Karnataka High Court
M/S. Sri Laxmi Balaji Industries vs M/S. Lakshmi Venkateshwar on 13 September, 2024
Author: H.P.Sandesh
Bench: H.P.Sandesh
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IN THE HIGH COURT OF KARNATAKA, DHARWAD BENCH
DATED THIS THE 13TH DAY OF SEPTEMBER, 2024
BEFORE
THE HON'BLE MR. JUSTICE H.P.SANDESH R
WRIT PETITION NO. 77807 OF 2013 (GM-CPC)
BETWEEN:
1. M/S. SRI LAXMI BALAJI INDUSTRIES,
A REGISTERED PARTNERSHIP FIRM,
HAVING ITS OFFICE AT SURVEY NO.440/A/5,
NAVALI ROAD, KARATAGI, KARNATAKA,
REPRESENTED HEREIN BY ONE OF ITS PARTNERS ,
SRI. N. GOPALAKRISHNA.
2. M/S. SRI LAXMI VINAYAKA,
RICE INDUSTRIES,
A REGISTERED PARTNERSHIP FIRM,
HAVING ITS OFFICE AT SURVEY NO.440/A/5,
NAVALI ROAD, KARATAGI, KARNATAKA,
REPRESENTED HEREIN BY ONE OF ITS PARTNERS ,
SRI. N. GOPALAKRISHNA.
...PETITIONERS
(BY SRI. S.R. KAMALACHARAN, ADVOCATE)
AND:
M/S. LAKSHMI VENKATESHWAR
SAROJA
HANGARAKI RICE INDUSTRIES, A PARTNERSHIP FIRM HAVING
ITS OFFICE AT: SINDHANUR ROAD,
Location: HIGH
COURT OF
KARANTAKA
SIRUGUPPA, BELLARY DISTRICT,
DHARWAD
BENCH REPRESENTED BY ITS PARTNER
SRI. S. DATTA SHABAREESH.
...RESPONDENT
(BY SMT. V. VIDYA, ADVOCATE)
THIS WRIT PETITION IS FILED UNDER ARTICLES 226 AND 227
OF THE CONSTITUTION OF INDIA PRAYING TO CALL THE RECORDS
OF O.S.NO.3/2012 ON THE FILE OF THE PRINCIPAL DISTRICT JUDGE
AT BELLARY; TO SET ASIDE THE ORDER DATED:30/03/2013 PASSED
ON I.A.NO.7 IN O.S.NO.3/2012 BY THE PRINCIPAL DISTRICT JUDGE
AT BELLARY (ANNEXURE-J) AND ALLOW I.A.NO.7 CONSEQUENTLY
STAYING ALL FURTHER PROCEEDINGS IN O.S.NO.3/2012 PENDING
DISPOSAL OF THE RECTIFICATION PROCEEDINGS BEFORE
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REGISTRAR OF TRADEMARKS, CHENNAI; TO GRANT COSTS OF THE
PROCEEDINGS AND ETC.
THIS PETITION HAVING BEEN HEARD AND RESERVED FOR
ORDERS ON 03.09.2024, COMING ON FOR PRONOUNCEMENT OF
ORDERS THIS DAY, THE COURT MADE THE FOLLOWING:
CAV ORDER
(PER: HON'BLE MR. JUSTICE H.P. SANDESH)
1. Heard the learned counsel for the petitioners
and the learned counsel for the respondent.
2. The present petition is filed invoking writ
jurisdiction under Articles 226 and 227 of the Constitution
of India praying this Court quash the order dated
30.03.2013 passed on I.A.No.VII in O.S.No.3/2012 by the
Principal District Judge at Ballari vide Annexure-J and
consequently allow the same and as a result further
proceedings in O.S.No.3/2012 be stayed pending disposal
of the rectification proceedings before Registrar of
Trademarks, Chennai and grant such other reliefs as
deemed fit in the circumstance of the case.
