w w w . L a w y e r S e r v i c e s . i n



Sun Pharmaceutical Industries Limited v/s Pfizer Inc


Company & Directors' Information:- SUN PHARMACEUTICAL INDUSTRIES LIMITED [Active] CIN = L24230GJ1993PLC019050

Company & Directors' Information:- PFIZER LIMITED [Active] CIN = L24231MH1950PLC008311

Company & Directors' Information:- SUN INDUSTRIES LIMITED. [Active] CIN = U51909DL1991PLC045798

Company & Directors' Information:- A S PHARMACEUTICAL (INDIA) PRIVATE LIMITED [Active] CIN = U24230TN2010PTC076676

Company & Directors' Information:- SUN PVT LTD [Active] CIN = U24246RJ1984PTC003093

Company & Directors' Information:- G SUN INDIA PRIVATE LIMITED [Strike Off] CIN = U74899DL1995PTC071425

Company & Directors' Information:- S. B. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24231UP1994PTC017328

Company & Directors' Information:- P R A B PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U33111UP2013PTC054705

Company & Directors' Information:- C M C PHARMACEUTICAL PVT LTD [Strike Off] CIN = U24231WB1985PTC039722

Company & Directors' Information:- M S C PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U24230MH2003PTC143605

Company & Directors' Information:- B P L PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24239MH1978PTC020449

Company & Directors' Information:- R. N. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U74999DL2017PTC314515

Company & Directors' Information:- D. R. Y. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U52599DL2018PTC329353

Company & Directors' Information:- B K D PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U52100WB2014PTC200227

Company & Directors' Information:- G B PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U85121HR2006PTC036295

Company & Directors' Information:- SUN INDIA CORPORATION PRIVATE LIMITED [Strike Off] CIN = U65991TN1943PTC000994

Company & Directors' Information:- SUN INDUSTRIES LIMITED [Dissolved] CIN = U99999MH1947PTC005559

    ORA No. 33 of 2013/TM/DEL

    Decided On, 08 October 2018

    At, Intellectual Property Appellate Board

    By, THE HONOURABLE MR. JUSTICE MANMOHAN SINGH CHAIRMAN & THE HONOURABLE MR. SANJEEV KUMAR CHASWAL
    By, TECHNICAL MEMBER (TRADE MARKS)

    For the Applicant: Hemant Singh, Mamta Jha, Advocates. For the Respondent: Saikrishna Rajagopal, Nitin Sharma, Advocates.



Judgment Text

Manmohan Singh, Chairman

The applicant has filed the rectification petition for removal of trade mark no. 2045066 registered in the name of PFIZER INC., of United States of America.

2. The applicant is seeking the removal of respondent trade mark 'DORIS' mainly on the ground that it is visually, structurally as well as phonetically similar to the applicant's trade mark 'DRONIS' in class 5 for pharmaceutical products and others.

3. Prior to the filing of the above mentioned petition, the applicant came to know about the said user by respondent no. 1 thus filed a civil suit being C.S(OS) No. 2564/2012 before the Hon'ble High Court of Delhi against the respondent no. 1 as well as against other defendants, who were involved in manufacturing and marketing of the medicine under the impugned trade mark. The said suit is pending for adjudication.

4. The respondent no.1 in the civil suit had raised various defences in the written statement stating that the impugned trade mark 'DORIS' has been registered in favour of the respondent no. 1. After submission of this fact in its written statement by the respondent no 1 herein in the pending civil suit, the applicant had approached the Appellate Board with the present rectification petition which was filed on 25.9.2012. After the completion service, the respondent no. 1 had filed the counter statement.

5. The applicant had filed its response to the counter statement on 1.7.2013. After completion of the pleadings the matter was listed before us for final hearing. During the course of the hearing, the objection was raised by the learned counsel appearing on behalf of the respondent no. 1 that the present proceedings cannot be continued, in view of non-compliance of section 124 of The Trade Marks Act ,.

6. In support of his contention, the counsel on behalf of respondent no. 1 has referred the Section 124 (1) (b) (ii) of The Trade Marks Act, 1999, wherein it is stipulated that if no such proceedings are pending and the Court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register."

