At, High Court of Judicature at Allahabad
By, THE HONOURABLE MR. JUSTICE PANKAJ MITHAL
For the Petitioners: Navin Sinha, Sr. Advocate, Pankaj Agrawal, Advocate. For the Respondent: Anil Kumar, Assisted by Learned Counsel.
Pankaj Mithal, J.
Heard Sri Pankaj Agarwal, learned counsel for the revisionists and Sri Navin Sinha, Senior Advocate, assisted by Sri Anil Kumar Shukla, learned counsel appearing for the plaintiff respondent.
This is a revision by the defendants-revisionists against an order rejecting their application under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for the stay of the proceedings of the suit on the ground that their application for rectification under Section 57 of the Act regarding the plaintiff's trademark is pending before the appellate Board.
The brief facts leading to the filing of the above revision are that the plaintiff respondent instituted a suit No. 2 of 2010 alleging that he is registered user of the trademark "Chacha Chaudhary". The said trademark No.1675846 was registered on 7.7.05 on an application filed in the year 2002 and as such would relate to the date of filing of the application. The defendants revisionists have started manufacturing and selling their products in the name of "Chacha Aur Chaudhary" which is identical and deceptively similar to that of their registered trademark and as such by a decree of permanent injunction, the defendants revisionists and their agents be restrained from marketing 'Namkeen' products under the name and style "Chacha Aur Chaudhary".
It is not disputed that previously in a petition Under Article 227 No.1982 of 2012 M/s Girraj Food Products Vs. Umesh Kumar Gupta and another this court vide order dated 8.10.2012 had directed to court concerned to proceed and decide the above suit in accordance with law within a period of four months from the date of production of the certified copy of that order.
Later a Writ Petition of No.52265 of 2012, Umesh Kumar Gupta and another Vs. Kamlesh and another, was filed challenging the order of the District Judge dated 26.9.2012 rejecting the application of the defendants revisionists under Section 24 C.P.C. for the transfer of the case to another court. This court vide order dated 18.10.2012 with the consent of the parties transferred it to the court of District Judge with the specific direction to decide the suit within four months from the date of production of the certified copy of that order.
In short the direction is to proceed and decide the suit expeditiously within a time bound period.
The defendants revisionists at this juncture filed an application purported to be under Section 57 of the Act for the rectification of the trademark "Chacha Chaudhary" of the plaintiff respondent on the ground that they are the prior user of the trade name "Chacha Aur Chaudhary" and that the plaintiff respondent concealing the said fact had obtained the registration of their trademark "Chacha Chaudhary".
It was in view of the pendency of the above application under Section 57 of the Act that the defendants revisionists moved an application under Section 124 of the Act on 19.11.2012 for staying the proceedings of the suit.
In this revision the only point which arises for consideration is as to whether the proceedings of the suit No. 2 of 2010 instituted by the plaintiff respondent are liable to be stayed under Section 124 of the Act in view of the pendency of the defendants revisionists application under Section 57 of the Act.
Section 124 of the Act reads as under:-
"Stay of proceedings where the validity of registration of the trademark is questioned etc.-(1) Where in any suit for infringement of a trademark-
(a) the defendant pleads that registration of the plaintiff's 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 trademark,
the court trying the suit (hereinafter referred to as the court), shall,-
(i) if any proceedings for rectification of the register in relation to the plaintiff's 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 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.
(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) of 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."
A plain reading of the aforesaid provision reveals that for the purposes of stay the proceedings of a suit, two conditions are necessary. The first is that the suit pending must be for infringement of the trademark and that the defendant in the said suit has taken the defence that the registration of the plaintiff's trademark is invalid. The other condition is that the proceedings for rectification of the trademark should be pending before the Registrar or the appellate authority. It is on the fulfillment of the above two conditions only that the proceedings of the suit are liable to be stayed.
It is therefore essential to examine as to whether the defendants revisionists fulfill the twin conditions as enumerated above for the stay of the proceedings of the suit.
The court below in its order has recorded that the defendants revisionists have not brought on record any material to establish that any application or proceedings under Section 57 of the Act for the rectification of the trademark as alleged is pending before the tribunal and that there is no material whatsoever which can show the grounds on which the rectification if any has been sought.
However, along with the application of the stay in the revision the copy of the said application has been brought on record which is not disputed by the other side.
