The main legal point established in the judgment is the application of Section 111 of the Trade and Merchandise Marks Act, 1958, in determining the stay of proceedings in a suit for infringement of a registered trademark, and the distinction between the cause of action for infringement and passing off.

JUDGMENT :

Malimood Ali Khan, J.

The defendant has filed this application for stay of the proceedings in the suit till the rectification proceedings No. DEL 721 in respect of the trademark No. 34820 in clause 12 are finally disposed of as required by Section 111 of Trade and Merchandise Marks Act, 1958 (for short the Act).

2. In the application it is alleged that the suit is filed by the plaintiff on the allegation of infringement of its registered trademark No. 34820 in clause 12 which in the name of one Subhash Gupta who was trading as M/s. Safari Cycles. Subhash Gupta is not a party to this suit. The defendant No. 3 M/s. Safari International of which the defendant No. 1 and Smt. Rekha are partners had filed a rectification petition under Sections 46 and 56 of the Act. This business was constituted in the year 1994-95 and soon thereafter they filed a rectification application against the aforesaid registered trademark on 24.2.1995 before the Registrar of Trademarks, New Delhi which is pending. The rectification is sought, inter alia, on the ground of non user in terms of Section 46 of the Act. The present suit was filed after the filing of the rectification application and the plaintiff has a distinct and separate legal entity from that of Mr. Subhash Gupta who was the registered proprietor of the said trademark in question.

3. The plaintiff contested this application and stated that the rectification proceedings came to the notice of the plaintiff only after the written statement was filed by the defendant. The suit of the plaintiff is bona fide. Section 111(1)(b)(i) of the Act provided for stay of the suit if there was prior rectification. Sub-section (5) of the said section however did not prohibit the grant of interlocutory order, even if the proceedings in the suit are stayed. Other allegations were also traversed.

4. At the hearing of arguments it was submitted on behalf of the defendant that the rectification application filed by the defendant has since been allowed by the Registrar of Trademarks and necessary rectification in the register of trade marks has been carried out which has been challenged by the plaintiff before the High Court in an appeal which is still pending. Accordingly it is submitted that in view of Sub-section (1) of Section 111 of the Act the proceedings in the suit are liable to be stayed till the said appeal is decided. It is canvassed that Sub-Clause (i) of Clause (b) of Sub-section (1) of Section 111 of the Act would apply to the case since rectification application was pending when the instant suit was instituted. Support of this argument is sought from the judgments in Patel Field Marshal Agencies v. P.M. Diesels Ltd., 1999 (19) PTC 718, Mohd. Rafiz Mohd. Shafiq v. Modi Sugar Mills Ltd. Modinagar, (1970) 2 Delhi 47 and Whirlpool Corporation Vs. Registrar of Trade Marks, Mumbai and Others, AIR 1999 SC 22.

5. The counsel for the plaintiff has not disputed that the application for rectification of the entries in register of trademark has been allowed by the Registrar of Trademarks and that an appeal against the order of rectification was preferred in the High Court which is pending. However, it is argued that Section 111 of the Act is not attracted in this case because the rectification was sought on the ground of non-user of the registered trademarks since 1985 and not on the ground of it being invalid Drawing attention to the head note of Section 111 it was submitted that the section required stay of the proceedings in the suit where the validity of the registration of the trademarks was questioned and since there was no dispute about the validity of the registration of trademark in the name of Mr. Subhash Gupta so proceedings in this suit are not liable to be stayed. In the alternative it is submitted that the suit is filed for infringement of the trademark and passing off the defendant's goods as that of the plaintiff and the cause of action is distinct and separate, Therefore, even if the procee