U.S. Sharma, SETM:
1. This disposes the Interlocutory Petition dated 26th October, 1989 filed by M/s J.B. Hosiery Industries, Delhi. The facts necessary for the disposal of the petition are as follows:
2. On 18th April, 1981 M/s Roop Hosiery Factory, Sadar Bazar, Delhi hereinafter referred to as Applicant/Respondents applied for registration of trade mark 'COMEX' in respect of Nylon socks vide Application No. 374835 in Class 25. The application was advertised before acceptance in the Trade Marks Journal No. 920 dated 1st October, 1987, M/s J. B. Hosiery Industries, Lawrence Road, Delhi-110035 (hereinafter referred to as Opponent/Petitioner) opposed the registration of the applicant's trade mark advertised as aforesaid.
3. The Applicant/Respondent contested the opposition by a counterstatement. Evidence were filed by both the sides under Rules 53 to 55 of the Trade and Merchandise Marks Rules 1959 and the case was thereafter fixed for hearing on 1st November, 1989. The Opponent/Petitioner filed the present Interlocutory Petition dated 26th October 1989. The Opponent/Petitioner has prayed, in the petition, for stay of the proceedings of opposition No. DEL/4848 on the following grounds:-
1. That the Applicant/Respondent have filed a Suit No. 301 in the High Court of Delhi against the Opponent/Petitioner for passing off action and the Opponents/Petitioners have claimed counter-claim in the said suit. The suit is still pending before the High Court.
2. That in Opposition No. Del 4848 and Suit No. 391/89, the trade mark, the goods and the contesting parties involved are the same.
3. That the matter in issue in both the proceedings is directly and substantially the same.
4. That the decision to be issued by the High Court in Suit No. 301/89 regarding the proprietary rights of the trade mark 'COMBEX' will be binding on the Registrar.
5. A copy of the petition was served to the Applicant/Respondent for their comments. The Applicant/Respondent opposed the petition on the :-
1. That the proceedings under opposition case before this Tribunal and the proceeding before the High Court under the Suit No. 301/89 are independent proceedings.
2. That in the absence of any order or finding by the High Court, this tribunal is having all the rights, power and discretion to proceed with the registration or opposition.
3. That the Opponent/Petitioner has moved this petition with an ulterior motive of delay the proceedings, so that the Applicant/Respondent may not become the registered proprietor.
4. That this tribunal has all inherent power to proceed with the opposition and decide the matter independently.
5. The petition came up for hearing before me on 9th January, 1990 when Shri K. G. Bansal, Advocate appeared for the Opponent/Petitioner and Shri K. L. Aggarwal, Advocate appeared for the Applicant/Respondent.
6. The counsel for the Opponent/Petitioner submitted that the issue involved in the passing off action in Suit No. 301/89 namely the proprietorship of the mark, adoption of the mark are also the issues involved in the opposition proceedings before this Tribunal. Thus, the matter in issue in both the proceedings is directly and substantially the same and because the High Court is the superior Tribunal the findings/order that of the High Court shall be binding on the Tribunal. The learned counsel therefore submitted for stay of the opposition proceeding under the inherent power of this tribunal. The counsel for the Applicant/Respondent on the other hand argued that the proceedings before the High Court under the passing off Suit and the proceeding of opposition before the Registrar are entirely different and independent proceeding having no connection with each other. The learned counsel further stressed that the Opponent/Petitioner intends only to delay the proceedings before the Registrar under the pretext of stay of the proceedings.
