Point of Law : Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act

JUDGMENT :

ASHA MENON, J.

C.O. (COMM.IPD-TM) 40/2021, I.A.14647/2021

C.O. (COMM.IPD-TM) 41/2021, I.A.14648/2021

C.O. (COMM.IPD-TM) 42/2021, I.A.14649/2021

C.O. (COMM.IPD-TM) 43/2021, I.A.14650/2021

C.O. (COMM.IPD-TM) 44/2021, I.A.14651/2021

C.O. (COMM.IPD-TM) 45/2021, I.A.14652/2021

(HYBRID HEARING)

1. These petitions have been moved for the removal/rectification of trademark Registration Nos.3425319, 3425322, 3425323, 3425317, 3425326 and 3425325 respectively in Classes 36, 9, 35 and 42 from the Register of Trade Marks under Section 57 of the Trade Marks Act, 1999.

2. Mr. Sandeep Sethi, learned senior counsel appearing on advance notice on behalf of the respondent No.1/Phonepe Private Limited has raised a preliminary objection to the maintainability of the present petitions. It is his submission that a prior suit being CS(COMM) 292/2019 is pending between the same parties, in which, in terms of the provisions of Section 124 of the Trademarks Act, 1999, no application has been moved before that Court seeking permission to file the present rectification petitions. Learned senior counsel for the respondent No.1 has handed over a copy of the written statement filed by the petitioner herein in CS(COMM) 292/2019 and has drawn the attention of the Court to various paragraphs in the written statement to submit that the present petitions, in the absence of permission from the Civil Court were invalidly filed. Reliance has also been placed on the judgment of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112.

3. Mr. Rajshekhar Rao, learned senior counsel on behalf of the petitioner however, submits that at the time of filing of the rectification petitions, no suit was pending in which any challenge to the validity of the registration of the Trademarks in the name of the respondent no. 1 had been raised. Therefore, there was no occasion for permission. It is further contended that these rectification proceedings could be initiated because even Section 124 of the Trademarks Act, 1999 does not mandate a challenge being raised to the validity of the trademarks in every proceeding for trademark infringement and passing off. It was explained by the learned senior counsel for the petitioner that in CS (COMM) 292/2019, the respondent no.1 being the plaintiff therein, had initiated action against the present petitioner on grounds for infringement and passing off by the use of deceptively similar trademarks. However, the Coordinate Bench of this Court in CS (COMM) 292/2019 had declined any interim relief to them, observing that the Word “Pe” would be “descriptive of the service” being provided. It was submitted by learned senior counsel that in view of these observations, the registration was clearly hit by Section 9(1)(a) of the Trademarks Act, 1999. Therefore, the registration was improper and the present rectification proceedings were maintainable. It was further submitted that the cause of action in the present rectification proceedings was the filing of objections by the respondent no. 1 herein to the application for registration of the trademark ‘Postpe’ by the present petitioner and was not connected with CS (COMM) 292/2019 where the question related to the use of the trademark ‘BharatPe’ by the present petitioner.

4. The Supreme Court in Patel Field Marshal Agencies (supra) in has observed:-

“34. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter-alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only