The aforesaid application clearly reveals that the defendants revisionists have applied for the cancellation/rectification of the plaintiff's trademark "Chacha Chaudhary" before the appellate Board invoking the provisions of Section 47/57 of the Act on the ground of prior user since 1995 of the trade name "Chacha Aur Chaudhary".
In view of above, it is apparent that the defendants revisionists have initiated proceedings for the rectification under Section 57 of the Act and the same are pending before the appellate Board.
The reference to the initiation of proceedings by the plaintiff/respondent himself for the correction of his trademark has nothing to do with the aforesaid proceedings for rectification initiated by the defendants revisionists. The proceedings of the plaintiff/respondent are under Section 58 of the Act simply for correction of the English version of the trademark by incorporating the change in the spelling of word 'Chacha'. The pendency of the said application and the initiation of the proceedings by the defendants revisionists are two separate things and cannot be read together to hold that the aforesaid proceedings are actually that for correction under Section 58 of the Act and are not for rectification under Section 57 of the Act.
In view of above, the defendants revisionists satisfy the second condition as contained in Section 124 of the Act.
The first condition necessary for the stay of the proceedings of the suit is that the suit ought to be in respect of infringement of the trademark. The question which arises is whether the suit in question is a suit for the infringement of the trademark or is a suit for passing over as alleged by the counsel for the plaintiff respondent.
The plaint of the suit is annexure-4 to the stay application.
The entire reading of the plaint and relief claimed therein demonstrates that it is a suit for decree of permanent injunction restraining the defendants to the suit from marketing their Namkeen products under the name "Chacha Aur Chaudhary" which is identical and deceptively similar to the registered trademark of the plaintiff "Chacha Chaudhary".
The relief clause as contained in the plaint reads as under:-
The plaintiff in the relief clause has clearly asked for the passing off the goods and services and an injunction in that regard.
The suit for passing over and that for infringement of trademark are essentially two different types of suits contemplated under the Act which is evident from Section 134 of the Act which provides for the institution of the suit for infringement of a registered trademark or for passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff's trademark whether registered or unregistered.
Section 27 of the Act provides for the effect of registration of a trademark and it provides that no person shall be entitle to institute any proceedings to prevent or to recover damages for the infringement of an unregistered trademark and at the same time that nothing in the Act would effect the action of any person for passing off goods or services as the goods of another person or as services provided by any person.
In view fore going provisions a distinction has been made between the suit for infringement for a trademark and that of passing off.
Section 124 of the Act is applicable only where the suit is for infringement of the trademark. The present case is not one for the infringement of the trademark rather it is a suit for injunction of restraining the defendants from passing off the goods in the deceptive trade name causing loss and harm to the reputation of the plaintiff.
Apart from the above, it has been categorically stated at the bar by Sri Navin Sinha, learned counsel for the plaintiff that in the written statement filed by the revisionists in the aforesaid suit no defence whatsoever has been taken that the registration of plaintiff's trademark is invalid. The written statement is not on record but there is nothing to doubt the statement inasmuch as it is only in the application filed under Section 57 of the Act that the plea of cancellation/rectification of the trademark on the ground of prior user has been taken. There appears to be no such plea in the written statement.
In view of above, as the suit is not over the infringeme
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nt of the trademark and there is no plea therein by the revisionists that the registration of the plaintiff's trademark is invalid the provision of Section 124 of the Act would not come into play so as to permit stay of the suit pending proceedings under Section 57 of the Act. This apart, the revision has been filed under Section 115 C.P.C. and for interference with the order impugned, the defendants revisionists have to establish failure of justice if the order is allowed to stand. No such case for exercise of revisional jurisdiction arises and even if the proceedings of the suit are permitted to continue, the defendants revisionists would not suffer any prejudice for the simple reason that the suit has to be decided in accordance with law on its own merits. In the totality of the above facts and circumstances, notwithstanding the other reasons recorded by the court below in rejecting the application under Section 124 of the Act, I am of the opinion that as the suit in question is not one for infringement of the trademark, it is not liable to be stayed in exercise of power under Section 124 C.P.C. The revisionists may approach the appellate Board and get the proceedings under Section 57 of the Act decided expeditiously. The revision lacks merit and is dismissed.