Delhi High Court - Orders
H.S. Kishori Lal & Ors vs Wrangler Apparel Corporation & Ors on 9 May, 2023
Author: Amit Bansal
Bench: Amit Bansal
$~20, 26-29 (connected)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
CS(COMM) 675/2018 & I.A. 15618/2010 (O-XXXIX R-1&2 of
CPC), I.A. 2023/2011(O-XXXIX R-2A of CPC), I.A. 4164/2011(O-
XXXIX R-2A of CPC), I.A. 14080/2014(O-XVI R-2&6 of CPC), I.A.
16279/2018(O-XI R-1 of CPC)
H.S. KISHORI LAL & ORS ..... Plaintiffs
Through: Mr.Mohan Vidhani, Ms.Ayushi
Singh, Ms.Kajol Arora, Mr.Prakhar
Singh and Mr.Ashish Singh,
Advocates.
versus
WRANGLER APPAREL CORPORATION
& ORS ..... Defendants
Through: Mr.Satvik Varma, Senior Advocate,
Ms.Sugandha Bhatia and Mr.Tushar
Mudgil, Advocates.
C.O. (COMM.IPD-TM) 400/2022
WRANGLER APPAREL CORP.
3411 SILVERSIDE ROAD, ..... Petitioner
Through: Mr.Satvik Varma, Senior Advocate,
Ms.Sugandha Bhatia and Mr.Tushar
Mudgil, Advocates.
versus
RAMESH CHAWLA, ATIKA
CHAWLA TRADING AS M/S. ..... Respondent
Through: Mr.Mohan Vidhani, Ms.Ayushi
Singh, Ms.Kajol Arora, Mr.Prakhar
Singh and Mr.Ashish Singh,
Advocates.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:12.05.2023 15:41:24
CS(COMM) 675/2018 and connected Page 1 of 6
C.O. (COMM.IPD-TM) 441/2022
WRANGLER APPAREL CORP. ..... Petitioner
Through: Mr.Satvik Varma, Senior Advocate,
Ms.Sugandha Bhatia and Mr.Tushar
Mudgil, Advocates.
versus
RAMESH CHAWLA, ATIKA
CHAWLA & ANR ..... Respondents
Through: Mr.Mohan Vidhani, Ms.Ayushi
Singh, Ms.Kajol Arora, Mr.Prakhar
Singh and Mr.Ashish Singh,
Advocates.
C.O. (COMM.IPD-TM) 505/2022
WRANGLER APPAREL CORP. ..... Petitioner
Through: Mr.Satvik Varma, Senior Advocate,
Ms.Sugandha Bhatia and Mr.Tushar
Mudgil, Advocates.
versus
RAMESH CHAWLA ATIKA CHAWLA TRADING
AS M/S H.S. KISHORI LAL AND ANR. ..... Respondents
Through: Mr.Mohan Vidhani, Ms.Ayushi
Singh, Ms.Kajol Arora, Mr.Prakhar
Singh and Mr.Ashish Singh,
Advocates.
+ C.O. (COMM.IPD-TM) 612/2022
WRANGLER APPAREL CORPN.
..... Petitioner
Through: Mr.Satvik Varma, Senior Advocate,
Ms.Sugandha Bhatia and Mr.Tushar
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:12.05.2023 15:41:24
CS(COMM) 675/2018 and connected Page 2 of 6
Mudgil, Advocates.
versus
RAMESH CHAWLA M/S H.S. KISHORE LAL ..... Respondent
Through: Mr.Mohan Vidhani, Ms.Ayushi
Singh, Ms.Kajol Arora, Mr.Prakhar
Singh and Mr.Ashish Singh,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
ORDER
% 09.05.2023 I.A. 2873/2019(O-VI R-17 of the CPC) in CS(COMM) 675/2018
1. Senior counsel appearing on behalf of the defendant, on instructions, submits that he does not wish to press the present application.
2. Accordingly, the same is dismissed as withdrawn. I.A. 9531/2018(O-XIV R-5 of the CPC) in CS(COMM) 675/2018
3. Mr.Mohan Vidhani, advocate appearing on behalf of the plaintiff states that the plaintiff does not seek to press the present application.
4. Accordingly, the same is dismissed as withdrawn. CS(COMM) 675/2018 & I.A. 7627/2011 (u/S. 124 of Trade Marks Act) C.O. (COMM.IPD-TM) 400/2022, C.O. (COMM.IPD-TM) 441/2022, C.O. (COMM.IPD-TM) 505/2022 & C.O. (COMM.IPD-TM) 612/2022
5. I.A. 7627/2011 has been filed on behalf of the defendants no.1 and 2 stating that in view of the rectification petitions being field on behalf of the defendants, the proceedings in the present suit be stayed.
