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2018 Supreme(Del) 3209
IN THE HIGH COURT OF DELHI AT NEW DELHI
RAJIV SAHAI ENDLAW, J.
Sun Pharmaceutical Industries Limited - Plaintiff
Versus
Systopic Laboratories Limited - Defendant
Cs(Comm) 442 of 2018 & Ia No.15114 of 2018 (U/O Xiv R-5 Cpc)
Decided On : 01-11-2018
For the Plaintiff : Mr. Hemant Singh and Mr. Vaseem Shuaib Ahmed, Advs.
For the Defendant : Mr. Aasish Somasi and Ms. Imon Roy, Advs.
The court has the discretion to allow adjournment and frame additional issues based on subsequent legal developments.
Headnote:
Invalidity of Trademark Registration - Trade Mark - Code of Civil Procedure, 1908 (CPC) - Trade Marks Act, 1999
Fact of the Case:
The plaintiff sought adjournment of the suit and filed an application under Order XIV Rule 5 of CPC. The defendant sought permission to file a reply. Additional issues were framed regarding the invalidity of the defendant's trademark registration.
Finding of the Court:
The court allowed the plaintiff's application and framed an additional issue regarding the invalidity of the defendant's trademark registration. The proceedings were adjourned sine die with the liberty to apply for revival.
Issues: Adjournment of the suit, filing of additional issue regarding trademark registration invalidity
Ratio Decidendi: The court found that the plaintiff's application and the need for framing additional issues arose due to subsequent dicta of the Supreme Court. The court allowed the application and framed the additional issue.
Final Decision: The court allowed the plaintiff's application, framed an additional issue, and adjourned the proceedings sine die with liberty to apply for revival.
1. This order is in continuation of the earlier order dated 22nd October, 2018.
2. The counsel for the plaintiff states that the plaintiff will be prejudiced by disposal of the suit in the manner suggested on 22nd October, 2018 and desires to keep the suit adjourned sine die.
3. The plaintiff has also filed IA No.15114/2018 under Order XIV Rule 5 of the Code of Civil Procedure, 1908 (CPC) which has come up today for the first time.
4. The counsel for the defendant states that a reply be permitted to be filed thereto.
5. Considering the nature of the application, reply is not deemed necessary and the counsels have been heard.
6. Issues in this suit were framed on 2nd April, 2008 and vide subsequent order dated 22nd December, 2014, on the defendant filing an application for stay of the proceedings in the present suit on the ground of a rectification petition filed by the plaintiff for cancellation of the defendant’s mark and which was pending before the Intellectual Property Appellate Board (IPAB), the proceedings in the suit with respect to claim for infringement of trade mark were stayed and the proceedings with respect to passing off ordered to continue. However, vide subsequent order dated 21st April, 2017, the proceedings qua passing off also were stayed and the following additional issue framed:
“Whether the use of trade mark “ORVAS” by the defendant amounts to infringement of the plaintiff’s registered trade mark “STORVAS”? OPP”
7. The plaintiff now seeks framing of yet another issue as under: “Whether the registration of the trade mark “ORVAS” in the name of the defendant under trade mark registration No.1328403 is invalid, and liable to be cancelled? OPP”
8. It is pleaded in the application that in terms of dicta of the Supreme Court in Patel Field Marshal Agencies Vs. P.M. Diesels Limited (2018) 2 SCC 112 pronounced on 29th November, 2017, the framing of the said issue is essential.
9. The counsel for the plaintiff has also argued that the plaintiff, at the time of institution of this suit was not aware of the registration of the trade mark of the defendant and learnt of the same for the first time from the written statement of the defendant and has in the replication inter alia pleaded as under:
“The Plaintiff further submits that the Defendant as on the date of its application for registration of trademark “ORVAS” was very much aware that its alleged mark “ORVAS” as usual being phonetically and usually similar to not only being similar to Plaintiff’s well-known mark “STORVAS”, is also incapable of registration, as it falls under absolute grounds for refusal of registration enumerated under Section 9 of the Trade Marks Act, 1999, being non-distinctive, descriptive or generic.”
with respect to the invalidity of the mark of the defendant and thus an issue qua invalidity is required to be framed.
10. The counsel for the defendant has argued, firstly, that the plaintiff in the aforesaid paragraph having claimed similarity in its mark and in the mark of the defendant and having also pleaded that the mark of the defendant is non-distinctive, descriptive or generic, it would follow that the mark of the plaintiff also is non-distinctive, descriptive or generic and once it is so, the registration in favour of the plaintiff also is bad and no question of framing any issue qua the plea of invalidity is made out. It is also argued that as per Patel Field Marshal Agencies supra, the Court has to return a prima facie finding with respect to the plea of invalidity of registration.
11. The counsel for the plaintiff has contended that the plaintiff, in the paragraph reproduced above has pleaded that the defendant was not entitled to registration of its mark for the reason of the mark of the defendant, of which registration was sought, being similar to the previously registered mark of the plaintiff. Attention in this regard is invited to Section 9(2)(a) and Section 11(1)(a) of the Trade Marks Act, 1999. It is also argued that the Division B
