Om Parkash, DRTM:
1. On 18th April, 1991, M/s Roop Hosiery Factory, Sadar Bazar, Delhi (hereinafter referred to as the applicants/respondents) applied for registration of a trade mark COMEX in respect of the nylon socks under application No. 374835 in class 25, which was advertised in Trade Marks Journal No. 920 dated 1st October, 1987. M/s. J.B. Hosiery Industries, B-70/18, DSIDC Complex, Lawrance Road, Delhi-110035 (hereinafter after referred to as the opponents/petitioners) opposed the registration of the aforementioned trade mark.
2. In the first instance, the petitioners/opponents had filed an interlocutory petition on 26th October, 1989 in the Trade Marks Registry. Thereafter a review petition was filed on 10th May, 1993 for review of order of Senior Examiner of Trade Marks dated 10th April, 1990 vide which the aforesaid interlocutory petition was dismissed, and, thereafter, the aforesaid review petition was also dismissed by order dated 10-9-1990 of the Senior Examiner of Trade Marks.
3. Despite the afore-mentioned interlocutory petition and review petition dismissed by orders dated 10-4-90 and 10-9-90, respectively, of the Senior Examiner of Trade Marks, the opponents/petitioners have further filed an interlocutory petition on 24th June 1991 u/s 12(2) of the Act, for deferring and stay of proceedings pertaining to registration of the trade mark COMEX under application No. 375835 in class 25.
4. Hearing, to consider the instant interlocutory petition, was posted on 27-6-1991 when Sh. K.G. Bansal, advocate alongwith Sh. Shil Bansal, Advocate appeared on behalf of the petitioners/opponents and Sh. K.L. Agarwal, Advocate alongwith Sh. R.K. Agarwal, Advocate appeared on behalf of the applicants/respondents.
5. The facts, in brief, of this interlocutory petition are given as under:
1. That the petitioners/opponents adopted the trade mark COMEX in respect of vests, underwears, panties, T-Shirts, underwears popularly known as blumers, since 1st April, 1975. This mark has become distinctive and associated with the petitioner's goods on account of its along, continuous, extensive and exclusive user. Resultantly, the petitioner's goods are highly demanded in the markets on account of standard quality and precision.
2. That the petitioners/opponents claim to be the proprietors of the trade mark COMEX in relation to the said goods on account of its prior user and also on account of its prior instituted application for its registration, under application No. 358666 in class 25 as of 1-4-1975.
3. That the respondents/applicants filed an application for registration of trade mark COMEX being application No. 374835 in class 25 in relation to nylon socks, claiming its user as from 1-4-1974 which was advertised before acceptance under section 20(1) proviso and the same has been opposed under the instant opposition No. DEL 4848. The respondents/applicants also filed a suit being Suit No. 301/1989 against the petitioners/opponents in the High Court of Delhi, for perpetual injunction restraining infringement of the trade mark, passing-off and rendition of accounts and that the petitioners/opponents made a counter-claim therein. The said suit is pending adjudication in the said Hon'ble High Court of Delhi at New Delhi. The petitioners/opponents made an earlier interlocutory petition dated 26-10-89, before the Ld. Registrar, for stay of proceedings under instant opposition No. DEL-4848 till disposal of the said suit No. 301/1989, but the said petition has been dismissed by the Senior Examiner of Trade Marks by his order dated 10-4-90 and the review petition against the said order was also dismissed by the said hearing officer by his order dated 10-9-90.
4. That both the parties are seeking registration in respect of the same goods or description of goods in the instant proceedings. The petitioner's application being application No. 358666 in class 25 and the respondent's application being application 374835 in class 25 for seeking registration in respect of above said goods which are the same or of the same description. Hence, Ld. Registrar should have deferred the acceptance of the said application being of a latter date, until after determination of the proceedings in respect of the earlier, who is empowered to dispose of such application in the light of evidence tendered in relation to earlier application and the opposition thereto, if any.
5. That the respondents/applicants are bound to file an opposition against the registration of the trade mark under petitioners/opponents' application No. 358666 in class 25 in view of the prevailing circumstances as the petitioners/opponents and the respondents/applicants are already involved in the instant proceedings as well as in the above mentioned Suit No. 301/1989 in the High Court of Delhi.
6. The prayer contained that the proceedings under the instant application under opposition No. DEL-4848 may be deferred or stayed until after determination of the proceedings in respect of the petitioners/opponents' earlier application No. 358666 in class 25 and the opposition thereto, in the interest of justice, equity and good conscience.
7. The Ld. counsel Sh. K.L. Aggarwal for the respondents/applicants has stated in his own writing in the margin of petitioner's letter of 22nd June, 1991 which reads as "I wish to agree to the said petition without filing the reply."
