., in view of the remand order of the Division Bench dated 10.03.1998, a learned single Judge of the High Court granted temporary injunction in favour of the respondent-plaintiff. This was on 07.07.1999. However, by a subsequent Order dated 20.08.2008, the learned single Judge of the High Court held that the court had no jurisdiction and, therefore, ordered for return of the plaint for presentation before the competent court in the State of Gujarat. The said order was challenged by the respondents herein (plaintiffs in the suit) before the Division Bench. The Division Bench by Order dated 24.10.2008 held that in the facts of the case the plaint ought not to have been rejected; however, as the appellant before it (respondent-plaintiff) had no objection to carry on the pro
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