S. Ravindra Bhat, J.

IA No. 3471/2002

Learned counsel for the defendants No. 1 and 2 after some arguments states that he does not wish to press this application.

The application is accordingly dismissed as withdrawn.

IA No. 4556/2010

1. This is an application by the first two defendants seeking stay of the proceedings in the CS-2055/01 Page 2 suit under Section 124 of the Trade Marks Act, 1999. The defendants No. 1 and 2 contend that, prima facie, the plaintiff's trade mark `FT' in respect of which the present infringement action has been filed, is not distinctive. The plaintiff had claimed that the `FT' letter mark was applied for in 1987. The defendant-applicant argues that the court's enquiry has to stop and conclude at the point of time when the application was made by the plaintiff in 1987. It is submitted that there is no material on record to show that letter mark `FT' had any inherent or acquired distinctiveness as of that period and that the materials on record till date are scanty.

2. Counsel for the applicants rely upon the judgment of this Court reported as Puma Stationer P. Ltd. and Anr. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del.). It is stated that the inexonerable operation of Section 124 is such that when an application for rectification is moved before the Board, the Court at best has to be satisfied that the said request is, prima facie, tenable and if so proceed to stay the suit.

3. The plaintiff contests the application. It is pointed out that Section 124 (1) (ii) is essentially discretionary and that the Court has to first conclude an appraisal of the materials on record, that the plea of non-registrability is, prima facie, tenable. It is submitted that the present suit is based on a registered mark which was applied for in 1987 and granted in 1994. The plaintiff's counsel points to pleadings and documents, firstly to the effect that on account of a Cabinet policy, foreign newspapers were not allowed direct entry in India. It is also argued that the plaintiff had a business relationship or arrangement with the defendant as a result of which the latter benefited to a certain extent.

4. The plaintiff submits that while the text of Section 124 undoubtedly indicates that the Court has to be satisfied that the non-registrability of a mark is prima facie tenable, at the same time, the Court's approach has to be circumspect since any determination about prima facie tenability would impinge on the marks of the rectification proceedings itself. Contesting the defendant's argument, it is submitted by the plaintiff that if the Court were to accept that the marks are inherently not distinctive and, therefore, not capable or registration, and reliance were to be placed on the decisions cited by the defendant, the plaintiff would be irrevocably prejudiced in the rectification proceedings since the Board, as an inferior Tribunal would find itself constrained to follow that logic regardless of other facts.

5. It is further argued that the suit is a composite one claiming infringement as well as alleged passing off. It is argued that the Defendant Nos. 1 and 2 pleaded non-registrability in CS-2055/01 Page 3 2002 and consciously did not apply for rectification and have chosen to do so in 2007, and have now moved an application three years later in 2010, under Section 124. It has lastly argued that the defendants argument lose credibility since they have applied for an identical mark `FT' with the Trade Mark Registry.

6. This Court has carefully considered the submissions. The defendant undoubtedly has a right to contest the inherent non-distinctiveness of a trade mark either by filing an application for its rectification under Section 57 on the applicable grounds or approach the Court, if necessary. Those statutory rights cannot be interfered with by the Court. All that the Court is required to do in a situation where a rectification proceeding is pending, [a situation visualized by Section 124(1) (b) (ii)] as on the date of