7. The learned counsel has submitted that the Hon'ble High Court of Delhi, while faming the issues in the pending civil suit, the Hon'ble court has not laid down any prima facie tenability finding at the time of framing of the issues about the invalidity of the registration of defendant's trade mark, therefore, in absence of such tenable finding, if any, issue has been framed by the civil court, it is appears that the court has farmed issues without bringing any prima facie finding on tenability in relation to the invalidity of the registration of the trademark of the defendant, thus, the present proceeding cannot be proceeded till the Hon'ble High Court of Delhi renders clarification on prima facie finding about the invalidity of the respondent no. 1/defendant' strade mark is sought by the applicant herein.

8. In support of his contention, the learned counsel has "also referred the decisions of the Hon'ble High Court of Delhi, the details of the same are given below:-

1. Abbott Healthcare Pvt. Ltd vs. Raj Kumar Prasad & Ors. in CS(OS) 3534/2012 in IA No. 14337/2017 decided on 4.12.2017.

2. Abbott Healthcare Pvt. Ltd vs. Raj Kumar Prasad & Ors. in CS(OS) 3534/2012 in IAs No. 8/2018 & 9/2018 decided on 3.1.2018: 2018 (73) PTC 541 [Del].

9. We have also heard the learned counsel for the applicant in length, who has also referred the decision of the Division Bench in the case of Bhagwan Dass Khanna Jewellers Pvt. Ltd. And Ors. vs. Bhagwn Das Khanna Jewellers 2017 (70) PTC 56 [Del][DB] in FAO(OS) 551/2015 and 67/2017 decided on 8.3.2017, as well as submitted that the decision referred by the learned counsel for the respondent no. 1 has no relevance in the present case.

10. Both the parties have made their submissions with regard to the objection raised by the learned counsel for the respondent and the order was reserved solely on this limited aspect.

11. We have examined the judgement referred by the learned counsel for respondent no. 1 as well as the decisions referred by him, including the recent judgement of the Hon'ble Supreme Court in 'Patel Field Marshal Agencies & Ors. vs. P.M. Diesels Ltd. & Ors.'.

12. In the present case admittedly, the rectification petition was filed on 25.9.2012. The Civil suit for injunction before the Hon'ble High Court of Delhi was also filed by the applicant against the same respondent no. 1., and the Hon'ble High Court of Delhi after framing the issues 08.09.2014, in view of framing of issue no 4 in the Civil suit, the proceedings of the civil suit was stayed. The Hon'ble High Court of Delhi framed issues in the pending suit the same are enumerated as under:

(1) Whether the plaintiff is the proprietor of the trade mark 'DRONIS' in relation to pharmaceuticals products? - OPP

(2) Whether the use of the registered trademark 'DORIS' by the defendants amounts to infringement of the registered trade mark 'DRONIS' of the plaintiff? -OPP

(3) Whether the use of the impugned trade mark 'DORIS' by the defendants amounts to passing off? - OPP

(4) Whether the defendants? Mark 'DORIS' is invalid and liable to be rectified? -OPP

(5) Whether the plaintiff's are entitled to the relief of rendition of accounts or damages? - OPP

(6) Whether the present suit is not maintainable in respect of infringement of the plaintiffs? Trademark'DRONIS', in view of registration of the defendants? Trade mark 'DORIS'? - OPD

(7) Whether the defendants? Trademark T)ORIS' is deceptively similar to that of the plaintiffs? Trademark 'DRONIS'? OPP

(8) Whether the defendants are passing off their goods under the trade mark 'DORIS' as that of the plaintiff? - OPP

(9) Relief

13. During the course of hearing, the learned counsel for the respondent had raised an objection with regard to missing of prima facie finding of the court, while framing the issues in the suit. As the suit, in this context we have perused the counter statement filed by the respondent no. 1. As the court has framed the issues in the almost Six years ago and further the Hon'ble High Court of Delhi had stayed the suit of the applicant after framing of the issues in view of the rectification petition which is pending before the us.