8. Ld. counsel Sh. K.G. Bansal invited the attention of the Ld. Registrar to section 12(2)) which reads as under:
"Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the opposition thereto if any."
9. It may be pointed out that Dr. Venkateswaran in his evidence before the Select Committee regarding object in introducing the amendment in this sub-section is given under:
"The present position is this. Where there is honest concurrent use by two different persons of the same trade mark or similar trade marks, and the Registrar is convinced that there is honesty of user, he may register both the marks. That provision is contained in clause 12(3) which reproduces Section 10(2) of the existing Act. There are cases where the Registrar is in doubt, where the applications do not have clear evidence of use. In this case alone, the present section 10(3) says, where separate applications are made for registration of the same trade mark by two or more persons, the Registrar may refuse all of them. What the present clause 12(2) says is, instead of refusing all of them, he may proceed with the first application and let the other parties fight out the claims of the first applicant. The provision is taken from the Australian Act. The Act already contains a provision that the mere fact that a mark was registered does not prevent a prior user from opposing the registered trade mark. If a man is the prior user, he is always entitled to the mark. It is only in cases of doubt where simultaneous applications have been made, and the registrar is not prepared to accept the evidence of use by any of them, that this clause applies. There he says the first application is accepted, the other applicants, if they have got the right of prior use, may oppose it. If they succeed in their opposition, then the other one goes."
10. In view of the present position, the Registrar can refuse all applications. But under section 12(2), the Registrar does not refuse all, he accepts the earliest and let the others fight out before him. In fact, it gives more right to the applicants for trade marks. The applications have to be considered in the order of priority. If the earlier application is accepted and the mark therein registered, it would follow that the later applications must be rejected, unless the Registrar considers it fit to deal with them under sub-section (3). It may be stated that section 12(2) is directory in character. Ld. Registrar is empowered to exercise his discretionary power and this section.
11. Ld. counsel Sh. K.L. Aggarwal stated that the petitioners had also made similar request for grant of stay vide their interlocutory petition filed on 26th October, 1989. Apart from this, they filed review petition on 10-5-90 to the order dated 10-4-90 of the senior Examiner of Trade Marks in the afore-mentioned interlocutory petition. In other words, the opponents had again laid emphasis on the particular point of grant of stay to meet the ends of justice, though the opposition No. DEL-4848 instituted earlier than suit No. 301/1989 in the Hon'ble High Court of Delhi, for evidence of multiplicity of proceedings. Ld. Counsel further argued that the multiplicity of litigation has not been decreased, rather increased by filing a fresh interlocutory petition dated 24 June, 1991 with the same prayer for stay of the proceedings. The petitioners/opponents' prayer through the earlier interlocutory petition as well as the review petition were not found reasonable and justifiable to meet the ends of justice. Therefore, both the petitions were dismissed by the Senior Examiner of Trade Marks. He further stated that the instant proceedings are hit by section 11 of the Code of Civil Procedure which deals with res judicata. I am of the view that the petitioners/opponents have repeatedly made prayers for stay of the proceedings as stated in the proceeding paragraphs. Thus, there has been increase on multiplicity of litigation which should not be allowed to most the ends of justice. The second interlocutory petition filed on 24-6-81 embodies directly and substantially the same issues as decided in the previous interlocutory petition between the same parties litigating under the same title in the same suit before the Senior Examiner of Trade Marks.
12. The doctrine of res-judicata is based on the following maxims:
(1) The matter directly and substantially in issue in the subsequent suit or issue must be the same matter which was directly and substantially in issue either actually Explanation III or constructively Explanation IV in the former suit Explanation I is to be read with this condition.
(2) The former suit must have been a suit between the same parties or between parties under whom they or any of them claim. Explanation VI is to be read with this condition.
(3) The parties as aforesaid must have litigated under the same
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title in the former suit. (4) The Court which decided the former suit must have been a Court competent to try the subsequent suit or the suit in which such issue is subsequently raised. Explanation II is to be read with this condition as also Explanation. (5) The matter directly and substantially in issue in the subsequent suit must have been heard and finally decided by the Court in the first suit. Explanation V is to be read with this condition. Explanation VII extends the section to execution proceedings. 13. Now, let me apply the abovesaid principle of res judicata to the instant problem to conclude as to whether the interlocutory petition filed on 24th June, 1991 is hit by the principle of res judicata. It may be mentioned that the prayers in all the interlocutory petitions as well as the review petition have been the same without any change. Therefore, the interlocutory petition filed on 24-6-1991 is prohibited by section 11 of the Code of Civil Procedure. 14. In view of the above, the interlocutory petition filed on 24th June, 1991 is dismissed with no order as to costs. The opposition proceedings under opposition No. DEL-4848 shall proceed as usual.