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IN THE HIGH COURT OF GUJARAT
R. BALIA, J.
Patel Field Marshal Agencies - Petitioner
Versus
P.M. Diesels Ltd. - Respondent
O.J. Appeals Nos. 45 of 1998 in Rectification Application No. 2 of 1997.
Decided on : 25-11-1998
TRADEMARK - RECTIFICATION - LIMITATION - APPLICABILITY - JURISDICTION - HIGH COURT - TRIBUNAL - DISTINCTION - SECTION 111 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - APPLICABILITY - INTERPRETATION - SCOPE - EFFECT - RAISING OF ISSUE OF INVALIDITY - PROCEDURE - STAY OF SUIT - FRAMING OF ISSUE - ABANDONMENT OF ISSUE - FAILURE TO FILE RECTIFICATION APPLICATION - CONSEQUENCES - MAINTAINABILITY OF RECTIFICATION APPLICATION - CONDITIONS - PLEADINGS - RELEVANCE - CONSIDERATION - APPLICABILITY OF LIMITATION ACT - RESIDUARY ARTICLE 137 - STARTING POINT OF LIMITATION - PERSON AGGRIEVED - DETERMINATION - GROUNDS FOR INVALIDITY - CRYSTALLIZATION OF COMPLETED WRONG - AMENDMENT OF WRITTEN STATEMENT - EFFECT ON LIMITATION - COURT'S REFRAINING FROM EXPRESSING OPINION.
Fact of the Case:
The appellants filed three separate applications in respect of each of the trade marks for rectification, under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter called `the Act of 1958') in this court. The three applications have been refused to be entertained by this court by learned Single Judge, inter alia, on the ground that the applications are barred by time and also on the ground that the applicant in each case is not entitled to maintain the applications.
Finding of the Court:
1. The applications are barred by law of limitation. 2. The applicants are not entitled to maintain their petition because they have failed to raise the contention in their written statement in response to summons of suit. 3. The plea of invalidity of registration of mark has been unequivocally stated in the written statement submitted in Suit No.1612 of 1989 in High Court of Delhi and therefore the finding of learned Single Judge that the applicants-appellants had failed to raise a contention in the written statement about the invalidity of registration of mark in favour of respondent is an incorrect statement of fact. 4. The scheme of Section 111 of the Act of 1958 is wholesome to avoid multiplicity of proceedings on frivolous grounds that withhold the proceedings which is founded on a trade mark which carried with it presumption of validity whether rebuttable under Section 31 or conclusive under Section 32. 5. The defendant in the suit has abandoned the plea after raising the same in the suit when the suit is pending trial before the Delhi High Court. 6. The appellant must be deemed to have abandoned the plea during the trial of suit. 7. The appellant is not entitled to maintain an application de hors Section 111 of the Act of 1958. 8. The High Court exercising jurisdiction under Trade & Merchandise Marks Act is not a Tribunal but is a court. 9. The application made under the Special Act, namely, the Act of 1958 when it is made to the High Court it is an application under a Special Act made to the Court and unless excluded by express provision or by necessary implication of provisions of such special law, the provisions of Limitation Act would be attracted. 10. The grounds on which plea of invalidity of registration of mark, that has been raised or could have been raised on facts existing on the date plea of invalidity of such mark has been raised in the suit will be starting point of limitation for filing a rectification application arising under the plea.
Issues: 1. Whether the applications are barred by law of limitation? 2. Whether the applicants are entitled to maintain their petition? 3. Whether the plea of invalidity of registration of mark has been unequivocally stated in the written statement submitted in Suit No.1612 of 1989 in High Court of Delhi? 4. Whether the scheme of Section 111 of the Act of 1958 is wholesome to avoid multiplicity of proceedings on frivolous grounds? 5. Whether the defendant in the suit has abandoned the plea after raising the same in the suit when the suit is pending trial before the Delhi High Court? 6. Whether the appellant must be deemed to have abandoned the plea during the trial of suit? 7. Whether the appellant is entitled to maintain an application de hors Section 111 of the Act of 1958? 8. Whether the High Court exercising jurisdiction under Trade & Merchandise Marks Act is a Tribunal or a court? 9. Whether the application made under the Special Act, namely, the Act of 1958 when it is made to the High Court it is an application under a Special Act made to the Court and unless excluded by express provision or by necessary implication of provisions of such special law, the provisions of Limitation Act would be attracted? 10. Whether the grounds on which plea of invalidity of registration of mark, that has been raised or could have been raised on facts existing on the date plea of invalidity of such mark has been raised in the suit will be starting point of limitation for filing a rectification application arising under the plea?
