Indian Kanoon - Search engine for Indian Law

Delhi High Court - Orders

Pepsico Inc. & Anr vs Parle Agro Private Limited on 5 August, 2021

Author: Anu Malhotra

Bench: Anu Malhotra

                          $~1
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     CS(COMM) 268/2021 and IA Nos. 7170/2021,

                                PEPSICO INC. & ANR.                                 ..... Plaintiffs
                                               Through:          Mr.Sandeep Sethi and Mr.Sanjeev
                                                                 Puri, Sr. Advocates with Mr.Dheeraj
                                                                 Nair, Mr.Manish Jha, Ms.Shruti Dass
                                                                 and Ms.Avni Sharma, Advocates

                                                    versus

                                PARLE AGRO PRIVATE LIMITED              ..... Defendant
                                             Through: Mr.Sudhir Chandra and Mr.C.M.Lall,
                                                      Sr.Advocates with Mr.Ankur Sangal,
                                                      Ms.Pragya Mishra and Ms.Imon Roy,
                                                      Advocates

                                CORAM:
                                HON'BLE MS. JUSTICE ANU MALHOTRA
                                         ORDER

% 05.08.2021 (Through video conferencing) Pursuant to proceedings dated 16.7.2021 on behalf of the defendant has been filed an application seeking leave to file rectification petition with an application under Section 124 of the Trademarks Act, 1999, which application under Section 124(1)(a)(ii) of the Trade Marks Act, 1999 is IA No. 9591/2021 filed on behalf of the defendants seeking to challenge the validity of the registration of the plaintiffs trademark under application No. 2499660 for the trade mark " For the Bold" and seeks the framing of an issue of the invalidity of the impugned trade mark registration at an appropriate stage.

On behalf of the plaintiffs' it has been urged that IA bearing No. 7170/2021 is listed for consideration today and that the Court may proceed to hear the same.

At the outset a submission was made on behalf of the defendants that in as much as the application IA No. 9591/2021 seeking leave to file the rectification petition challenging the validity of the registration of the trade marks has been filed, the plaintiffs' prayer cannot be considered until consideration of the submission made by the defendant challenging the validity of the registration of the plaintiffs' trademark qua which a submission was made on behalf of the plaintiff by learned senior counsel for the plaintiffs that in terms of Section 124(5) of the Trade Marks Act, 1999 hearing of the application under Order 39 Rule 1 & 2 of the CPC, 1908 is not precluded in terms of the said provision which provide as under:

124. (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.

Inter alia on behalf of the defendants, reliance has been placed on the verdict of the Division Bench of this Court in Patel Field Marshal Agencies and Another V. P.M.Diesels Limited And Others ; (2018) 2 SCC 112 with specific observations on para 34 thereof which read to the effect:

"34.The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt Signature Not Verified Digitally Signed By:SUMIT GHAI Signing Date:08.08.2021 21:47 with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive."

submitting inter alia to the effect that the aspect of the validity of the trademark of which an infringement is stated to have been made by defendant has essentially to be considered at the stage of consideration of the interim relief, if any, is sought and even if such an issue is not raised by an application seeking leave to file an application under Section 124 of the Trade Marks Act, 1999,the Court has essentially to consider the said aspect.

It is now submitted on behalf of the defendants that the application seeking the leave to file the rectification petition before this Court challenging the validity of the Trade Mark and the application under Order 39 Rule 1 & 2 of the CPC, 1908 may be considered together.

In as much as the response of the petitioner has been called for qua the application under consideration, the same be filed within a period of two weeks.

It is directed that both the IAs 7170/2021 as well as IA No. 9591/2021 are listed for consideration for hearing for the date 31.8.2021.

ANU MALHOTRA, J AUGUST 5, 2021/SV Signature Not Verified Digitally Signed By:SUMIT GHAI Signing Date:08.08.2021 21:47