A trademark rectification petition is not maintainable if the validity is contested in a prior ongoing suit, as per the Trade Marks Act, 1999.

JUDGMENT

Amit Bansal, J. (Oral)

I.A. 4831/2022(of the respondent no.1 u/s 151 of CPC)

1. The present rectification petition has been filed on behalf of the petitioner for rectification of the trademark register qua trademark registration no.1252812, which is registered in class 99 (classes 38 and 41) in favour of the respondent no.1 since 2nd December, 2003.

2. The present application has been filed on behalf of the respondent no.1 seeking dismissal of the aforesaid rectification petition.

3. Notice in this application was issued on 5th March, 2022 and reply has been filed on behalf of the respondent no.1. Rejoinder thereto has also been filed on behalf of the respondent no.1.

4. Counsel for the respondent no.1 submits that the petitioner was aware of the registration in favour of the respondent no.1 as far back as on 6th June, 2018 and despite a suit, being CS(COMM) 253/2019, having been filed by the petitioner against the respondent no.1 on 10th May, 2019, the petitioner took no steps to have a preliminary issue framed on the alleged invalidity of the respondent no.1's trademark. Therefore, in view of the judgment of the Supreme Court in Patel Field Marshal Agencies and Anr. v. P.M. Diesels Limited and Ors., (2018) 2 SCC 112, followed by a Coordinate Bench of this Court in Resilient Innovations Pvt. Ltd. v. Phonepe Private Limited & Anr., (2021) 88 PTC 610, the present rectification petition filed on behalf of the petitioner is not maintainable.

5. Counsel for the respondent no.1 has placed reliance on the pleadings in the aforesaid suit to submit that the mark in respect of which rectification is sought by the petitioner herein, was subject matter of the aforesaid suit. Therefore, in terms of Section 124 read with Section 30(2)(e) of the Trade Marks Act, 1999, a preliminary issue would be required to be framed in the aforesaid suit before a rectification application can be filed.

6. Per contra, the counsel for the petitioner submits that the impugned trademark registration, which is the subject matter of the rectification petition, is not in issue in CS(COMM) 253/2019. In the said suit, the petitioner has claimed proprietary rights over the trademark "NOW" and "NOW" formative marks including "ENOW". Reference is this regard has been made to paragraphs 19, 20 and 21 of the plaint in CS(COMM)253/2019. Hence, the petitioner herein has sought injunction against the respondent no.1 using the trademarks "E! NOW" and "E! NEWS NOW". Therefore, it is submitted that the judgments relied upon by the respondent no.1 are not applicable in the facts of the present case.

7. I have heard the counsels for the parties.

8. Section 30(2)(e) and Section 124(1) of the Trade Marks Act, 1999 are set out hereunder:

"30. Limits on effect of registered trade mark. -

2. A registered trade mark is not infringed where-

(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act."

...

"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.-

(1) Where in any suit for infringement of a trade mark-

(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark,

the court trying the suit (he