Trademark rectification petitions require a triable issue on validity to proceed; without this, claims are not maintainable under the Trade Marks Act, 1999.

ORDER :

N. ANAND VENKATESH, J.

Application No.11 of 2024 has been filed under Section 124 of the Trade Marks Act, 1999 (for short, the Act) to dismiss the rectification petition filed in O.P.No.471 of 2023.

2. Heard both.

3. The facts leading to filing of the present application are as follows:

(i) The first respondent in A.No.11 of 2024 filed the main original petition for removal of the trade mark “ORBIT THE CABLE PEOPLE (DEVICE)” registered under No.1065474 in Class 9 on the ground that they are engaged in the business of manufacturing, marketing and trading of electrical lighting bulbs including CFL and LED lightings, that in the year 2002, they commenced the business of manufacturing and marketing of machines and motor tools and adopted the trade mark/ label ‘ORBIT” in relation to the said goods, that this trade mark was extended for other products also in the year 2008, that the first respondent obtained registration of the trade mark ‘ORBIT” in Class 11 and that it is valid, legal, subsisting and is in force by virtue of the said registration.

(ii) The first respondent raised further grounds that apart from the above registration of the trade mark, the first respondent had also filed various other applications, which are pending consideration seeking for device and word mark ‘ORBIT”, that they are continuously promoting their goods and business under the trade mark/label “ORBIT” and that it has become their distinct indicium, goods and the business they conduct. Thus, the first respondent is claiming that the trade mark/label is a well known trade mark.

(iii) The grievance of the first respondent was that the applicant herein had adopted an identical/deceptively similar trade mark in relation to their goods. Hence, the first respondent filed the petition before the Intellectual Property Appellate Board, Chennai for rectification and for the removal of the trade mark registered in the name of the applicant herein. The petition filed by the first respondent was transferred to the file of this Court and renumbered as (T) O.P. (TM) No.471 of 2023.

(iv) During the pendency of the said original petition, the present application has been filed by the applicant under Section 124 of the Act on the ground that there are several proceedings pending between the same parties before the Trade Mark Registry both at Chennai and at Delhi, that the applicant filed a suit against the first respondent for infringement and passing off of the trade mark “ORBIT” before the Additional Court, Patiala House Courts (PHC), Delhi, which is numbered as C.S.(Comm.) No.278 of 2019 and that similarly, the first respondent herein, which is the petitioner in the main original petition, instituted a suit against the applicant herein in O.S.No.301 of 2019 before the very same Court for infringement and passing off of the trade mark “ORBIT”, that after completion of the pleadings, the issues were framed by the Trial Court on 03.3.2022.

(v) The specific case of the applicant is that there is no particular issue on the invalidity of the trade mark registrations of the applicant and that similarly, even in the suit that was filed by the first respondent, they have not raised a plea for invalidity of the trade mark registrations belonging to the applicant and that the plea of invalidity of the trade mark registrations is not even a subject matter in both the suits. Considering the abo