14. With regard to issue no 4 framed by the High court in suit, the similar issue has been decided by the Division Bench of the High Court of Delhi, wherein this specific aspect of invalidity of the trade mark has been dealt with and the interpretation of section 124 has been drawn, discussed and decided in detail. The Division Bench of the High Court has dealt similar proposition as raised by the respondent no. 1 herein in the present matter, which has been considered and where the objection was overruled particularly in Para 10 of the judgement. -

15. The finding of the Division Bench, para 5 to 19 of the said judgment are reproduced here below:-

"5. It would be necessary to examine the provisions of Section 124 of the said Act. It is set out hereunder

"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. - (1) Where in any suit for infringement of a trade mark

(a) the defendant pleads that registration of the plaintiffs trade mark is invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,-

(1) if any proceedings for rectification of the register in relation to the plaintiffs or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in sub-section

(1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit." (Underlining added) -

6. The case of the appellants / defendants is that by virtue of Section 124 (1)(a) (ii), it is incumbent upon the court, after issues have been framed, to adjourn the case for a period of three months from the date of framing of issues in order to enable the party concerned to apply to the IPAB for rectification of the register. It was contended by the learned counsel for the appellants that no such direction was given by the learned Single Judge op the date on which the issues were framed that is, on 02.01.2014. This is so because parties on both sides had expressed a hope for settling the disputes amicably. Consequently, it was submitted by the learned counsel for the appellants / defendants that as no specific direction had been issued by the learned Single Judge granting an adjournment of three months from the date of framing of issues to enable the party concerned to apply to the IPAB for rectification of the register, the appellants / defendants could not be penalised for not having filed the rectification application within three months from the date on which the issues were framed. It was further pointed out by the learned counsel for the appellants that in any event, the court had the power to extend the time, where sufficient cause was shown, to enable the appellants / defendants to file an application for rectification. The learned Single Judge, according to the appellants/defendants, had erred in construing the starting point of limitation to be the date of the framing of issues despite the fact that no direction had been given by the court adjourning the case for the period of three months to enable the appellants / defendants to apply to the IPAB for rectification of register. Consequently, it was submitted that the application seeking stay of the suit could not have been rejected on the ground of limitation.

7. The submission of the learned counsel for the respondent, on the other hand, is that when the issues were framed by the court, it was incumbent upon the appellants / defendants to have requested the court to adjourn the case for a period of three months to enable them to move the rectification application. Since they did not do so and since they also did not seek any extension of time from the court, the right of the respondents gets crystallised in terms of Section 124(3) to the extent that the issue as to the validity of the registration of the trademarks concerned would be deemed to have been abandoned by the appellants / defendants and the court would have to proceed with the suit with regard to the other issues involved therein. Reading the provisions of Section 124(1)(a)(ii), the learned counsel for the respondent submitted that the intention that is discernible is that it is incumbent upon the .defendant to bring it to the notice of the court that it wishes to file a rectification application before the IPAB.

8. The learned counsel on both sides had placed reliance on the Full Bench decision of this court in Data Infosys Limited and Others vs. Infosys Technologies Limited: [FAO (OS) 403/2012 (decided on 05.02.2016) [2016 SCC Online Del 677 : 2016 (65) PTC 209[Del][FB], The learned counsel for the appellants submitted that the said Full Bench decision had no adverse impact on the submissions made on behalf of the appellants. On the other hand, the learned counsel for the respondent submitted that the Full Bench decision fully supported the arguments advanced on the part of the respondent. Discussion,

9. On an analysis of Section 124(1)(a)(ii) of the said Act, it is evident that t where, in a suit for infringement of a trademark, the defendant pleads that the registration of the plaintiffs trade mark is invalid, the court trying the suit shall,' if no proceedings for rectification of the register in relation to the plaintiffs trade mark are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register. It is, therefore, evident that the provisions of Section 124(1)(a)(ii) in effect enjoins the court rather than' the parties. In a suit for infringement of a trade mark, the court has to first examine whether the defendant has taken the plea that the registration of the plaintiffs trade mark is invalid. The next step which the court is required to take is to ascertain as to whether there are any proceedings pending with regard to rectification of the register in relation to the plaintiffs trade mark. In case no such proceedings are pending, the next stage for the court is to satisfy itself that the plea regarding the validity of the registration of the plaintiffs trade mark is prima facie tenable. Once this happens, the court is enjoined to raise an issue regarding the same and simultaneously adjourn the case for a period of three months from the date of framing of the issue so as to enable the party concerned to apply to the Appellate Board for rectification of the register. From this sequence of steps to be undertaken by the court, it is evident that when the court frames an issue with regard to the invalidity of the plaintiffs trade mark, it can be presumed that the court was satisfied that the plea regarding such invalidity was prima facie tenable. '