3. The petitioners while seeking a writ of certiorari
contended that few partners of the petitioners began the
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business of manufacturing and supplying rice produces in
the year 1993 under the name and style of 'M/s. Sri
Raghavendra Agro Agencies', under the brand name 'R
Gold'. Thereafter, in the year 1998, 'M/s. Sri Raghavendra
Agro Agencies', introduced a new product 'Sortex Silky
Rice' under the brand name 'Swamy Ayyappa Gold'. Two
different partnership firms were formed namely 'Sri Laxmi
Balaji Industries' and 'Sri Laxmi Vinayaka Rice Industries'
in the year 1998. Application was filed by the petitioner for
registration of trademark 'Swamy Ayyappa Gold' and
'Image/Device of Lord Ayyappa' before the Registrar of
Trademarks, Chennai in Application No.1973803 and
No.1474317 in the year 2010.
4. It is contended that the respondent herein filed
suit in O.S.No.3/2012 before Principal District Judge at
Ballari seeking an order of permanent injunction
restraining the petitioners herein from using the brand
name 'Swamy Ayyappa Gold'. Respondent herein filed
Application under Order XXXIX Rule 1 & 2 of the Code of
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Civil Procedure (hereinafter referred to as 'CPC' for
brevity) for an order of interim injunction restraining the
petitioners herein from marketing its products under the
name and style of 'Swamy Ayyappa Gold'" on 27.02.2012
and the application filed by the respondent herein for
temporary injunction is allowed by Principal District Judge
at Ballari on 01.03.2012. It is also the contention of the
petitioners herein that they have filed written statement to
the suit on 12.04.2012 after the disposal of the interim
application filed under Order XXXIX Rule 1 and 2 of CPC.
Petitioners herein filed objections to the application filed
by the respondent herein under Order XXXIX Rule 1 & 2 of
CPC on 12.04.2012 and interim order granted on
01.03.2012 was modified by the Principal District Judge
Ballari on 19.04.2012.
5. It is also the contention of the petitioners that
they have filed an application for rectification before the
Trademarks Registrar, Chennai against the trademark of
respondent herein on 24.07.2012 and notice was also
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issued to the respondent herein by the Registrar of
Trademarks, Chennai on 08.10.2012 and petitioners
herein also filed an application in I.A.No.VII under Section
124 of the Trade Marks Act, 1999 (hereinafter referred as
'the Act' for brevity) seeking stay of further proceedings in
O.S.No.3/2012 pending the rectification proceedings
before the Trademarks Registrar, Chennai on 21.02.2013.
Petitioners herein also filed memo with documents to show
that proceedings before the Trademarks Registrar is
pending for rectification of the trademark of the
respondent on 21.02.2013 and also respondent herein
filed objections to the application filed by the petitioner
under Section 124 of the Trade Marks Act, 1999 on
28.02.2013 and the Trial Court having heard both the
counsels, dismissed the application vide order dated
30.03.2013. Hence, the present petition is filed being
aggrieved by the order of dismissal of I.A.No.VII.
6. Counsel for the petitioners relied upon
document at Annexure-A which is the copy of amended
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plaint and contends that the respondent has pleaded that
the trademark 'Ayyappan' has been used since 1992 for a
period of ten years and after the ten years also the same
is extended. Counsel also relied on the interim application
filed before the Trial Court and granting an order of
injunction as Annexures-B and B1. It is also the contention
of the petitioners' counsel that detail statement of
objection was filed by the petitioners and objections of the
respondents to the interlocutory application are produced
as Annexures-C and D. He also contends that the Trial
Court modified the interim order granted earlier and the
copy of the same is also produced as Annexure-E. He also
relied upon the copy of application and memo along with
documents produced as Annexures-F and G. Counsel
would also vehemently contend that when the application
was filed under Section 124 of the Act, the respondent has
also filed objections to the said application in terms of
Annexure-H and the order passed by the Trial court is also
produced as Annexure-J. He also relies upon several
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documents which have been relied before the Trial Court
as Annexures-K, L, M, N, P and Q.
7. It is the contention of the petitioners' counsel
that without any other alternative remedy, the petitioners
have filed this writ petition. Counsel in his argument
vehemently contends that the impugned order is a not a
speaking order and even the same has been passed
without even the slightest reference to the oral
submissions made by the petitioners as well as the
documents on record and not considering the legal
position thereon. The Principal District Judge, Ballari has
also failed to appreciate the correct legal position and
appreciate the law laid down by various High Courts and
Hon'ble Apex Court. The Trial Court has misguided itself of
the actual facts of the case in passing the impugned order.
