The Court affirmed the obligation to frame issues based on pleadings and clarified that trademark rectification petitions can now be addressed alongside civil suits after the abolition of the IPAB.

JUDGMENT

I.A. 16968/2022 (O-XIV R-5 of the CPC)

1. The present application has been filed on behalf of the defendant under Order XIV Rule 5 of the Code of Civil Procedure, 1908 (CPC) for framing of the following additional issues:

"(x) Whether the registration of the trademarks with the name and style of `Dehlvi', either independently or as supporting word, as mentioned in Para 12 of the plaint, in favour of the Plaintiff, are invalid and based on false user and thus, liable to be cancelled/removed? OPD

(xi) Whether the alleged Assignment Deed dated 19.09.1999 is a legally valid instrument? OPD"

2. On 29th November, 2022, the statement of counsel for the plaintiff was recorded that he does not wish to file reply and the application may be heard on the basis of oral submissions.

3. The brief facts relevant for deciding the present application are set out below:

3.1. The present suit has been filed alleging infringement of trade marks, copyright and passing off of the trademark/label "DEHLVI".

3.2. The plaintiff claims to be the proprietor of the mark "DEHLVI".

3.3. The defendant has filed written statement opposing the reliefs sought in the plaint, inter alia, pleading that the various registrations of the mark/label "DEHLVI" in favour of the plaintiff are invalid and liable to be cancelled. It has further been pleaded in the written statement that the alleged Assignment Deed dated 19th September, 1999 is a void instrument.

3.4. An application under Section 124 of the Trade Marks Act, 1999, being I.A. 311/2017, was filed on behalf of the defendant, whereby permission was sought from the Court to institute appropriate proceedings for revocation/cancellation of the plaintiff's trademarks before the Intellectual Property Appellate Board (IPAB) and for stay of the present suit.

3.5. Issues were framed in the suit on 29th April, 2019 and an observation was made by the Court that since no issue with regard to validity of the marks of the plaintiff was framed, I.A. 311/2017 was liable to be dismissed. However, the matter was listed on 26th November, 2019 for arguments on I.A. 311/2017.

3.6. In the order dated 26th November, 2019 passed by this Court, it was noted that the defendant was not pressing I.A. 311/2017 and consequently, the said application was dismissed as not pressed.

3.7. In the year 2022, various rectification petitions, including C.O. (COMM.IPD-TM) 100/2022, were filed on behalf of the defendant seeking cancellation of the registrations granted in favour of the trademark "DEHLVI".

3.8. On 19th September, 2022, another rectification petition filed by the petitioner in respect of the trademark "DEHLVI", being C.O. (COMM.IPD-TM) 100/2022, was withdrawn by the petitioner/defendant with liberty to file the petition afresh, after taking appropriate steps in the present suit.

3.9. Accordingly, the defendant has filed the present application on 8th October, 2022 for framing additional issues as aforesaid.

4. Counsel for the defendant has drawn attention of the Court to the pleadings in the written statement to contend that necessary averments have been made with regard to the invalidity of registrations of the plaintiff's trademarks and invalidity of the Assignment Deed granted in favour of the plaintiff. Therefore, issues in this regard are required to be framed. He submits that the withdrawal of the application under Section 124 of Trade Marks Act was on account of the fact that the defendant did not want the present suit to be stayed. He further submits that with the coming into effect of the Tribunals Reforms Act, 2021, the IPAB stands abolished and even the rectification applications have to be heard by this Court. Therefo