10. In the present case, we find that the learned single Judge, while framing issues on 02.01.2004, specifically framed issue No. 7 with regard to invalidity of the registration of the plaintiffs trade mark. Clearly, it could have only happened when the court was satisfied that the plea regarding invalidity of the registration of the plaintiffs trade mark was prima facie tenable. At that stage itself, the learned single Judge ought to have adjourned the case specifically for a period of three months to enable the appellants / defendants to apply to the IPAB for rectification of the register. But, this direction was not given nor was the case adjourned for the said period of three months. In fact, the parties submitted that as the case was a family matter, an attempt could be made to resolve the issue amicably. The court, therefore, instead of adjourning the matter for three months, as was the requirement under Section 124(1)(a)(ii) of the said Act, directed the same to be listed on 17.01.2014 at 4.00 p.m. when the parties were directed to remain present in court. As noted above, several attempts were made at settling the matter and the case was adjourned from time to time, that is, from 17.01.2014 to 13.02.2014 and again to 02.04.2014. On the last mentioned date, the learned single Judge had even heard the counsel for the parties in Chambers as requested by them to attempt at resolving the disputes. As no resolution was possible on that date, the case was again adjourned to 26.05.2014 for further attempts at settling the matter. But, on 26.05.2014, the counsel for the parties informed the court that there was no possibility of an amicable settlement. Consequently, the learned single Judge directed that the matter be listed before the Joint Registrar on 18.09.2014. As pointed out above, the appellants / defendants filed the rectification application before the IPAB on 16.09.2014. On 17.09.2014, the application (IA No. 19187/2014) for stay of further proceedings in the suit till the final disposal of the rectification was filed by the appellants / defendants. It is on this application that the impugned order dated 21.07.2015 has been delivered. As pointed out above, the application was rejected on the ground of delay.

11. We have seen above, that it is the court which is enjoined to adjourn the case for a period of three months after an issue regarding the validity of the registration of the plaintiffs trade mark is raised / framed, to enable the defendant to apply to the IPAB for rectification of the register. This, the court did not do. Therefore, one way of looking at the present matter is that the limitation of three months actually had not started to run. The appellants / defendants were not required to make any application for stay of the trial. If the conditions precedent for the stay of the trial had been met, the court was enjoined to stay the trial of the suit till the finalization of the rectification proceedings. One of the conditions precedent was that an issue be raised regarding the invalidity of the plaintiffs trade mark. Another condition was that the court ought to have specifically adjourned the case for a period of three months from the date of framing of the issue so as to enable the appellants / defendants to apply to the IPAB for rectification of the register. This direction was not expressly given by the learned single Judge. Be that as it may, the matter was listed time and again for the purposes of arriving at a settlement. In fact, the entire period from 02.01.2014 till 26.05.2014 was consumed by the attempts at settlement. If at all, the clock would start running from 26.05.2014, the rectification application was filed on 16.09.2014 approximately 3 months and 20 days later.

12. The question then arises as to whether the rectification application could be regarded as having been filed within the "time specified" or within such extended time as the court may for sufficient cause allow. We reiterate that the court did not pass any order specifically adjourning the case for a period of three months from the date of framing of the issue to enable the appellants / defendants to apply to the IPAB for rectification of the register. Therefore, one way of looking at the matter would be that, as pointed out above, the clock had not even started to tick insofar as the said period of three months is concerned. Another way of looking at it would be that 26.05.2014 could be considered to be the date on which the court could be presumed to have adjourned the matter for a period of three months to enable the appellants / defendants to apply to the IPAB for rectification of the register. If this contention is considered, then the filing of the rectification application is only approximately 20 days beyond the period of 3 months.

13. We must, at this juncture, note the provisions of Section 124(2) of the said Act. It stipulates that if the party concerned proves to the court that he has made a rectification application within the "time specified" (meaning 3 months from the date of framing of the issue) or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. It is evident from this provision that the period of 3 months stipulated in 124(1)(a)(ii) can certainly be extended if there is sufficient cause shown for the delay in filing of the rectification application. In our view, in the peculiar circumstances of the present case, this provision of extension of time could very well have been invoked and the learned single Judge ought to have, therefore, stayed the trial of the suit until the final disposal of the rectification proceedings.