6. In the present case, an issue pertaining to the invalidity of the registrations granted in favour of the plaintiff has already been framed in Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:12.05.2023 15:41:24 CS(COMM) 675/2018 and connected Page 3 of 6 CS(COMM) 675/2018. The said issue is set out below:
"viii) Whether the registration and rights as claimed by the plaintiffs in respect of the marks registered under Nos.913727, 913728, 911604 and 911605 are invalid and contrary to law?
OPD."
7. The defendant no.1 has also filed rectification petitions, being C.O. (COMM.IPD-TM) 400/2022, C.O. (COMM.IPD-TM) 441/2022, C.O. (COMM.IPD-TM) 505/2022 and C.O. (COMM.IPD-TM) 612/2022, questioning the validity of the aforesaid registrations granted in favour of the plaintiff, which have received on transfer from the IPAB after coming into effect of the Tribunals Reforms Act, 2021.
8. I have already held in Sana Herbals Pvt. Ltd. v. Mohsin Dehlvi, 2022 SCC OnLine 4482 that since rectification petitions are now to be heard by the High Court, there is requirement to stay the civil suit before the same Court to await the decision in the rectification petitions and the suit and the rectifications can be clubbed together. The relevant observations in Sana Herbals (supra) are as under:
"7. In Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, the Supreme Court observed that where, during the pendency of a suit, a rectification application is filed, the application can be pursued only upon a finding by the Civil Court on the prima facie tenability of the plea of invalidity. If the Civil Court does not find a triable issue on the plea of invalidity, then the said application cannot be pursued. The Supreme Court noted that this was necessary so as to avoid multiple proceedings on the same issue and the possibility of conflicting decisions. However, there have been subsequent developments since the passing of judgment in Patel Field Marshal Agencies (supra). In terms of the Tribunals Reforms Act, 2021, the IPAB has been abolished and the jurisdiction to decide rectification petitions now vests Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:12.05.2023 15:41:24 CS(COMM) 675/2018 and connected Page 4 of 6 with the High Court under Section 21 of the Act. Therefore, now the suit as well as the rectification applications have to be decided by one authority alone i.e. the High Court and resultantly, there cannot be any possibility of conflicting decisions. Hence, the rectification petitions can be clubbed with the civil suits and there is no requirement of staying the civil suit.
...
17. There is another aspect of the matter. In the earlier regime, upon an issue being framed with regard to invalidity of a trademark, proceedings in the civil suit were stayed in order that for the statutory authority i.e. IPAB to decide. With the coming into effect of the Tribunals Reforms Act, 2021, and the consequent abolition of the IPAB, this situation does not exist anymore. Therefore, even if an issue with regard to invalidity of a trademark is framed by the civil court and rectification applications are filed by a litigant, the civil suit is not liable to be stayed. The rectification petitions/applications can be clubbed and tried along with the civil suit. Therefore, no prejudice would be caused to the plaintiff if the additional issues, as sought to be framed by way of the present application, are framed."
9. In view of the above, it is deemed appropriate that the aforesaid rectification petitions are consolidated with the present suit for the purpose of trial instead of staying the suit.
10. Since an issue with regard to the invalidity of the registrations granted in favour of the plaintiff has already been framed in the suit, it is not deemed necessary to frame issues in this regard in the captioned rectification petitions.
11. Accordingly, in terms of Rule 26 of the Delhi High Court Intellectual Property Division Rules, 2022, the trial in the present suit shall be consolidated with the present rectification petitions, being C.O. (COMM.IPD-TM) 400/2022, C.O. (COMM.IPD-TM) 441/2022, C.O. Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:12.05.2023 15:41:24 CS(COMM) 675/2018 and connected Page 5 of 6 (COMM.IPD-TM) 505/2022 and C.O. (COMM.IPD-TM) 612/2022.
12. In view of the consolidation above, CS(COMM) 675/2018 shall be treated as the lead matter. Plaintiff has already filed his evidence by way of affidavit in the present suit. The evidence led in CS(COMM) 675/2018 shall also be read as evidence in the aforesaid rectification petitions.
13. List before the Joint Registrar on 18th July, 2023 for fixing dates of trial.
14. In view of the above discussion, I.A. 7627/2011 stands disposed of.
AMIT BANSAL, J.
MAY 9, 2023 rt Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:12.05.2023 15:41:24 CS(COMM) 675/2018 and connected Page 6 of 6