Point of Law: Intellectual Property Law - Infringement of Trade mark - Passing off - while suit for infringement of trade mark has to be stayed under Section 124 of Trade Marks Act, when a rectification petition is filed before IPRB, an action for passing off could continue.

JUDGMENT :

[Via Video Conferencing]

1. This petition has been filed under Article 227 of the Constitution of India seeking an order to quash and set aside the impugned order dated 6th April, 2021 passed by the learned ADJ-02, Central Delhi, Tis Hazari Courts, Delhi; allow the application under Section 5 of the Limitation Act, 1963 dated 30th December, 2020 filed by the petitioner; and, further allow the Review Petition under Section 114 of the Code of Civil Procedure, 1908 (“CPC”, for short) dated 22nd January, 2018 filed by the petitioner in Suit bearing CS No.312/2015, titled “Parveen Kumar Gupta v. Mr. Ravi Chadha & Ors.”, pending before the learned Trial Court.

2. The petitioner is aggrieved on account of the fact that his suit, which he had filed against the defendants for infringement of his proprietary trade mark “RACER” as also passing off their goods as that of the petitioner and other reliefs, was stayed by the learned Trial Court vide order dated 6th March, 2017. This order, he challenged, by way of CM (M) 737/2017, which was disposed of vide order dated 6th December, 2017 permitting the petitioner to withdraw that petition and granting liberty to approach the Tribunal (sic.) by Review Petition. Thereafter, the petitioner filed a Review Petition, but the learned Trial Court was of the view that the application for review had been filed beyond the period of limitation. As a result, the petitioner filed an application under Section 5 of the Limitation Act for condonation of delay on the ground that time had been spent before the Hon’ble High Court in pursuing the CM (M) petition. However, the learned Trial Court rejected the application under Section 5 of the Limitation Act and observed that since the High Court, while disposing of the CM (M), had not commented on limitation, no ground for condonation of delay was made out. As a result thereof, the Review Petition was also dismissed.

3. Mr. S.K. Bansal, learned counsel for the petitioner has relied upon the judgment of this court in J. K. Oil Industries v. Adani Wilmar Limited, 2018 SCC OnLine Del 9367 to submit that when a suit was filed for infringement of trade mark as also for passing off, the filing of a rectification petition before the Intellectual Property Rights Board (“IPRB”, for short) would result in the stay of the suit as far as infringement of trade mark was concerned under Section 124 of the Trade Marks Act, 1999, but that suit with regard to passing off was to continue. Hence, it was prayed that the review of the order dated 6th March, 2017 be allowed and the suit be directed to be continued qua the passing off.

4. Mr. Ashish Deep Verma, learned counsel for the respondents, on the other hand, submitted that the court was empowered, even without objections being taken, to satisfy itself regarding limitation, when any suit or application or appeal is filed before it. Therefore, merely because the respondents had not raised such an objection, would not prevent the court from looking into the issue of limitation. Further, it was submitted that the application for condonation of delay was filed three years after the order dated 6th March, 2017 and the filing of the application for review. There was no explanation whatsoever for not filing the application for condonation of delay during this entire time. Therefore, the learned Trial Court was justified in not condoning the delay.

5. With regard to the prayer of the petitioner for continuing the suit for passing off, the learned counsel submitted that since an injunction was already in force against the respondents and the respondents were not using the trade mark “RACER”, no prejudice was being caused to the petitioner, if the suit waited for the disposal of the rectification petition filed by the respondents before the IPRB. Thus, the learned counsel submitted that the present petition deserved to be dismissed.

6. In response, learned counsel for the petitioner submitted that since the High Court had allowed the