14. We now need to examine the impact, if any, of the Full Bench decision in the case of Data Infosys Limited (supra) on the aforesaid conclusion arrived at by. us. The Full Bench was called upon to answer a reference as the Division Bench had noticed a judicial conflict on the question as to whether prior permission of the court was necessary under Section 124(1)(b)(ii) of the said Act for rectification of a registered trade mark, during the pendency of a suit. It was noted in the Full Bench decision that one view was that proceedings for rectification of the defendant's trade mark could not be initiated without the prima facie satisfaction of the plea by the court and that the suit could not be adjourned or stayed in terms of Section 124(1)(b)(ii) of the said Act to await the outcome of the rectification proceedings initiated by the plaintiff before the IPAB if the procedure outlined therein is not followed. The other view was that such proceedings for rectification before the IPAB could be initiated without the permission of the court trying the infringement suit and the consequence of not obtaining permission was only that the applicant could not seek stay of the suit.

15. While examining the two views, the Full Bench, inter-alia, observed as under: -

"... According to this court, the structure of Section 124(1) firstly contemplates the parties who might claim invalidity in the infringement suit and secondly deals with the stage when such plea is urged, leading to different contingencies. For instance, the two situations that arise are (1) if the rectification application was filed before the plea is urged (Section 124(1)(b)(i)- in which event, its disclosure compels the court ("the court trying the suit") to adjourn the suit) and

(2) where the suit is filed before a rectification proceeding/application is preferred (Section 124(b)(ii)- in which event the court has to first decide whether the invalidity plea is tenable, and then only adjourn the suit to enable the party to approach the IPAB). These, in the opinion of the Court are broad lines demarcated by Parliament in regard to the different contingencies based on when a party approaches the court with a trademark invalidity plea. This conclusion is fortified by the fact that in the first eventuality, i.e. where the rectification proceedings are pending i.e. where they chronologically precede the infringement suit-the court has no choice in the matter; it cannot determine the prima facie tenability of the invalidity plea. Such duty is cast only and only where the plea is urged in the suit for the first time when there is no rectification preceding at the time the suit was filed.

32. Prima facie evaluation of tenability of the plea of invalidity under Section 124 is only for the purpose of determining whether, or not, the proceedings in the suit for infringement should be adjourned (not stayed) for a period of 3 months from the date when the said issue is considered and framed. However, in case rectification proceedings are not filed within the period of three months from the date of raising the issue of invalidity and the prima facie consideration of the validity of the said plea, the plea of invalidity of the registered trademark is deemed to have been abandoned, and the Court shall proceed with the suit as regards the other issues. By virtue of Section 124(3), the issue of invalidity of the registered trademark would not survive to be decided in the suit, as the plea of invalidity would be deemed to have been abandoned in the suit. Even if the plaintiff, or the defendant -as the case may be (i.e. the party concerned setting up the invalidity plea), files a rectification application under Section 47/57 of the Act after the expiry of the period of three months, or such extended time as the Court may grant, though the rectification application would be maintainable and would be decided on its own merits by the IPAB, the final decision of the IPAB on the said application would have no bearing on the suit, in view of the deemed abandonment of the plea of invalidity. Thus, belated filing of the rectification proceedings (i.e. beyond the period of three months, or such extended time as may be granted by the Court) would not result on the stay of the suit...."

Thereafter, the majority opinion of the Full Bench summed up the conclusions as under:-

"41. This court, for the foregoing reasons, sums up the conclusions as follows:

(1) IPAB has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity - applying Section 47 and 57 of the Act-in the context of an infringement suit based on such registered trademark.

(2) The two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124(1) (i)) aid after the plea of invalidity is held to be prima facie tenable under Section 124(1)(ii)) to enable the party urging invalidity to approach IPAB.

