IMPORTANT POINT
The court established that under Section 124 of the Trade Marks Act, 1999, a civil suit must be stayed if a rectification application regarding trademark validity is pending.

ORDER :

(PER: HON’BLE MR. JUSTICE H.P. SANDESH)

1. Heard the learned counsel for the petitioners and the learned counsel for the respondent.

2. The present petition is filed invoking writ jurisdiction under Articles 226 and 227 of the Constitution of India praying this Court quash the order dated 30.03.2013 passed on I.A.No.VII in O.S.No.3/2012 by the Principal District Judge at Ballari vide Annexure-J and consequently allow the same and as a result further proceedings in O.S.No.3/2012 be stayed pending disposal of the rectification proceedings before Registrar of Trademarks, Chennai and grant such other reliefs as deemed fit in the circumstance of the case.

3. The petitioners while seeking a writ of certiorari contended that few partners of the petitioners began the business of manufacturing and supplying rice produces in the year 1993 under the name and style of ‘M/s. Sri Raghavendra Agro Agencies’, under the brand name ‘R Gold’. Thereafter, in the year 1998, ‘M/s. Sri Raghavendra Agro Agencies’, introduced a new product ‘Sortex Silky Rice’ under the brand name ‘Swamy Ayyappa Gold’. Two different partnership firms were formed namely ‘Sri Laxmi Balaji Industries’ and ‘Sri Laxmi Vinayaka Rice Industries’ in the year 1998. Application was filed by the petitioner for registration of trademark ‘Swamy Ayyappa Gold’ and ‘Image/Device of Lord Ayyappa’ before the Registrar of Trademarks, Chennai in Application No.1973803 and No.1474317 in the year 2010.

4. It is contended that the respondent herein filed suit in O.S.No.3/2012 before Principal District Judge at Ballari seeking an order of permanent injunction restraining the petitioners herein from using the brand name ‘Swamy Ayyappa Gold’. Respondent herein filed Application under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure (hereinafter referred to as ‘CPC’ for brevity) for an order of interim injunction restraining the petitioners herein from marketing its products under the name and style of ‘Swamy Ayyappa Gold’" on 27.02.2012 and the application filed by the respondent herein for temporary injunction is allowed by Principal District Judge at Ballari on 01.03.2012. It is also the contention of the petitioners herein that they have filed written statement to the suit on 12.04.2012 after the disposal of the interim application filed under Order XXXIX Rule 1 and 2 of CPC. Petitioners herein filed objections to the application filed by the respondent herein under Order XXXIX Rule 1 & 2 of CPC on 12.04.2012 and interim order granted on 01.03.2012 was modified by the Principal District Judge Ballari on 19.04.2012.

5. It is also the contention of the petitioners that they have filed an application for rectification before the Trademarks Registrar, Chennai against the trademark of respondent herein on 24.07.2012 and notice was also issued to the respondent herein by the Registrar of Trademarks, Chennai on 08.10.2012 and petitioners herein also filed an application in I.A.No.VII under Section 124 of the Trade Marks Act, 1999 (hereinafter referred as ‘the Act’ for brevity) seeking stay of further proceedings in O.S.No.3/2012 pending the rectification proceedings before the Trademarks Registrar, Chennai on 21.02.2013. Petitioners herein also filed memo with documents to show that proceedings before the Trademarks Registrar is pending for rectification of the trademark of the respondent on 21.02.2013 and also respondent herein filed objections to the application filed by the petitioner under Section 124 of the Trade Marks Act, 1999 on 28.02.2013 and the Trial Court having heard both the counsels, dismissed the application vide order dated 30.03.2013. Hence, the present petition is filed being aggrieved by the order of dismissal of I.A.No.VII.

6. Counsel for the petitioners relied upon document at Annexure-A which is the copy of amended plaint and contends that the respondent has pleaded that the trademark ‘Ayyappan’ has been used since 1992 for a period of ten years and after the ten years