Ratio Decidendi: 1. The applications are barred by law of limitation as no recurring cause of action is arising in favour of petitioners-applicant's and also that on account of applicants' failure to raise a contention in their written statement about the invalidity of trade mark when they were served with the suit summons disentitle them to raise this plea now. 2. The applicants are not entitled to maintain their petition because they have failed to raise the contention in their written statement in response to summons of suit is an incorrect statement of fact as the plea of invalidity of registration of mark has been unequivocally stated in the written statement submitted in Suit No.1612 of 1989 in High Court of Delhi. 3. The scheme of Section 111 of the Act of 1958 is wholesome to avoid multiplicity of proceedings on frivolous grounds that withhold the proceedings which is founded on a trade mark which carried with it presumption of validity whether rebuttable under Section 31 or conclusive under Section 32. 4. The defendant in the suit has abandoned the plea after raising the same in the suit when the suit is pending trial before the Delhi High Court. 5. The appellant must be deemed to have abandoned the plea during the trial of suit. 6. The appellant is not entitled to maintain an application de hors Section 111 of the Act of 1958. 7. The High Court exercising jurisdiction under Trade & Merchandise Marks Act is not a Tribunal but is a court. 8. The application made under the Special Act, namely, the Act of 1958 when it is made to the High Court it is an application under a Special Act made to the Court and unless excluded by express provision or by necessary implication of provisions of such special law, the provisions of Limitation Act would be attracted. 9. The grounds on which plea of invalidity of registration of mark, that has been raised or could have been raised on facts existing on the date plea of invalidity of such mark has been raised in the suit will be starting point of limitation for filing a rectification application arising under the plea.
Final Decision: The appeal is dismissed.
JUDGMENT :
R. Balia, J.
These three appeals are by same set of appellants, namely, Patel Field Marshal Agencies and Patel Field Marshal Industries against the same set of respondents, namely, P.M. Diesels Ltd. and two others, the Registrar of Trade Marks and Asst. Registrar of Trade Marks. The respondent P.M. Diesels Ltd., the registered proprietor of three trade marks, common feature of which is words FIELD MARSHAL and another trade mark using letters FM. The appellants had filed three separate applications in respect of each of trade marks for rectification, under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (Hereinafter called `the Act of 1958') in this court. The three applications have been refused to be entertained by this court by learned Single Judge, inter alia, on the ground that the applications are barred by time and also on the ground that the applicant in each case is not entitled to maintain the applications. The order of learned Single Judge dated 15.4.1998 by which the aforesaid three applications have been rejected is subject matter of appeal in all the three appeals. In the circumstances, we have heard the same together and propose to decide by a common order.
2. The facts necessary for the present purposes briefly stated are that respondent No.1 secured registration of its mark in question vide registration No. 224879, 252071 and 252070 dated 16.10.64, 4.10.68 and 4.10.68 respectively. The present appellants were served with a legal notice dated 23.7.1982, calling upon the appellants to desist from using the trade mark MARSHAL which is being used by them, and forms part of the word forming part of the registered trade mark of respondent FIELD MARSHAL, which was replied to by the appellants. A suit was filed by respondent No.1 being Regular Civil Suit No. 1612 of 1989 in the High Court of Delhi for infringement of respondent's trade mark. The applicants filed their written statement to the said suit. Though the petitioner has stated in para 22 of his rectification that the petitioners have filed a written statement, the petitioners seek leave to refer and rely on the averments made in the written statement so filed, in the present proceeding, whenever the same is required, a copy of the written statement is being filed in the proceedings, the same appears to have not been filed along with the rectification application which has now been made available by learned counsel for the respondent according to which the applicants raised dispute about validity of plaintiff's trade mark in that suit, and issues have been framed in the suit to which we shall refer later on.
3. Before the learned Single Judge, two questions posed for decision at that stage were whether present three rectification applications are barred by limitation and whether present proceedings are misuse of the process of law and not tenable in law. The applicant had contended that law of limitation is not applicable to proceedings under the Act of 1958. It is urged that Limitation Act by itself does not apply, and no period being prescribed for making rectification application, no period of limitation can be envisaged for holding the present rectification application as barred by time. On the other hand it has been contended by learned counsel for the respondent that no specific period having been prescribed under the Act of 1958, as the application has been made to High Court which is a civil court, Limitation Act would apply to all applications made to this court and in the absence of any specific provision, residuary Article 137 of the Limitation Act would govern the issue of limitation.
4. The applicants also contended that even if limitation Act were to apply, cause of action for filing rectification application is a continuing cause of action, and therefore period of limitation starts anew every day during the continuance of wrongful entry in the register of trade marks and therefore the rectification applications filed before
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