(3) Where the civil court based on its prima facie assessment states, the invalidity plea is not tenable or where the litigant does not approach the IPAB within the time granted (i.e. when the court holds the plea to be prima facie tenable) the only consequence is deemed abandonment of the invalidity defense in the infringement suit. However, access to IPAB to invoke its exclusive jurisdiction to test the invalidity of a trademark registration is not precluded or barred in any manner whatsoever."

The order of the court was as under:

"This Full Bench therefore, in its unanimous opinion, holds that:

1. (a) IPAB has exclusive jurisdiction to consider and decide upon.the merits of a plea of trademark registration invalidity - applying Section 47 and 57 of the Act-in the context of an infringement suit based on such registered trademark. Access to IPAB is hot dependent on the civil court's prima facie assessment of tenability of a plea of invalidity of trademark registration. In other words, section 124 of the Trade Marks Act does not control the choice of a litigant to seek rectification of a registered trademark.

(b) The decision in Astrazeneca UK Ltd. vs. Orchid Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB) (Del) and all other judgments which hold that the plea of rectification can be raised by a party to an infringement suit, only if the court trying the suit, rules it to be prima facie tenable and that if such finding is not recorded, the party cannot avail the remedy of rectification of a registered trademark, is accordingly overruled.

2. This Court holds, by its majority judgment (Vipin Sanghi, J dissenting on this point) that the two situations whereby the infringement action is Stayed, are when the, rectification proceedings are instituted before the filing of the suit (Section 124 ( 1)(i)) and after the plea of invalidity is held to be prima facie tenable under Section 124(1)(ii)), In the first situation, if such plea exists, before the filing of the suit, the Court has to stay the suit to await the decision of the IPAB. In the second situation, if there is no application for rectification before the IPAB when the suit is filed and a party to the infringement suit, wishes to challenge it after the filing of the suit, it may do so, but the court has to assesses the tenability of the invalidity plea-if it finds it prima facie tenable, then and then alone, would it stay the suit to enable the party to approach the IPAB within a , time period. If the party does not avail of this, or approaches the IPAB after the period given, the court would proceed with the suit; the plea of invalidity is deemed abandoned in the infringement suit."

16. We are of the view that the decision of the Full Bench does not, in any ' way, impact the. conclusion that we have arrived at. The present case falls in the second situation where there was no application for registration before the IPAB when the suit was filed. But, the facts of the present case are somewhat different from the situation analysed by the Full Bench inasmuch as the Full Bench decision did not take into account the possibility of the framing of an issue with regard to invalidity of the plaintiffs trade mark and yet the court not specifically adjourning the case for three months to enable the defendant to file an application for rectification of the plaintiff's trade mark before the IPAB. The key point, however, is that once an issue has been framed, then in the fact situation of the present case, the appellants / defendants having filed the rectification application, they could certainly ask for stay of the suit till the disposal of the rectification application before the IPAB. And, in such an eventuality, the provisions of Section 124(3) would not get triggered. In other words, it could not be said that the issue as to the validity of the registration of the plaintiffs trade mark could be deemed to have been abandoned.

17. For all these reasons, we allow the appeal [FAO(OS) 551/2015] and set aside the impugned order dated 21.07.2015 passed by the learned single Judge. The effect of this would be that there would be a stay of the trial of the suit till the final disposal of the rectification proceedings before the IPAB. As a corollary to this, the issue as to the validity of the registration of the trade mark of the plaintiff cannot be deemed to have been abandoned.

FAO(OS) 6712016

18. This appeal, which is styled as a cross-appeal has been filed on behalf of the plaintiff in CS(OS) 1061/2008. The challenge in this appeal is to the findings in paragraphs 6 and 7 of the judgment dated 21:07.2015 delivered by a learned single Judge of this court in LA No. 19187/2014 which was the subject matter of challenge in FAO(OS) 551/2015 which we have discussed and decided above. FAO (OS) 67/2016 is also directed against the order Dated 02.01.2014 to the extent of framing of issue No. 7 which deals with the plea of invalidity of the registrations of the plaintiffs trade mark. FACKOS) 67/2016 is accompanied by an application being CM No. 8354/2016 seeking condonation of delay of 720 days insofar as the challenge to the order dated 02.01.2014 is concerned and a delay of 70 days with regard to the challenge to the order dated 21.07.2015.

