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2023 Supreme(Online)(Del) 19569
HIGH COURT OF DELHI
MR RAJIV SHAKDHER, MR TALWANT SINGH, JJ
RESILIENT INNOVATIONS PVT. LTD. – Appellant
Versus
PHONEPE PRIVATE LIMITED – Respondent
RFA(OS)(COMM) 8/2021 & CM APPLs.43721-22/2021 | RFA(OS)(COMM) 11/2021 & CM APPLs.43731-32/2021 | RFA(OS)(COMM) 12/2021 & CM APPLs.43734-35/2021 | RFA(OS)(COMM) 13/2021, CM APPL.43737/2021
For the Appellants/Petitioners: Mr Ankit Jain, Mr Mohit Goel, Mr Sidhant Goel, Mr Deepankar Mishra, Mr Karmanya Dev Sharma, Mr Abhishek Kotnala, Mr Abhay Pratap Singh and Mr Aditya Chauhan
For the Respondents: Mr Sandeep Sethi and Mr Jayant Mehta, Sr. Advs. with Mr Nitin Sharma, Ms Shilpa Gupta, Ms Deepika Pokharia, Mr P.D.V. Srikar, Ms Akansha Thapa, Mr Atif, Ms Deepti Sarin, Mr Siddharth Chopra and Ms Ruby Singh Ahuja
In trademark disputes, rectification applications should remain in abeyance if issues concerning validity are raised in concurrent suits, and intra-court appeals under Letters Patent from dismissals are maintainable under the TM Act.
Headnote:(A) Trademarks Act, 1999 - Sections 57 and 124 - Appeals against dismissal of rectification applications filed by one party claiming invalidity of registered trademarks of another - Court held such appeals maintainable, ruling learned Single Judge erred in dismissing applications without framing relevant issues regarding trademark validity. (Paras 29-36)
(B) Jurisdiction and Procedure - A rectification application should not be dismissed in limine when relevant issues affecting validity could arise in concurrent proceedings. (Paras 11.6, 31.8)
(C) Appeal Procedural Framework - The exclusion of intra-court appeals under the 1999 Act not expressly stated, allowing for appeals under Letters Patent. (Paras 25.1, 26.2)
Facts of the case:
The appeals were initiated following the learned Single Judge's dismissal of six rectification applications filed by a party challenging the validity of trademarks held by another party. The dismissal was based on the ongoing infringement suit related to the disputed trademarks.
Findings of Court:
Court found procedural error in the Single Judge dismissing the applications without considering the need to frame issues of trademark validity, leading to the conclusion that these applications should remain in abeyance pending a decision in the concurrent infringement action.
Issues: The key issues involved the maintainability of the appeals against the dismissal of rectification applications and the use of the statutory framework provided by the Trademarks Act regarding concurrent trademark disputes.
Ratio Decidendi: The decision stressed the importance of fulfilling procedural requirements in trademark cases, maintaining that rectification applications need not be dismissed outright if essential issues of validity could arise from ongoing legal actions.
Result: Appeals allowed; dismissal of rectification applications set aside, and applications kept in abeyance.
| Table of Content |
|---|
| 1. dismissal of rectification applications and non-maintainability issues. (Para 1) |
| 2. preliminary objection to the maintainability of appeals. (Para 2) |
| 3. broad factual background triggering the legal dispute. (Para 3) |
| 4. arguments regarding maintainability based on legislative intent. (Para 6 , 7) |
| 5. argument on the merits concerning the applicability of section 124. (Para 11 , 12) |
| 6. analysis of the statutory provisions concerning trademark rectification. (Para 28 , 29 , 30 , 31) |
| 7. conclusion on maintainability and rectification application procedures. (Para 36) |
Preface:
1. These are appeals directed against the judgment dated 11.11.2021 [hereafter referred to as the "impugned judgment"] passed by the learned Single Judge. Via the impugned judgment, the learned Single Judge, at the notice stage, dismissed the six [6] rectification applications filed by the appellant i.e., Resilient Innovations Pvt. Ltd. [hereafter referred to as “RIPL”] preferred under Section 57 of the Trademarks Act, 1999 [hereafter referred to as the "1999 (Amended) TM Act"].
1.1 The impugned judgment based the dismissal of the rectification applications on the provisions of Section 124 of the 1999 (Amended) TM Act. The learned Single Judge has taken the view that since respondent no.1's/PhonePe Pvt. Ltd.’s [hereafter referred to as "PPL"] suit, [CS(COMM) 292/2019] was pending adjudication, in which RIPL had defended its position by, inter alia, objecting to the validity of PPL's trademarks, "Pe", 
, "Pay" or "PhonePe" etcetera, the rectification applications could not be entertained before the suit court framed an issue concerning the validity of PPL's trademarks. In this context, the learned Single Judge took note of RIPL's assertion made in the written statement that PPL's trademarks could not be protected as they were laudatory and descriptive of the services offered by PPL. Thus, in effect, the learned Single Judge opined that the provisions of Section 124 of the 1999 (Amended) TM Act prohibited the institution of a rectification application without the suit court framing an issue concerning the validity of PPL's trademarks.
1.2. In reaching this conclusion, the learned Single Judge relied upon the judgment of the Supreme Court rendered in Patel Field Marshal Agencies v. PM Diesels Limited (2018) 2 SCC 112 [hereafter referred to as the "Patel Field Marshal case"].
1.3. Although, initially, RIPL had filed six appeals, two appeals [i.e., RFA (OS) (COMM) 9/2021 and RFA (OS) (COMM) 10/2021] were withdrawn, in view of RIPL having filed opposition applications with the Trademarks Registry pursuant to the order dated 21.03.2022 passed in W.P.(C)-IPD 4/2021 and other connected matters. Pertinently, the withdrawal of the appeals was not objected to by PPL. It is in these circumstances that we are left with four [4] appeals, which, as indicated above, have emerged from the decision rendered via the impugned judgment.
2. Notably, PPL has taken a preliminary objection to the maintainability of the above-captioned appeals. It is PPL's stand that there is no appellate remedy i.e., intra-court appeal available against a judgment whereby a decision is rendered on a rectification application preferred under Section 57 of the 1999 (Amended) TM Act.
2.1 Therefore, broadly, two issues arise for our consideration. First, whether the appeals preferred by RIPL are maintainable? If this issue were to be answered in favour of PPL, then, as is obvious, we would not have to proceed to answer the second issue, which concerns the decision taken by the learned Single Judge, on the merits of the matter.
2.2 To be more precise, the second issue with which we are concerned is: whether in the given facts and circumstances of the case, the learned Single Judge has correctly applied the provisions of Section 124 of the 1999 (Amended) TM Act and the law enunciated by the Supreme Court qua the said provision in the Patel Field Marshal case?
Broad Facts:
3. Before we proceed f