The Trial Court while deciding the application under
Section 124 of the Act inter alia has to consider whether
the applicant pleads that registration of the respondent's
trademark is invalid and whether there is any proceedings
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for rectification of the register in relation to the
respondent's trademark are pending before the Registrar
or the Appellate Board. Hence, the finding of the Trial
Court that there is no claim for use of work 'Swamy
Ayyappa Gold' on the rice bag of the petitioners is
erroneous.
8. It is also contended that the Trial Court has
misread and improperly interpreted the provisions of
Section 124 of the Act by referring only to Sub-clause (b)
(i) of Section 124. It is submitted that a provision in an
enactment has to be read entirely and it has to be
understood and constructed in a manner that it is intended
for. It is also well settled in law that when an application is
filed and the issue is with regard to the trademark dispute
is pending, Section 124 of the Act ought to have been read
in entirety and the same has to be interpreted ordinarily in
plain language by keeping in mind the intention of the
legislature. It is also the contention of the petitioners'
counsel that the Trial Court has only taken Sub-clause (b)
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of clause (1) of Section 124 in deciding the said
application for stay, whereas the thrust of the petitioners'
case is based on the provisions of Section 124(1)(a)(i).
The provisions of Section 124(1)(b) do not apply to the
facts of this case. The learned Trial Court by taking only
Sub-clause (b) of Sub-section (1) of Section 124 into
consideration, has failed to notice the fact that petitioner
herein has pleaded in his written statement regarding the
invalidity of the respondent's trademark. The Trial Court
thereby has failed to notice that clause (a) of Sub-section
124 has been complied by the petitioners herein for the
grant of the relief mentioned therein. The Trial Court
further holds that the petitioners herein have not taken
defence as contemplated under clause (e) of the Sub-
section 2 of Section 30 of the Act. The Trial Court ought to
have relied upon the said provision.
9. The petitioners herein have specifically pleaded
questioning the validity of the trademark of the
respondent in para Nos.20 and 21 of the written statement
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amongst in other portions of the written statement. Hence,
the order passed by the Trial Court is erroneous and hence
it ought to have allowed the application, I.A.No.7 and
instead of that the Trial Court has measurably observed
and held that there is no mandate require for any Court to
apply for leave of the Court to file an application for
rectification.
10. Counsel for the petitioners in support of his
argument, vehemently contends that the matter is
pending before the Madras High Court and the application
was filed long back on 24.07.2012 and Trial Court failed to
take note of the very proviso of Section 124 in its entirety
and the impugned order is not correct.
11. Counsel in support of his argument also, has
relied upon the following judgments"
i. Whirpool Corporation vs. Registrar of Trade
Marks Mumbai reported in AIR 1999 SC 22
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ii. M/s Elofix Industries (India) vs. M/s. Steel
Bird Industries reported in AIR 1985 DELHI
258
iii. B.Mohamed Yousuff vs. Prabha Singh
Jaswant Singh and Others reported in 2008
(38) PTC 576 (Mad)
iv. Arun Colour Chem and Others vs. Mithumal
Essence Mart and Another reported in 167
(2010) DLT 285
v. SIEL Edible Oil Limited, (SEOL) vs. Khemka
Sales Private Limited reported in 2010 (42)
PTC 154 (Del)
vi. Jeet Biri Manufacturing Company Private
Limited vs. Pravin Kumar Singhal and the
Registrar of Trademarks reported in 2011 (47)
PTC 231 (IPAB)
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vii. Patel Field Marshal Agencies and Another
vs. P.M. Diesels Limited and Others reported in
(2018) 2 SCC 112
12. Counsel for the petitioners referring to the
judgment in the case of Whirpool Corporation, supra
contends that in para No.61 of the said judgment it is
discussed invoking Section 114 of the Act which is para
materia to Section 124 of the Act. By referring to the
judgments of different High Courts, he contends that in all
the judgments, Section 124 of the Act has been discussed
and considering the same, stayed the proceedings which is
pending before the Civil Court in coming to the conclusion
that the dispute with regard to the validity of the
trademark has to be decided before the competent forum.
13. Counsel by relying on the judgment in the case
of Patel Field Marshal Agencies, supra brought to
notice of this Court para Nos.26 and 34, wherein also it
has been discussed the earlier view in AstraZeneca UK
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Limited vs. Orchid Chemicals and Pharmaceuticals
Limited reported in 2006 SCC Online Del 1668 and also
taken note of the fact that intention of the legislature is
clear and 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 and when
the matter is pending before the High Court with regard to
rectification of trademark application, the Trial Court ought
to have exercised its discretion in entertaining the
application filed under Section 124 of the Act.
