Delhi High Court
Societe Des Produits Nestle S.A & Anr vs Shree Shankeshwar Utensils & ... on 5 April, 2018
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 5th April, 2018.
+ CS(COMM) 106/2018
SOCIETE DES PRODUITS NESTLE S.A & ANR ..... Plaintiffs
Through: Mr. Manish Kr. Mishra and Ms.
Akansha Singh, Advs.
Versus
SHREE SHANKESHWAR UTENSILS &
APPLIANCES PVT LTD ..... Defendant
Through: Mr. Amit Jain and Ms. Saltanat,
Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No. 15670/2014 (of the plaintiffs under Section 124 of the Trade
Marks Act, 1999).
1. The counsel for the plaintiffs/applicants and the counsel for the
defendant have been heard.
2. The plaintiffs/applicants, claiming to be the registered proprietor of
the trade mark „MAGGI‟, have instituted this suit to restrain the defendant
from infringing the said mark by using the mark „MAGGI‟ in respect of
pressure cookers.
3. The suit was entertained and vide ex parte ad interim order dated 3rd
August, 2010, an interim injunction restraining the defendant from using
the mark „MAGGI‟ was granted. This injunction is continuing though the
counsels state that the same has not been confirmed.
CS(COMM) 106/2018 Page 1 of 7
4. The defendant, in its written statement disclosed that it had acquired
the registered mark „MAGGISUN‟ from the earlier proprietor thereof and
was using the mark „MAGGISUN‟ in relation to its pressure cookers.
5. The plaintiffs/applicants thereafter did not amend their plaint but
filed a replication and on the pleadings, following issues were framed in the
suit on 22nd August, 2012:-
"(i) Whether the plaint has not been properly signed,
verified and instituted? OPD
(ii) Whether the plaintiff No.1 is the proprietor of the
trademark „MAGGI‟? OPP
(iii) Whether the trademark „MAGGI‟ of the plaintiffs
is a well known trademark? OPP
(iv) Whether the use of the trademark „MAGGI‟ by
the defendant in respect of pressure cookers
amounts to infringement of registered trademark
„MAGGI‟ of the plaintiffs? OPP
(v) Whether the use of the trademark „MAGGI‟ by
the defendant in respect of pressure cookers
amounts to acts of passing off? OPP
(vi) Whether this Court has no territorial jurisdiction
to entertain the present suit? OPD
(vii) Whether the defendant through its predecessor is
using the trademark „MAGGI‟ since 1994 in
respect of pressure cookers? OPD
(viii) Whether the defendant is a subsequent proprietor
of registered trademark „MAGGISUN‟ under
No.1163623 in class 21 and is entitled to use the
registered trademark „MAGGISUN‟? OPD
CS(COMM) 106/2018 Page 2 of 7
(ix) Whether the suit of the plaintiff is barred by
delay, acquiescence and laches? OPD
(x) Whether the plaintiffs are entitled to rendition of
accounts of profits and damages in the
alternative and if so, to what extent? OPP
(xi) To what relief, if any, are the plaintiffs entitled?
No other issue arises or is claimed."
and vide order dated 26th February, 2014, the following was framed
as an additional issue:-
"Whether the registration obtained for trade mark
„MAGGISUN‟ by M/s Haryana Pressure Cookers Pvt.
Ltd. bearing registration No.1163623 in class 21 is
invalid and liable to be rectified? OPP"
6. It appears that the plaintiff No.1/applicant filed a Rectification
Petition before the Intellectual Property Appellate Board (IPAB) for
removal of the mark „MAGGISUN‟ and which Rectification Petition is
pending consideration before the IPAB. The plaintiffs/applicants now seek
stay of proceedings in the present suit under Section 124 of the Act.
7. The counsel for the defendant has opposed the application on two
grounds. Firstly, it is contended that in terms of the language of Section 124
of the Act, the plaintiffs/applicants, after institution of the suit, could not
have instituted the Rectification Petition before the IPAB without seeking
permission of this Court and which was not sought and thus IPAB has no
jurisdiction to entertain the Rectification Petition and since there is no
validly constituted Rectification Petition before the IPAB, the question of
CS(COMM) 106/2018 Page 3 of 7
the proceedings in the present suit being stayed does not arise. The second
contention is that the plaintiffs/applicants, after the defendant in its written
statement disclosed acquisition of the registered trade mark „MAGGISUN‟
from Haryana Pressure Cookies Pvt. Ltd., and use thereof, did not amend
their plaint to claim any relief qua the mark „MAGGISUN‟ and for which
reason also the application under Section 124 is misconceived.
