JUDGMENT

(Common Prayer: Transfer Original Petition (Trade Marks) filed under Section 47, 57, 125 of the Trade Marks Act, 1999 and Rule 92 of the Trade Marks Rules, 2002 prays (a) that the present Application for rectification of the impugned trade mark “Nalli” may be allowed and the registration of the trade mark “Nalli” under number Nos.472754 & 903811 in class 24 and class 25 may be cancelled and entry relating thereto may be altogether removed from the Registrar of Trade Marks; (b) In the alternative to prayer (1), the Hon'ble Court may be pleased to limit and/or quality the trademark registration nos.472754 & 903811 in class 24 and class 25, with a disclaimer that the Respondents do not have any exclusive right over the word “Nalli” and the Petitioner is also entitled to use the mark “Nalli”; (c) the costs of these proceedings be awarded to the Applicant.)

Common Order

1. In both these rectification petitions, the first respondent raised an objection to the maintainability of the petitions. Such objection was raised on the ground that a suit for infringement was filed earlier by the first respondent against the petitioner herein in relation to Trade Mark Nos.472754 and 903811, which are the subject of the present rectification petitions. The said suit was filed and numbered as Commercial Suit No.108 of 2013 before the Bombay High Court. The first respondent asserts that the present rectification petitions were filed about four or five years later before the Intellectual Property Appellate Board in ORA Nos.17 and 18 of 2018. In spite of the rectification petitions being filed subsequently, the first respondent states that the Bombay High Court did not conclude that there is a triable issue on the validity of the registrations of the relevant trade marks and frame an issue thereon. Since such issue was not framed, it is submitted that the present petitions are liable to be dismissed as not maintainable.

2. Learned counsel for the petitioner contended that the right to maintain a rectification petition is an independent right inter alia under Section 57 of the Trade Marks Act, 1999 (the Trade Marks Act). According to learned counsel, the said right is not subject to Section 124 of the Trade Marks Act. In support of this contention, learned counsel referred to the judgment of the Delhi High Court in Anubhav Jain v. Satish Kumar Jain & another(Anubhav Jain), 2023/DHC/000233. In particular, learned counsel relied upon paragraphs 17, 19, 24 to 26 and 30 of the said judgment.

3. After pointing out that two suits are pending before the Bombay High Court, including a suit filed by the petitioner herein, learned counsel relied upon the judgment of the Delhi High Court in Sana Herbals Pvt Ltd v. Mohsin Dehlvi, 2022/DHC/005678, to contend that both the suits and the rectification petitions may be clubbed and heard by the High Court so as to preclude the possibility of conflicting decisions. Learned counsel next relied upon the principle of constructive res judicata to contend that it is not open to the first respondent herein to challenge the maintainability of the rectification petitions after acceding to the consolidation of the two suits before the Bombay High Court. In conclusion, learned counsel relied upon the judgment of the Supreme Court in BGS SGS Soma JV v. NHPC Ltd. (2020) 4 SCC 234 to contend that the judgment of a court is not to be read as a statute or as Euclid's theorem.

4. In response to these contentions, learned counsel for the first respondent submitted that the suit for infringement was filed by the first respondent before the Bombay High Court in the year 2013. By pointing out that the present rectification petitions were filed in late 2017 and numbered in 2018, learned counsel submits that Section 124(1)(a)(ii) is clearly applicable to the facts of this case. Consequently, he submits that the petitioner should have requested the Bombay High Court to frame an issue on the validity of registration of the relevant trade