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2018 Supreme(Del) 1136
IN THE HIGH COURT OF DELHI AT NEW DELHI
S.P. GARG, J.
M/s. J.K. Oil Industries – Plaintiff
Versus
M/s. Adani Wilmar Limited – Defendant
CS (COMM) No. 109 of 2018 and IA Nos. 13188 of 2014, 7639 of 2017
Decided On : 29-05-2018
For the Plaintiffs : Mr. S.K. Bansal, Mr. Ajay Amitabh Suman.
For the Defendants : Mr. Rajiv Nayar, Mr. Sushant Singh, Mr. Saurabh Seth, Mohd. Umar Iqbal Khan.
Headnote:
Trade Marks Act - Stay of Proceedings - Sections 134, 135, 27(2) of the Act; Copy Right Act, 1957 - [124 Trade Marks Act] - [Sections 134, 135, 27(2) of the Act] - The court discussed the applicability of Section 124 of the Trade Marks Act and its mandatory nature in staying the proceedings for infringement of trademark till the final decision of pending rectifications. It also highlighted the distinction between suits for infringement and passing off, stating that Section 124 applies only to infringement suits.
Fact of the Case:
The defendant filed an application under Section 124 of the Trade Marks Act for stay of the proceedings pending final disposal of rectification application. The plaintiff had instituted a suit for permanent injunction restraining infringement, passing off, rendition of accounts, etc. against the defendant.
Finding of the Court:
The court found that the defendant had not abandoned the plea of invalidity and had filed the rectification proceedings within three months before the Board, thus staying the proceedings for infringement of trademark. However, it ruled that the proceedings for passing off would continue.
Issues: The issues revolved around the applicability of Section 124 of the Trade Marks Act, the distinction between suits for infringement and passing off, and the timing of filing rectification proceedings.
Ratio Decidendi: The court held that Section 124 of the Act is applicable only to suits for infringement and stays the proceedings till the final decision of pending rectifications. It also emphasized that the plea of invalidity must be decided by the Board and not by the Civil Court.
Final Decision: The court partly allowed the application, staying the suit for infringement of Trademark till the final decision of pending rectification, while allowing the suit for passing off to continue.
S.P. GARG, J.
IA No. 13187/2014 (u/S 124 Trade Marks Act)
1. The defendant has filed the instant application under Section 124 of the Trade Marks Act (hereinafter ‘the Act’) read with Section 151 CPC for stay of the present proceedings pending final disposal of rectification application filed by it. The application is contested by the plaintiff.
2. I have heard the learned counsel for the parties and have examined the file.
3. Present suit under Sections 134 and 135 read with Section 27(2) of the Act; Copy Right Act, 1957, has been instituted by the plaintiff for permanent injunction restraining infringement, passing off, rendition of accounts, etc. against the defendant. By an order dated 08.01.2010 in IA No. 107/2010, the defendant was restrained from using, selling, soliciting, exporting, displaying and advertising the infringing mark appended at page No. 4 of the documents filed by the plaintiff till the next date of hearing. By an order dated 10.02.2010 in IA No. 107/2010 (u/O XXXIX Rule 1 and 2 CPC, by the plaintiff) and IA No. 1405/2010 (u/O XXXIX Rule 4 CPC, by defendant), this Court by a detailed order dismissed IA No. 107/2010 and allowed IA No. 1405/2010. FAO (OS) No. 213/2010 to challenge the said order resulted in dismissal. SLP came to be dismissed by an order dated 07.07.2010.
4. On 19.09.2011, when IA No. 14894/2011 filed by the defendant came for hearing, the defendant sought leave of this Court to file rectification application before the Intellectual Property Rights Board (hereinafter ‘IPRB’). Learned counsel for the non-applicant/ plaintiff submitted that there was no necessity of filing the said application as no leave of the Court was required. In view of that, the defendant submitted that no further orders were required to be passed and that he would take appropriate steps. The said application stood disposed of that day.
5. On 15.12.2011, with the consent of the parties, issues were framed. It was pointed out by the learned counsel for the defendant that an application for rectification of the trade mark of the plaintiff was pending and in view of the order dated 19.09.2011, the defendant was entitled to file an application for rectification. Defendant’s counsel sought leave of the Court to make an appropriate application in case the application for rectification was allowed as the same would have a direct bearing to the outcome of the present suit and an additional issue would thereafter be required to be framed. The case was adjourned for recording plaintiff’s evidence.
6. When the evidence of the plaintiff was being recorded, IA No. 13187/2014 in question came to be filed by the defendant along with IA No. 13188/2014 (u/O XIV R 1 CPC). By the order dated 21.07.2014, this Court directed the Registrar not to record evidence. The said directions continued till 05.10.2015, when the Joint Registrar was permitted to record the evidence.
7. Learned counsel for the defendant urged that earlier IA No. 14894/2011 was filed due to legal compulsion, as per the law laid down in Astrazeneca UK Ltd. and Another vs. Orchid Chemicals, 2006 (32) PTC 733 Delhi, permission of the court was sine qua non for filing cancellation pending the suit. The position of law has since been changed recently in view of Full Bench judgment Data Infosys Ltd. vs. Infosys Technologies Ltd. MANU/DE/0283/2016. No effective orders were passed on 19.09.2011 in IA No. 14894/2011; it did not preclude the defendant to pray to the Court to complete the statutory mandate of Section 124 of the Act by filing the instant IA. He further urged that three months’ time to file rectification application is to commence from the date of framing of issues under Section 124(1)(b)(ii) of the Act. Cancellation petition dated 29.02.2012 was filed within three months making it fully compliant of Section 124 of the Act. The defendant had never abandoned its plea of invalidity as it always agitated the issue of invalidity from the very inception and also filed c
