CS(COMM) 363/2017 Page 1 of 21

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IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 23.08.2022

Date of decision: 01.09.2022

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CS(COMM) 363/2017

PERFETTI VAN MELLE S.P.A & ANR.

..... Plaintiffs

Through:

Mr.Sushant Singh, Ms.Geetika

Kapur, Mr.Kunal Khanna, Advs.

versus

SURESH NANIK LILARAM HINGORANI & ORS.

..... Defendants

Through:

Mr.Anirudha

Valsangkar,

Mr.Nikhil Lal, Advs. for D-1,2 &

4 to 7.

CORAM:

HON'BLE MR. JUSTICE NAVIN CHAWLA

NAVIN CHAWLA, J.

I.A. 10775/2018

1. The present application has been filed by the plaintiffs under

Section 124 of the Trade Marks Act, 1999 (in short, ‘the Act’) praying

for the following reliefs:

section 124 of Trade Marks Act, 1999.”

FACTUAL BACKGROUND

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CS(COMM) 363/2017 Page 2 of 21

2. The present suit has been filed by the plaintiffs inter alia praying

for a decree of permanent injunction restraining the defendants by

themselves, their partners, directors, employees, agents and others acting

on their behalf from infringing the plaintiffs’ registered trade mark

‘CHUPA CHUPS’, by manufacturing, marketing, selling and offering

for sale their goods bearing the impugned mark ‘HARNIK CHUPA

CHUP’ or any other trade mark which is identical and/or deceptively

similar to the plaintiffs’ registered trade mark ‘CHUPA CHUPS’.

3. In the written statement filed on behalf of the defendant nos.1, 2

and 4 to 7, the said defendants have inter alia pleaded that as their mark

‘HARNIK CHUPA CHUP’ is registered with the Registrar of Trade

Marks, no suit for infringement of trade mark is maintainable under

Sections 28(3), 30(2)(e) and 70(2)(i) of the Act . They further submit

that the present suit is liable to be stayed in view of the operation of

Section 124(1)(b)(i) of the Act, as the plaintiff no. 1 has filed a

rectification application on 13.05.2011 (prior to the filing of the instant

suit on 07.12.2012), seeking cancellation of the registrations granted to

the defendants’ trade mark ‘HARNIK CHUPA CHUP’.

SUBMISSIONS ON BEHALF OF THE PLAINTIFFS

4. In the present application, the plaintiffs reiterate that in view of the

rectification petition having been filed by the plaintiffs, the present suit,

insofar as it claims the relief of infringement, is liable to be stayed in

terms of Section 124 of the Act. The plaintiffs, however, plead that in

view of the judgment of the Supreme Court in Patel Field Marshal

Agencies & Anr. v. P.M. Diesels Ltd. & Ors. (2018) 2 SCC 112, the said

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CS(COMM) 363/2017 Page 3 of 21

rectification petition can be decided only when an issue relating to the

validity of the registration of the defendants’ mark is framed by this

Court. The plaintiffs/applicants therefore, pray for an issue with respect

to the invalidity of registration no.482653, granted for the mark

‘HARNIK CHUPA CHUP’ of the defendants, be framed and the suit, so

far as it relates to the relief of infringement of the trade mark, be stayed

in terms of Section 124 of the Act.

5. In support of the above submission, the learned counsel for the

plaintiffs places reliance also on the judgment of this Court in Abbott

Healthcare

Pvt.

Ltd.

v.

Raj

Kumar

Prasad

and

Ors.,

MANU/DE/5553/2017.

SUBMISSIONS ON BEHALF OF THE DEFENDANTS

6. On the other hand, the learned counsel for the defendant nos.1, 2

and 4 to 7 submits that in the present case, as the rectification application

had been filed by the plaintiff no. 1 prior to filing of the present suit, in

terms of Section 124(1)(b)(i) of the Act, there is an automatic stay of the

suit pending disposal of suc