19. We may point out that there was vehement opposition to this application for condonation of delay as also to the appeal on merits. We also noticed that the present appeal was filed only as a counter-blast and because submissions had been made on the part of the defendants [appellants in CS (OS) 551/2015] to the effect that since the issue No. 7 had been framed with regard to the invalidity of the plaintiffs trademarks, the court had taken the view that the plea of invalidity was tenable. In the course of the arguments, a point was also raised that in the order dated 21.07.2015, the learned single Judge in paras 6 and 7 had clearly held that the court had prima facie found the defendants' contentions with regard to the invalidity of the plaintiffs trade mark to be untenable and yet the plaintiffs had not filed any appeal or objected to such a finding. It is only then, as an after-thought and as a counter-blast, that FAO(OS) 67/2016 was filed after much delay as already noted above. An excuse was sought to be given for the said delay that the law was not clear inasmuch as the Full Bench was seized of the reference to which we have already alluded above. We are afraid that this would not constitute sufficient cause for condoning the delay. In any event, even on merits, we do not agree with the submissions made on behalf of the plaintiffs. We have already indicated that framing of the issue with regard to invalidity clearly meant that the court found the plea of invalidity raised by the defendants to be prima facie tenable: Otherwise, no such issue would have been framed. For these reasons, CM No. 8354/2016 for condonation of delay as also the appeal [FAO(OS) 67/2016] are dismissed. The parties are left to bear their own costs.

16. If we read carefully the para 10 of the judgment, the division bench has emphasised its opinion that" In the present case, we find

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that the learned single Judge, while framing issues on 02.01.2004, specifically framed issue No. 7 with regard to invalidity of the registration of the plaintiffs trade mark. Clearly, it could have only happened when the court was satisfied that the plea regarding invalidity of the registration of the plaintiffs trade mark was prima facie tenable". The said set judgement has been attained finality between the parties. 17. If we apply the above rendered proposition of the DB in the context of the present issue specifically in reference to the objection raised by the respondent no 1, it clearly establishes the issue are framed in the suit only after the court is of the firm view or satisfied on "plea regarding invalidity of the registration of the respondent trade mark was prima facie tenable", as such it cannot be re-agitated at this juncture that too after lapse of six years on framing of the issues that the civil court has framed the issue of invalidity of registration without prima facie finding or without considering the tenability of the issue in detail. 18. It has been held by DB is that once the issue of invalidity is framed, presumption can be drawn to the extent that the court must have gone for invalidity of the trade mark in question while framing the issue. 19. In our opinion as far as the judgements referred by the learned counsel for the respondent no. 1 are concerned, the same is based on different facts, whereas in the present case the suit has already been stayed after framing of issue and the hearing was sought in the rectification. In such situation, no other remedy is available to the respondent at this belated stage by raising the plea that since no prima facie finding on tenability of the mark is available therefore, the pleadings of the present case cannot continue. Rather para 10 of the judgement appropriately applies in the present context as the Division Bench has clearly mandated that once the issue is framed, it means the court must have considered the tenability of the issue in detail while framing the impugned issue. Even other side in the counter-statement filed by the respondent no.- 6 years ago, the objection in such argument is not taken. 20. Under these circumstances, we do not agree with the contention of the learned counsel for respondent no. 1 that the present proceeding should not continue in view of non-compliance of section 124 of the Act. 21. We are of the considered view that after lapse of six years, now at this juncture, the respondent cannot derail the judicial process by bringing its clock back to its nascent stage, in case the respondent was not satisfied at that juncture, the respondent had an ample time, opportunity with him to raise issue with regard to framing of the issue of invalidity of registration without recording prima facie finding or without considering the tenability of the issue in detail. 22. At this belated stage, the argument of the respondent no. 1 cannot be accepted that present rectification proceeding shall remain stayed till the applicant is able to get the prima facie finding from the civil court, where the suit is pending With regard to the invalidity of the trade mark of the respondent no.1. 23. We have no jurisdiction or power to issue the direction either to the applicant or to the civil court to give the finding at this belated stage with regard to rendering of prima facie finding on framing of issue with regard to invalidity of defendant's trade mark. 24. Under these circumstances, the issue raised by the respondent no.1 is overruled. 25. Let the main rectification petition be fixed for final hearing on 15/10/2018 for directions.
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