7. The Opponent/Petitioner has sought stay of opposition proceedings in exercise of Registrar's inherent powers under the Trade and Merchandise Marks Act. The inherent power is a power inherent in a court or a Tribunal by virtue of its duty to do Justice between the parties before it. Thus, in view of various powers of adjudication and discretion embedded in different sections of the Act, this inherent power is available to the Registrar, in spite of the absence of any specific provision under the Act. In exercise of the inherent powers this tribunal is empowered to pass any order as may be necessary for the ends of Justice. The learned counsel for the Opponent/Petitioner contended that it is for the ends of Justice if the opposition proceedings pending before this tribunal are stayed in view of the fact that the matter in issue in the passing off suit before the High Court and in the opposition proceedings before this Tribunal is directly and substantially the same. The point for determination, therefore, is whether the matter in issue in both the proceedings is directly and substantially the same? In an action for the passing off the rights of the parties are not governed by the Trade & Merchandise Marks Act. Section 27(2) of the Act lays down:-
"Nothing in this Act shall be deemed to affect fight of action against any person for passing off goods as goods of another person or the remedies in respect there of"
8. The passing off action is therefore a common law remedy independent of trade mark registration. On the other hand the opposition proceeding before this tribunal and squarely governed by the provisions of the Trade and Merchandise Marks Act. The issues involved therein too are under one or the other sections of the Act, The purpose, the nature and the relief in both the proceedings are entirely different from each other, Thus, there appears to be not point of direct and substantial of matter in issue involved in these proceedings which are quite apart from each other in all respect. The counsel for Opponent/Petitioner strongly pressed his contention that a very important issue involved in the passing off action before the High Court is as to "who is the proprietor of the trade mark "COMEX" and this issue is also directly and substantially involved in the opposition proceedings before this Tribunal. This very clearly means that in the passing off suit the court is to adjudicate either the plaintiff or the defendant as the proprietor or the impugned trade mark, while, under the opposition proceedings two person may be adjudicated as proprietor of the same or similar trade mark by virtue of its honest and concurrent user, as provided under Section 12(3) of the Trade and Merchandise Marks Act, Factually, the issue under Section 12(3) of the Act is available on record to be decided between both the parties in the opposition proceedings before this tribunal. Thus, in view of my above stated findings I am of the view that the matter in issue in a passing off suit before the court and in an opposition case before the tribunal under the trade and Merchandise Marks Act are entirely different in all respect. Following observations of the Supreme Court in National Sewing Thread Co. Ltd. V. James Coadwick and Bros. Ltd. (AIR 1953 SC 357) at page 363 para 24:-
"The learned counsel for the Appellants contended that the question whether his clients' trade mark was likely to deceive or cause confusion had been concluded by the earlier judgment of the Madras High Court in the passing off action and already referred to in all early part of the judgment. It has quite clear that the onus in a passing off action rests on a plaintiff to prove whether there is likelihood of the Defendants' goods being passed off as the goods of the Plaintiffs. It was not denied that the general get up of the Appellants' trade mark is different from the general get up of the Respondents' trade mark. That being so it was held by the Madras High Court in the passing off action that on the meager material placed on record by the Plaintiffs they had failed to prove that the Defendants' goods could be passed off as the goods of the Plaintiff. The considerations relevant in a passing off action are some what different than they are on an application made for registration of a mark under the Trade Marks Act and that being so the decision of the Madras High Court referred to above could not be considered as relevant on the questions that the Registrar had to decide under the provisions of the Act."
9. In Flowerdale Ld. v. Hale Electric Coy Ld (1949) 66 RPC 331. The defendant's in an action for infringement of trade mark had applied for registration of the alleged infringing mark. The application was opposed by the plaintiffs in the action. The Registrar took the view that the opposition proceedings should be stayed until the action for infringement was disposed off by the Court. The defendants too moved the court to stay the infringement action until the opposition proceedings has been disposed off.
10. Held, by Vaisey J. that, taking in to account the Registrar's opinion, the infringement action should not be stayed.
11. The defendants took the matter in appeal. Held, on appeal that Vaisey J. was justified in giving weight to the Registrar's view, and that he had discretion in the matter with which the Court of Appeal would not interfere.
Jenkins Lord Justice observed as follows-
"I am quite satisfied that if in a case of this kind it appears to the Registrar that certain issues, which will to be decided before the application before him can be dealt with, will be decided in an action pending in the Chancery Division, and he takes the
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view that it will be more convenient for those issues to be so decided, he is perfectly in order in exercising his inherent jurisdiction to stay" 12. The above stated observation of Jankins L. J. to any mind provide perfectly judicious proposition for exercising the inherent jurisdiction for stay. Thus where an infringement or passing off action , is pending before the High Court between the same parties and for the same trade mark, the Registrar may, in exercise of his inherent jurisdiction, stay an opposition case till the disposal of the action before the High Court, if certain issues are common to both the proceedings and it appears to the Registrar that those issues or some of those issues can be more conveniently decided by the High Court. 13. Applying the above stated principle to the present case I find no common issue which can be decided more conveniently by the High Court. 14. In the result the interlocutory petition is dismissed with no order as to cost. The Opposition proceedings under Opposition No. Del-4848 shall proceed as usual.