SANJIB BANERJEE, J. : –

The key to the legal issue raised in the defendant’s application is in the understanding of the word “invalid” as it appears in Section 124 of the Trade Marks Act, 1999.

There are two parts to the defendant’s challenge to the continuance of the action. The primary attack is as to the continuation of the suit in this Court on the ground that appropriate proceedings have been launched by the defendant against the plaintiff before the Trade Marks Appellate Board. The defendant’s application to the Board appears to be on the ground of non-use of the plaintiff’s registered mark. No copy of the defendant’s application before the Appellate Board has been appended to the defendant’s present application, nor has a copy thereof been otherwise produced in court; but it is not in dispute that the basis for assailing the mark is non-use of the mark for a period of at least five years and three months prior to the making of the defendant’s application to the Appellate Board. The defendant says a challenge to the continuation of a registered mark on the count of non-user can also be carried on the ground that it is an entry wrongly remaining in the register within the meaning of that expression found in Section 57(2) of the Trade Marks Act, 1999.

The suit is for infringement and passing-off. Both parties are well-known in the tobacco industry. In the plaint it has been claimed that the plaintiff is the proprietor of the trademark “Pilot” in respect of manufactured tobacco since December, 1945. The plaintiff claims to have conceived and adopted the mark with the word “Pilot” being the most prominent feature thereof along with a distinctive figure of a pilot. The label mark was registered in Class 34 in December, 1945. The plaint says that the registration has been renewed and is valid and subsisting. Paragraph 5 of the plaint says that at the time that the plaintiff applied in November, 1999 for registration of a mark containing the word “Pilot” and a distinctive devise, again in Class 34, it claimed user since 1945 in respect of the word “Pilot.” Such application is pending. The plaint suggests that early in December, 2008 the plaintiff came across cigarettes of the defendant’s manufacture under the mark “Pilot Number One.” Paragraph 16 of the plaint records as follows:

“16. By reason of the aforesaid, the defendant is guilty of infringement of the Plaintiff’s registered trade mark and is also guilty of passing off the cigarettes manufactured by the Defendant with the mark PILOT as and for the cigarettes manufactured by the plaintiff. The defendant has wrongfully and with a mala fide intention used and imitated in the packaging of their cigarettes the essential and leading feature PILOT which is the exclusive property of the plaintiff which the plaintiff has adopted as long back as in 1945. The defendant has, further, wrongfully and illegally adopted a colour scheme, getup, style and manner of writing and layout for its product which is identical and/or deceptively similar to that of the plaintiff.”

The suit was brought in this Court on the strength of the plaintiff’s principal place of business being within jurisdiction. No leave under clause 12 of the Letters Patent has been sought though the claim is both on account of infringement and for alleged passing-off. Despite the fact that it is of little relevance in the context of the present application, it may be mentioned that the plaintiff had obtained an ad-interim order of injunction which was subsequently vacated and the only order now subsisting is for the defendant to keep accounts in respect of the products sold by and under the impugned mark. The defendant asserts that it had filed an application “for cancellation of the plaintiff’s said registered trade mark in December, 2006 …” It contends that after being served with a copy of such application for cancellation, the plaintiff carried the present action to this Court. The defendant insinuates tha