8. As far as the second of the aforesaid two contentions is concerned,
after the additional issue aforesaid was framed on 26 th February, 2014, it is
not open to the defendant to now contend that the suit is with respect to the
mark „MAGGI‟ and not with respect to the mark „MAGGISUN‟. The said
objection if available to the defendant, ought to have been taken by the
defendant at the time when the plaintiff was seeking the framing of the
additional issue aforesaid and the additional issue aforesaid having been
framed, it is now not open to the defendant to contend that the suit is not
with respect to „MAGGISUN‟.
9. I may however in this regard notice that while the counsel for the
defendant states that the defendant till date continues to use the mark
„MAGGISUN‟ and there is no interim injunction with respect thereto, the
counsel for the plaintiffs/applicants states that the ex parte ad interim order
dated 3rd August, 2010 injuncts the defendant from using „MAGGI‟ word
mark or any other mark or label resembling the plaintiffs‟/applicants‟
registered trade mark „MAGGI‟ in relation to any of the products produced
and marketed by the defendant and the same would encompass use by the
defendant of „MAGGISUN‟ also.
CS(COMM) 106/2018 Page 4 of 7
10. I may also record that no application complaining violation of the
interim order in the suit by the defendant by use of the mark „MAGGISUN‟
has been filed by the plaintiffs/applicants.
11. I may also record that the order dated 26th February, 2014 framing
the additional issue records that the counsel for the defendant had opposed
the framing of the additional issue "not on the ground that the proposed
issue does not arise from the pleadings or is not relevant for adjudication of
the matter in controversy", but firstly, on the ground of the plaintiffs
notwithstanding framing of issues as far back as on 22 nd August, 2012,
having delayed the filing of the affidavit by way of examination-in-chief
and secondly, on the ground of the plaintiffs, without obtaining the
permission of the Court, having approached IPAB as is being contended
today.
12. In the order dated 26th February, 2014 it was held that the framing of
issues is to be guided by Order XIV Rules 1&2 of the Code of Civil
Procedure, 1908 (CPC) and once the issue had remained to be framed on
the pleas raised in the pleadings and was material for adjudication, it was
the duty of the Court to frame the said issue.
13. Thus, there is no merit in the second of the aforesaid two contentions
of the counsel for the defendant.
14. As far as the first of the aforesaid two contentions of the counsel for
the defendant is concerned, the counsel for the plaintiffs/applicants has
drawn attention to Patel Field Marshal Agencies Vs. P.M. Diesels Ltd.
2017 SCC OnLine SC 1388 and particularly to paras 32 and 37 thereof
which are as under:-
CS(COMM) 106/2018 Page 5 of 7
"32. 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."
"37. Section 111 of the 1958 Act and the corresponding
Section 124 of the 1999 Act nowhere contemplates grant of
permission by the civil court to move the High Court or the
IPAB, as may be, for rectification. The true purport and
effect of Sections 111/124 (of the old and new Act) has been
dealt within detail and would not require any further
discussion or enumeration. The requirement of satisfaction
of the civil Court regarding the existence of a prima facie
case of invalidity and the framing of an issue to that effect
before the law operates to vest jurisdiction in the statutory
authority to deal with the issue of invalidity by no means,
tantamount to permission or leave of the civil court, as has
been contended. It is a basic requirement to further the
CS(COMM) 106/2018 Page 6 of 7
cause of justice by elimination of false, frivolous and
untenable claims of invalidity that may be raised in the
suit."
and has contended that the Supreme Court has already held that there
is no requirement in Section 124 of the Act for permission to be obtained of
the Court before approaching the IPAB for rectification, even if a suit has
been pending since prior thereto.
15. I have drawn attention of the counsels to my dicta in Abbott
Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad 2017 SCC OnLine Del 12372
and Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad 2018 SCC OnLine
Del 6657 in which also I have held to the same effect.
16. The application thus succeeds and is allowed.
17. The further proceedings in the present suit are adjourned sine die
with liberty to the counsels to apply for revival after the disposal of the
Rectification Petition aforesaid before the IPAB and/or as and when the
need arises.
18. Interim orders to continue.
RAJIV SAHAI ENDLAW, J.
APRIL 05, 2018 „pp‟..
CS(COMM) 106/2018 Page 7 of 7