IAs No.8/2018 & 9/2018 (both of the plaintiff under Order XIV Rule 1 CPC and under Section 124 of the Trade Marks Act, 1999)

1. Though these applications have come up before this Court for the first time today but the counsel for both the defendants appearing on advance notice has already filed replies thereto and which are on record and the counsel for the plaintiff states he has received copies of the said replies. The counsels have been heard.

2. The plaintiff has instituted the present suit inter alia for permanent injunction to restrain the defendants from infringing the trademark “ANAFORTAN” of the plaintiff by adopting the trade mark “AMAFORTEN” for the same medicinal preparations and to restrain the defendants from passing off their medicinal preparations as that of the plaintiff and for ancillary reliefs.

3. The suit was entertained and summons thereof ordered to be issued though no ex parte injunction granted. Vide subsequent judgment dated 25th April, 2014, the defendants were restrained by interim injunction from, till the pendency of the suit, using the trade mark “AMAFORTEN” or any other trade mark deceptively similar to the trade mark “ANAFORTAN” of the plaintiff. The appeal being FAO(OS) No.281/2014 preferred by the defendants did not meet with any success and was disposed of on 10th September, 2014. The said interim injunction has thus attained finality.

4. The plaintiff, in the plaint as originally filed, admitted knowledge of registration of trade mark “AMAFORTEN” in favour of defendant no.1 and after institution of this suit, before framing of issues and without seeking any permission of this Court and without applying under Section 124 of the Trademarks Act, 1999, filed a Rectification Application in the Intellectual Property Appellate Board (IPAB) with respect to registration of the trade mark of defendants.

5. On 21st March, 2016, the following issues were framed in the suit and the parties relegated to trial:

“(i) Whether the defendant’s use of the trademark AMAFORTEN amounts to infringement of the plaintiff’s registered trademark AMAFORTAN? OPP

(ii) Whether the suit for infringement of the trademark of the plaintiff is barred as defendant is also a registered proprietor of the trademark in view of Section 28(3) read with Section 29 and Section 30(2)(e) of the Trade Mark Act, 1999? OPD.

(iii) Whether this court has territorial jurisdiction to try the present suit? OPP

(iv) Whether the defendant is passing off its goods as that of the plaintiff ? OPP

(v) Whether the plaintiff is entitled to the relief of injunction and damages, if so at what amount? OPP

(vi) Relief.”

6. The plaintiff filed IA No.14337/2017, under Section 124 of the Act, which came up before this Court on 4th December, 2017. Finding that no issue on any plea of invalidity had been urged or been framed and on the statement of the counsel for the plaintiff that he will be applying for amendment of the issues, vide detailed judgment dated 4th December, 2017, the said application was dismissed with liberty to the plaintiff to apply afresh if files an application for amendment of the issues and if the said application succeeds.

7. Hence, these applications.

8. The plaintiff seeks framing of the following additional issue:-

“Whether the registration of the impugned mark AMAFORTEN bearing registration no.1830060 obtained by defendant no.1 is invalid and liable to be rectified? OPP”

and stay/adjournment of proceedings in the suit till the time the rectification application being ORA/119/2013/TM/KOL filed by plaintiff before IPAB in respect of defendant no.1’s trade mark registration no.1830060 in class 5 is finally adjudicated and decided.

9. The counsel for the defendants has at the outset argued that the plaintiff, in the plaint as originally filed, pleaded knowledge of the registration of the defendants’ mark and pleaded that he will be filing an application for rectification of the Trade Marks Register; however, the plaintiff while filing the amende