Delhi District Court
Wonderful Developers Pvt. Ltd vs Impresario Entertainment And ... on 16 February, 2013
IN THE COURT OF MS. NEELAM SINGH, ADJ(02) SOUTH,
SAKET COURTS, NEW DELHI
TM No. 143/11
Wonderful Developers Pvt. Ltd. ...Plaintiff
VERSUS
Impresario Entertainment and Hospitality
Pvt. Ltd. & Ors. ...Defendant
ORDER
1. Vide this order I shall dispose off the application for the stay of the suit by the defendants under section 124 of the Trademark Act read with section 151 CPC. In this application defendants has disputed the trademark of the plaintiff MOJO by submitting that MOJO is dictionary word and is in common usage worldwide, no single person can claim an exclusive right in the said trademark.
2. It is further submitted in the application that trademark MOJO has been wrongly registered and wrongly remained on the register as Section 9 of the Trademark Act, 1999 puts an absolute bar on the registration of words which are devoid of any distinctive character.
3. It is further submitted that vide the present suit plaintiff is seeking restraint on the defendant to use the word MOJO as a part of its trademark MOCHAMOJO which has been used by defendant since the year 2008. It is argued by counsel for defendant that as per the provision of Section 124 of the Trademark Act, 1999 if the trademark of the plaintiff is disputed then it is obligatory on the TM No. 143/11 Page no. 1/5 part of the court to stay proceedings and hence the present application.
4. The application is supported by an affidavit and a copy of letter dated 22.02.2012 written by defendant to the Deputy Registrar, IPAB for removal of trademark MOJO of the plaintiff is also placed on record.
5. Reply has been filed on behalf of plaintiff by submitting that the trademark of the plaintiff MOJO has acquired distinctiveness and secondary means by its continuous and extensive use since 2002. It is denied that MOJO has been wrongly remains on the register. It is submitted that it is a settled law that registration is per-se evidence of validity of a mark hence the validity of the plaintiff's registered trademark cannot be pleaded and disputed in the current proceedings.
6. It is submitted that plaintiff is registered proprietor of the above said mark MOJO and has exclusive right to use the same. It is denied by plaintiff that defendant is aggrieved u/s 57(2) of the Trademark Act. It is further submitted that application filed by defendant before IPAB is counter blast of the present suit filed by plaintiff and the said rectification proceedings is immature and without any merits hence the application filed by defendant under section 124 (b) be dismissed with heavy cost.
7. I have gone through Section 124 of The Trade Mark Act, 1999 which is reproduced as under: -
TM No. 143/11 Page no. 2/5"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
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 trademark, 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 trademark 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 TM No. 143/11 Page no. 3/5 therein or within such extended time as the court may for sufficient cause allow, the trial of 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 abondoned 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.
6. As per provisions of section 124 (2) where the party concerned have moved an application before IPAB that rectification of trademark of the opposite party and the rectification proceedings are pending adjudication then it is mandatory for the trial court to TM No. 143/11 Page no. 4/5 grant stay in the matter. From the perusal of record it appears that defendant has already moved before IPAB for rectification of the mark of the plaintiff and as per section 124(2) it is mandatory for this court to stay the proceedings until the final disposal of the rectification proceedings. Accordingly, the proceedings pertaining to the part of the suit i.e. pertaining to the infringement of the trademark in question are stayed till the disposal of the rectification proceedings before IPAB however plaintiff has filed his suit not only for infringement of the trademark but also for passing off and Section 124 is no way comes to the suit of the plaintiff. Defendant is hereby directed to file WS with regard to suit of the plaintiff pertaining to passing off and other consequent relief by serving an advance copy upon the plaintiff.
7. Application is disposed off in terms of the above. Announced in open court.
(NEELAM SINGH) ADJ-02, SOUTH, SAKET, NEW DELHI 16.02.2013/ MC TM No. 143/11 Page no. 5/5 M/s. Wonderful Developers Pvt. Ltd. vs. Impresario Entertainment and Hospitality Pvt. Ltd. & Ors.
TM No. 143/11
16.02.2013
Present: Counsel for plaintiff
Mr. Anuj Nair, counsel for defendant
Vide my separate order, application under section 124 of the Trade Marks Act is disposed off. Defendant is hereby directed to file WS with regard to suit of the plaintiff pertaining to passing off and other consequent relief by serving an advance copy upon the plaintiff. List the case for admission/ denial of documents and for framing of issues for 11.03.2013.
(NEELAM SINGH) ADJ-02, SOUTH, SAKET, NEW DELHI 16.02.2013/ MC TM No. 143/11 Page no. 6/5