The court ruled that a suit not questioning trademark validity and filed solely for injunction does not invoke stay under Section 124 of the Trade Marks Act, 1999, emphasizing mandatory issue framing before staying proceedings.

JUDGMENT :

Neeraj Tiwari, J.

1. Heard Sri Prateek Kumar, learned counsel for the petitioners and Ms. Chhaya Gupta, learned counsel for the respondent.

2. Present petition has been filed for setting aside the impugned order dated 6.5.2024 passed by the learned Commercial Court No.2, Agra in Original Suit No. 04 of 2015 ( M/s. Bharat Industries vs. M/s Sterling Irrigation and others )

3. Pleadings are exchanged between the parties. With the consent of parties, writ petition is being decided at the admission stage itself.

4. Brief facts of the case are that petitioners-defendants has published notice in Amar Ujala on 18.6.2015 for transfer of registered trademark. Feeling aggrieved by that, respondent-plaintiff has filed Original Suit No. 4 of 2015 under Section 134 of The TRADE MARKS ACT , 1999 (hereinafter referred to as Act, 1999) upon which petitioners-defendants have filed written submission alongwith counter claim on 15.12.2015. Thereafter, respondent-plaintiff filed reply to the counter claim on 31.5.2016. On the basis of pleadings made by both the parties, learned trial Court vide its order dated 22.8.2016 had framed issues. During the pendency of suit, petitioner-defendant has filed rectification application on 1.8.2019 under Section 25(a) of Act, 1999 before the Registrar, Trademark, Kolkata whereas respondent-plaintiff has also filed rectification application under Section 25(a) of Act, 1999 before the Registrar, Trademark, Delhi on 16.11.2023. Thereafter, respondent-plaintiff has filed Application No.196 C on 1.3.2024 to stay the defendants’ counter claim (paper no. 20Ga) bearing case no. 11 of 2023. Petitioner-defendant has filed reply to the said application on 6.3.2024 and thereafter respondent-plaintiff has also filed rejoinder reply to the defendants’ reply dated 6.3.2024 on 21.3.2024. Learned Commercial Court vide impugned order dated 6.5.2024 has stayed the proceedings of counter claim No. 11 of 2023 as well as Original Suit No. 4 of 2015. Hence, the present petition.

5. Learned counsel for the petitioners-defendants submitted that present suit has not been filed for infringement of trademark rather it has been filed for permanent injunction. Likewise, counter claim has also not been filed for infringement of trademark rather it was filed for prohibitory injunction whereas Section 124 of Act, 1999 is only applicable in case suit is filed for infringement of trademark, therefore, provision of Section 124 of Act, 1999 shall not be applicable in the present case. He also pointed out that nature of suit has to be seen from the prayer i.e. relief clause and from perusal of the prayer, it is apparently clear that counter claim and suit were filed for permanent injunction as well as prohibitory injunction and not for infringement of trademark. In support of his contention, he has placed reliance upon the judgment of this Court in the case of Umesh Kumar Gupta and another vs. M/s Shree Girraj Food Products reported as 2013 (2) AII WC 2023.

6. He next submitted that Section 124 of Act, 1999 is applicable for stay of proceedings, where the validity of registration of trade mark is questioned. In the present case, from perusal of the pleadings as well as prayer either in the suit or in the counter claim, validity of registration of trademark has not been challeng