Gujarat High Court
Maharshi Packaging Machines Pvt. Ltd. vs M/S Maharshi Udyog Thru Partner, ... on 13 December, 2018
Author: S.R.Brahmbhatt
Bench: S.R.Brahmbhatt, Umesh A. Trivedi
C/SCA/19408/2018 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/SPECIAL CIVIL APPLICATION NO. 19408 of 2018
======================================
MAHARSHI PACKAGING MACHINES PVT. LTD.
Versus
M/S MAHARSHI UDYOG THRU PARTNER, BHAGVAT VITTHALDAS
SHAH
======================================
Appearance:
MR Y J TRIVEDI with MR JATIN Y TRIVEDI with PRATIK K
CHAUDHARY(8359) for the PETITIONER(s) No. 1
for the RESPONDENT(s) No. 1,2,3,4
======================================
CORAM: HONOURABLE MR.JUSTICE S.R.BRAHMBHATT
and
HONOURABLE MR.JUSTICE UMESH A. TRIVEDI
Date : 13/12/2018
ORAL ORDER
(PER : HONOURABLE MR.JUSTICE S.R.BRAHMBHATT)
1. The petitioner, defendant no.1 in Commercial Trade Mark Civil Suit No.20 of 2017 in the Court of Commercial Court at City Civil Court at Ahmedabad, has approached this Court by way of this petition under Articles 226 and 227 of the Constitution of India challenging the order dated 28.11.2018 passed below Exh.116 application made by the plaintiff for framing of issue qua "Whether the plaintiffs registration over the trademark Maharshi Udyog is valid?" whereby the trial Court has rejected the same vide the impugned order.
2. The Counsel for the petitioner invited the Courts attention to the observations of the Supreme Court to the fact that during pendency of the said suit the petitioner has Page 1 of 5 C/SCA/19408/2018 ORDER preferred rectification application under Section 57 of the Trade Marks Act, 1999 before the Intellectual Property Appellate Board and the same is pending. The Counsel submitted that the decision of the Supreme Court in the case of Patel Field Marshal Agencies and Another Vs. P.M. Diesels Limited and Others reported in (2018) 2 SCC 112 clearly indicates that the exercise of jurisdiction by the prescribed authority in the instant case, IPAB would be contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. The Counsel read emphasis upon the observations made in paragraph 31 and 34 of the said judgment, which for the sake of reference is reproduced hereinbelow:
"31. Rather, from the resume of the provisions of the 1958 Act made above, it becomes clear that all questions with regard to the validity of a trade mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the civil court. The Civil Court, in fact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar /High Court (now IPAB) will bind the civil court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole Page 2 of 5 C/SCA/19408/2018 ORDER authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil court as regards the prima facie tenability of the plea of invalidity.
34. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt 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."
3. Learned Counsel invited the Courts attention to the Page 3 of 5 C/SCA/19408/2018 ORDER written statement and the contention taken qua the plaintiff's title to have the valid registration. The impugned order thus refers to the decision in the case of Patel Field Marshal Agencies and Another (Supra). However, the learned Court has observed that on facts of the instant case the same has no applicability.
3.1 Learned Counsel for the petitioner also invited the Courts attention to the order passed by this Court in the case of State of Gujarat Vs. Union of India in Special Civil Application No.737 of 2018 in which the writ petition taken out under Article 227 of the Constitution of India was entertained containing the challenge to the interlocutory order despite their being statutory provision under Section 8 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015.
4. We are of the prima facie view that the observation of the Supreme Court and the contention raised in the written statement and the filing of the rectification application under Section 57 of the Trade Marks Act, 1999 ought to have been appreciated in its proper perspective by the trial Court else it may seriously prejudice the proceedings and the defence of the petitioner.
5. Hence, let there be notice returnable on 10.01.2019. As the Court is examining the order impugned under which the trial Court has declined to frame the issue, the suit proceedings in respect of Commercial Trade Mark Civil Suit No.20 of 2017 shall remain stayed till the returnable date.
Page 4 of 5 C/SCA/19408/2018 ORDER6. As this order is passed ex-parte, it goes without saying that it will be open for the respondent to approach the Court for vacation and /or for modification of the said relief even prior to the returnable date.
(S.R.BRAHMBHATT, J.) (UMESH A. TRIVEDI, J.) siji Page 5 of 5