14. Per contra, counsel for the respondent would
vehemently contend that the suit was filed for the relief of
permanent injunction and in the written statement it is not
stated specifically with regard to trademark dispute is
concerned. He also contends that the application for
rectification must be pending as on the date of the filing of
the suit. He contends that the registration of the
trademark of the plaintiff/respondent is in 2010 itself and
the respondent herein is using the same from 1992. It is
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contended that as on the date of filing of the suit, no such
application was pending and only after commencement of
trial, they have filed an application and hence the Trial
Court has rightly dismissed the application.
15. The judgments relied upon by the petitioners
are not applicable to the case on hand. The counsel also
relied upon the judgment of this Court in
W.P.No.24093/2012 decided on 17.07.2012 and brought
to notice of this Court the discussion made in para Nos.15,
16, 17, wherein an observation is made that, in other
words, satisfaction of the Trial Court is a condition
precedent for proceeding further to allow the parties to
apply to the Trial Court. He also contends that the
judgment of the Hon'ble Apex Court in the case of
Ramdev Food Products vs. Arvindbhai Rambhai Patel
and Others reported in (2006) 8 SCC 726 was also
considered by this Court, wherein the Apex Court has
disapproved staying of proceedings at a belated stage. In
the case on hand also, the application is filed at a belated
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stage and hence the Trial Court has not committed any
error in rejecting the application and hence the judgment
of this Court referred supra is aptly applicable to the case
on hand.
16. In reply to the arguments of the learned
counsel for the respondent, counsel for the petitioners
would contend that Section 124 does not say that as on
the date of filing of the suit, application must be pending
and also contends that the Hon'ble Apex Court in the
judgment referred supra has taken note of Section
124(1)(a)(i) and held that the Court can exercise powers.
Counsel also contends that the correctness of the order of
the Trial Court is challenged and also the rectification
application is also filed before the appropriate forum and
there was no need to frame an issue and subsequent
judgment in the case of Patel Field Marshal Agencies,
supra is aptly applicable to the case on hand.
17. Having heard the learned counsel for the
petitioners and the learned counsel for the respondent and
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also considering the principles laid down in the judgments
referred by the respective counsels, the following point
would arise for consideration of this Court:
i. Whether the Trial Court has committed an
error in dismissing the application filed under
Section 124 of the Act filed praying stay of
further proceedings in the suit?
18. Having considered the material on record
particularly the pleadings of plaintiff as well as defendants
and so also the grounds which have been urged in the
application and statement of objections, it is opt for this
Court to extract Section 124 of the Act, which reads as
follows:
"124. Stay of proceedings where the validity
of registration of the trade mark is
questioned, etc.- (1) Where in any suit for
infringement of a trade mark-
(a) the defendant pleads that registration of the
plaintiff's trade mark is invalid; or
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(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 trade mark,
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
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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) or 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."
19. Having read the above said proviso, it deals
with stay of proceedings where the validity of registration
of the trademark is questioned. The aforesaid provision
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specifically provides that if a proceeding for rectification of
the register in relation to the trademark of either the
plaintiff or defendant is pending before Registrar or the
High Court, as the case may be, and a suit for
infringement, is filed wherein the aforesaid plea is raised
either by the defendant or by the plaintiff, the suit shall
remain stayed.
20. Section 124 of the Act further provides that if
no proceedings for rectification are pending on the date of
filing of the suit and the issue of validity of registration of
the plaintiff's or the defendant's trademark is raised/arises
subsequently and the same is prima facie found to be
tenable, an issue to the aforesaid effect shall be framed by
the Civil Court and the suit will remain stayed for a period
of three months from the date of framing of the issue so
as to enable the party concerned to apply to the High
Court for rectification of the Register. Section 124(2) of
the Act provides that in case an application for rectification
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is filed within the time allowed, the trial of the suit shall
remain stayed.
21. Section 124(3) of the Act provides that in the
event no such application for rectification is filed despite
the order passed by the Civil Court, the plea with regard to
validity of the registration of the trademark in question
shall be deemed to have been abandoned and the suit
shall proceed in respect of any other issue that may have
been raised therein.
22. Section 124(4) of the Act provides that the final
order as may be passed in the rectification proceeding
shall bind the parties and the Civil Court will dispose of the
suit in conformity with such order insofar as the issue with
regard to validity of the registration of the trademark is
concerned. The Court has to see the true purport, intent
and effect of the provisions contained therein so as to
understand the said Section to be contemplating only stay
of proceedings of the suit where validity of the registration
of the trademark is questioned. Naturally, the whole of the
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provisions of the Section will have to be read and so read
the same would clearly show lack of any legislative intent
to limit/confine the operation of the section to what its title
may convey. The intention of the legislature is clear that
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. However, in the event the Civil Court is
approached, inter alia, raising the issue of invalidity of the
trademark, 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.
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23. In this judgment, the Hon'ble Apex Court in
detail discussed with regard to scope and ambit of Section
124 of the Act. This Court also would like to refer para
Nos.26 and 34 of the judgment in the case of Patel Field
Marshal Agencies, supra which read as follows:
"26. Insofar as its earlier view in AstraZeneca
UK Ltd. (supra) is concerned, the Full Bench was of
the opinion that the appellate jurisdiction of the
High Court would only be confined to a
consideration of the question of the prima facie
assessment of tenability which would not touch
upon the question of invalidity of the trade mark on
merits. The view expressed in AstraZeneca UK
Ltd. (supra) was held to be unacceptable on that
basis. Insofar as the abandonment of the plea of
invalidity is concerned, the Full Bench was of the
opinion that Section 124(3) merely contemplates
abandonment of the plea/defence of invalidity in the
suit and not an abandonment to claim rectification
under Sections 47/57 of the 1999 Act.
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
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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."
24. Having considered the principles laid down in
the aforesaid judgment, it is clear that Section 124 of the
Act nowhere contemplates any grant of permission by the
Civil Court to move to the High Court or IPAB, as may be,
for rectification. The true purport and effect of Sections
111/124 (of the old and new Act) has been dealt with in
detail and would not require any further discussion or
enumeration. The requirement of satisfaction of the Civil
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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 cause of justice by elimination of false,
frivolous and untenable claims of invalidity that may be
raised in the suit.
25. The principles laid down in the case of Patel
Field Marshal Agencies, supra are aptly applicable to the
facts of the case on hand since though an application is
filed subsequent to filing of the suit by the respondent
herein but the same is pending for adjudication and since
in case where an issue of invalidity is raised or arises,
independent of a suit, the prescribed statutory authority
will be the sole authority to deal with the matter and
hence in a suit where inter alia, raising the issue of
invalidity of the trademark is pending and also when the
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suit is filed for the relief of permanent injunction, the same
should be stayed.
26. In the case on hand, exercising 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 is questioned by the
petitioner herein and the finding of the Tribunal/High Court
is binding on the Trial Court in considering the same.
27. No doubt, learned counsel for the respondent
relied upon the judgment of this Court passed in
W.P.No.24093/2012 and brought to notice of this Court
the discussion made by this Court in para Nos.15, 16 and
17, wherein it is held that as on the date of filing of the
suit, application must be pending and the same is not
within the parameters of Section 124 and also Section 124
clearly says that if any such application is pending and
even if such application is not pending, even the Court can
raise the issue and give time of three months and even if
no such application is filed within the given time, then the
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Court can proceed and hence this judgment will not come
to the aid of the counsel for the respondent.
28. The Apex Court also in the judgment in the case
of Whirpool Corporation, supra discussed in para No.61
with regard to old provisions of Section 111, which reads
as follows:
"61. Similarly, under Section 111 of the Act, in a
pending suit relating to infringement of a Trade
Mark, if it is brought to the notice of the Court that
any rectification proceedings relating to plaintiff's or
defendant's trade Mark are pending either before
the Registrar or the High Court, the proceedings in
the suit shall be stayed pending final decision of the
High Court or the Registrar. Even if such
proceedings are not pending either before the
Registrar or the High Court, the trial court, if prima
facie satisfied that the plea regarding invalidity of
plaintiff's or defendant's Trade Mark is tenable, may
frame an issue and adjourn the case for three
months to enable the party concerned to apply to
the High Court for rectification of the Register. If
within three months, the party concerned does not
approach the High Court, the plea regarding
invalidity of Trade Mark would be treated as
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abandoned but if such an application has been given
hearing, the suit would be stayed awaiting final
decision of the High Court. The finding of the High
Court would bind the parties and the issue relating
to the invalidity of Trade Mark would be decided in
terms of those findings."
(emphasis supplied)
29. Having read the aforesaid, the Apex Court
categorically held that in a pending suit relating to
infringement of a trademark, if it is brought to the notice
of the Court that any rectification proceedings relating to
plaintiff's or defendant's trademark are pending either
before the Registrar or the High Court, the proceedings in
the suit shall be stayed pending final decision of the High
Court or the Registrar. Even if such proceedings are not
pending either before the Registrar or the High Court, the
Trial Court, if prima facie satisfied that the plea regarding
invalidity of plaintiff's or defendant's trademark is tenable,
may frame an issue and adjourn the case for three months
to enable the party concerned to apply to the High Court
for rectification of the Register.
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30. Having read the principles laid down in the
judgment of the Apex Court and no doubt other judgments
of different High Courts relied on by the petitioners'
counsel also taken note of Section 124 of the Act. Hence,
it is clear that even if no such application is pending on the
date of filing of the suit also, Section 124 provides an
opportunity to make an application and hence the
contention of the respondent's counsel cannot be
accepted.
31. Having perused the material on record and also
though it is contended by the respondent's counsel that
the issue is not raised by the petitioners herein in the
written statement having read the written statement
entirely at Annexure-C and counsel also brought to notice
of this Court para No.11 as to no such stand was taken,
but on reading of para No.20 of the written statement, it is
categorically stated that the plaintiff claims ownership of a
label mark which is apparently registered with disclaimer
on the exclusive use of the device of 'Lord Ayyappa' and
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on all descriptive matter appearing on the label. The
application filed by the plaintiff for trademark registration
claims period of use from 14th Jan 1999, which is
subsequent to the defendant's usage. The plaintiff claims
user from 1992 in the suit without producing a single
document on his behalf to establish such usage from
1992.
32. Having taken note of the specific defence that
trademark journal publication itself reflects the date of
user claim as 13.07.1992, the basis of such entry would
be either typographical error due to the voluminous nature
of trademark journal publication or based on the document
produced by the plaintiff to establish the user from 1992 in
the registry. However, no such document is filed in the
present suit to claim usage from 1992, as such it is to be
presumed that the usage claimed by the plaintiff is totally
false and baseless and the defendant reserves its liberty to
challenge the registration granted in favour of the plaintiff
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in separate rectification proceedings before Intellectual
Property Appellate Board (IPAB).
33. The specific stand is also taken in the written
statement, particularly in para No.20, the very contention
of the respondent's counsel that validity has not been
disputed in the written statement cannot be accepted.
Having considered the material on record and the
pleadings of the plaintiff as well as the defendants and
also taking note of the very validity of the registration
certificate is disputed by the petitioners herein in para
No.20 of the written statement, the very contention of the
respondent that the same plea has not been raised is also
cannot be accepted.
34. Apart from that, having considered and
discussed the material available on record, particularly
Section 124 in toto, the very Act is very clear that if any
application for rectification is pending and the same has to
be adjudicated and till then the matter has to be stayed.
Hence, the Trial Court has committed an error in
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considering the very proviso under Section 124(1)(a) and
as contended by the petitioners' counsel it ought to have
considered Section 124(1)(b) and misdirected itself and
passed the impugned order. Hence, it requires interference
of this Court. Hence, I answer the above point framed for
consideration in 'Affirmative'.
35. In view of the above discussion, I pass the
following:
ORDER
(i) The writ petition is allowed.
(ii) The order dated 30.03.2013 passed on I.A.No.VII in O.S.No.3/2012 by the Principal District Judge at Ballari vide Annexure-J is hereby quashed.
(iii) Consequently, the application filed under Section 124 of the Trade Marks Act, 1999 by the petitioners is allowed and further proceedings of the Trial Court in O.S.No.3/2012 are stayed,
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(iv) The petitioners are also directed to expedite the application for rectification which is pending for consideration since suit is pending from 2012 which is more than a decade old.
Sd/-
(H.P. SANDESH) JUDGE SH CT-MCK List No.: 1 Sl No.: 92