The trial court must assess the prima facie tenability of a plea of trademark invalidity in infringement actions, underpinning the jurisdictional responsibility under Section 124 of the Trademarks Act.

JUDGMENT

Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.

2. The present petition challenges the impugned order dated 4th January, 2022, passed in CS (COMM) 312/19 titled Doms Industries Private Limited v. Kores India Limited, by which the application of the Petitioner/Defendant (hereinafter "Defendant") under Order XIV Rule 5 CPC for framing of additional issues has been rejected by the Commercial Court.

3. The submission of Mr. Abhishek Mishra, ld. Counsel appearing for the Defendant, is that the suit in this case was filed by the Respondent/Plaintiff (hereinafter "Plaintiff") for permanent injunction restraining infringement of trademarks, unfair trade practice, damages, etc. He submits that initially, prior to registration of the Plaintiff's marks, a suit being TM No.43/2018 titled Doms Industries Private Limited v. Kores (India) Limited, was filed by the Plaintiff against the Defendant, before the Ld. ADJ, Saket District Court (South East), Delhi, with regard to the mark "NEON" on the packaging of pencils. However, no injunction was granted against the Defendant in the said suit. The said decision dated 22nd September, 2018 is stated to have been appealed against before the High Court of Delhi. Thereafter, the present suit being CS (COMM) 312/19 was filed by the Plaintiff on the strength of five trademarks registrations bearing nos. 3689489, 3689490, 3689491, 3689492 and 3689493. In this suit, an interim injunction was granted on 5th November, 2018, which is stated to be the subject matter of challenge in another appeal before the Delhi High Court.

4. All these above trademark registrations relate to `DOMS PENCILS' which have different colour combinations and colour schemes. The case of the Plaintiff is that the Defendant's products being, "Kores Funcils Neon" is an infringement of the Plaintiff's trademarks/trade dress/etc., as they are identical to the Plaintiff's, "DOMS NEON" pencils.

5. It is the submission of ld. Counsel for the Defendant, that in this suit being CS (COMM) 312/19, when the initial issues were framed on 5th October, 2020, neither of the parties were present and so the issues relating to validity of the said trademarks and some other issues, could not be placed before the Commercial Court at that time. Accordingly, a fresh application was moved under Order XIV Rule 5 CPC read with Section 15 CPC, seeking inclusion of additional issues, which was rejected vide the impugned order.

6. Mr. Sahni, ld. Counsel for the Plaintiff, on the other hand, submits that the Plaintiff has already filed the evidence by way of affidavit and these additional issues are being sought to be canvassed at a very late stage. This ought not to be permitted.

7. Heard the ld. Counsels for the parties. The suit in the present petition relates to the five registered trademarks which are set out above, bearing nos. 3689489, 3689490, 3689491, 3689492 and 3689493. A perusal of the registered trademarks shows that they are in respect of pencils which are in different colour combinations. For quick reference, the marks which are registered are extracted below:

i) TM Application No. 3689489

Class: 16

TM Applied for: DOMS NEON (YELLOW)

Trade Mark Image: