Bombay High Court
Kinjal Ramesh Savla vs Euphoric Innovations Pvt. Ltd on 13 February, 2020
Author: S.C.Gupte
Bench: S.C.Gupte
1 1) comip-1115-19.doc
SAS
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL IP SUIT NO.1115 OF 2019
WITH
INTERIM APPLICTION NO.1 OF 2019
Kinjal Ramesh Savla ..Plaintif.
V/s.
Euphoric Innovations Pvt. Ltd. ..Defendant.
Mr.Hiram Kamod with Ms.Dipali Sheth & Ms.Priya Pandey i/b.
Eternity Legal for the Plaintif.
Dr.Sheetal Vohra with Mr.Meit Sampat, Ms.Chandni Dewani i/b.
Little & Co. for the Defendant.
CORAM : S.C.GUPTE, J.
DATE : FEBRUARY 13, 2020
P.C. :-
This suit is in respect of infringement of trademarks and passing of of goods. It also claims a breach of copyright. By an order dated January 30, 2020, this Court declined to grant any interlocutory relief to the Plaintif and dismissed his Notice of Motion.
2. Learned counsel for the Plaintif submits that the Defendant has a registration of word mark ' Walkaroo'. Since the Plaintif's adopted word mark is 'Buckaroo', the Plaintif has filed a rectification application on the basis of the same ::: Uploaded on - 24/02/2020 ::: Downloaded on - 09/06/2020 07:26:21 ::: 2 1) comip-1115-19.doc allegations as contained in the plaint herein. Learned counsel submits that in view of this fact, the hearing of the suit should be stayed, having regard to the provisions of Section 124 of the Trade Marks Act, 1999. Learned counsel further submits that during the pendency of the suit, the Defendants have secured registration for another trademark ' Walkaroo' as a label mark and the Plaintif would like to seek rectification even in respect of this label mark. Learned counsel submits that leave may be granted accordingly on the principles of law stated by Courts in accordance with Section 124(1)(b) of the Trade Marks Act.
3. Learned counsel for the Defendant has no objection to this relief being granted. Learned counsel, however, submits that her client has taken out Interim Application No.1 of 2019, wherein punishment in respect of perjury under section 340 of the Criminal Procedure Code, read with sections 191, 193 and 195 of the Indian Penal Code, have been sought against the Plaintif. Learned counsel submits that this application needs to be taken up for hearing immediately; Otherwise, if the suit were to be stayed under Section 124 Trade Marks Act without the application being considered, gross injustice will be caused. The submission does not appeal to the Court. After all, perjury proceedings can only be initiated after this Court comes to a prima facie conclusion that false or forged documents have been submitted by a party to the suit with an intent to procure orders from the Court. Today, since the Court is not rendering any findings, even prima facie, the application may appropriately be ::: Uploaded on - 24/02/2020 ::: Downloaded on - 09/06/2020 07:26:21 ::: 3 1) comip-1115-19.doc adjourned till the hearing of the suit, which, as noted above, deserves to be stayed in accordance with the provisions of Section 124 of the Trade Marks Act.
4. Learned counsel, in the alternative, submits that even if the Plaintif's application for stay of proceedings under Section 124 of the Trade Marks Act were to be allowed, even the Defendant should be allowed to raise the issue of invalidity of the Plaintif's registered trademark/s and apply to the Appellate Board for rectification of the Plaintif's registration. The request appears to be reasonable. The provisions of Section 124 of the Trade Marks Act can be invoked at the instance of both the plaintif and the defendant. The defendant may raise a defence under clause
(d) of Section 30(1) of the Trade Marks Act and plead invalidity of the plaintif's registered trademark. So also, the defendant may plead that the plaintif's registration was not in accordance with the provisions of Sub-section (e) of Section 30(2) of the Trade Marks Act or otherwise. In either case, the Court trying the suit is required to anyway stay the suit, if the proceedings of rectification in relation to either the plaintif's trade mark or the defendant's trademark are pending before the Registrar or the Appellate Board or, in the alternative, if no such proceedings are pending, upon the Court being satisfied that prima facie the plea is not tenable, raise an issue regarding the same and adjourn the case to enable the parties to apply to the Appellate Board for rectification of registration. In the present case, just as the Plaintif has a case for stay of proceedings or, in the alternative, for leave to apply to the Appellate Board for rectification, the Defendant also has a ::: Uploaded on - 24/02/2020 ::: Downloaded on - 09/06/2020 07:26:21 ::: 4 1) comip-1115-19.doc similar right and a case to urge before the Board.
5. In the premises, the suit is stayed pending rectification application of the Plaintif in respect of the Defendant's registered trade mark 'Walkaroo'. The Plaintif is also granted leave to apply to the Appellate Board for rectification of the Defendant's registered label 'Walkaroo'. The Defendant also shall likewise have leave to apply for rectification in respect of the Plaintif's registered trademark/s.
6. Interim Application No.1 of 2020 filed by the Defendant is adjourned to the hearing of the suit.
(S.C.GUPTE, J.) ::: Uploaded on - 24/02/2020 ::: Downloaded on - 09/06/2020 07:26:21 :::