Delhi High Court - Orders
Mr. Tarun Jit Tejpal And Ors vs Ms. Nandini Lall on 1 September, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~48
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 125/2021 and I.A. 16754/2023-16757/2023
MR. TARUN JIT TEJPAL AND ORS. ..... Petitioners
Through: Ms. Swathi Sukumar, Mr Naveen
Nagarjuna, Mr. Pratyush Rao, Mr.
Ritik Raghuwanshi and Mr. Rishubh
Agarwal, Advocates (M:
8989518353).
versus
MS. NANDINI LALL ..... Respondent
Through: Mr. Devvrat Joshi, Mr. Ramya
Aggarwal and Mr. R. Ramya,
Advocates for R-1 (M:
9560744337).
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 01.09.2023
1. This hearing has been done through hybrid mode.
2. The present petition concerns the mark "JILLING", registered under application No. 3603130 in class 43 (hereinafter 'impugned mark') in the name of the Respondent. The impugned mark is used by the Respondent for a homestay business. The Petitioners are owners of the mark 'JILLING TERRACES' and carry on business in the same sector and, therefore claim to be aggrieved with the Registration of the impugned mark.
3. Vide order dated 31st July, 2023, the Court framed 3 issues in the matter. The same are as follows:
"i) Whether the word 'Jilling' is a geographical name?
OPP
ii) Whether the mark 'Jilling' is exclusively associated C.O. (COMM.IPD-TM) 125/2021 Page 1 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:30:21 with the Respondent and has acquired a secondary meaning in respect of the Respondent's business? OPR
iii) Whether the mark 'Jilling' bearing no. 3603130 in Class 43 is liable to be rectified? OPP"
I.A.16754/2023 (u/O. VI Rule 17 CPC)
4. This is an application by which the Petitioners seek to add an additional ground under Section 9(2)(a) of the Trade Marks Act, 1999 ('the Act') for rectification/cancellation of the mark 'JILLING'. Section 9(2)(a) of the Act provides that a mark shall not be registered as a trade mark it is of such nature as to deceive the public or cause confusion.
5. Issue notice. Considering the fact that the issues have already been framed in the matter, let the Respondent file a reply to the application.
6. List on the date fixed.
I.A.16755/2023 [u/O. 7 Rule 14]
7. This is an application for placing on record the additional documents.
8. Issue notice. Let reply to this application be filed.
9. List on the date fixed.
I.A.16757/2023 (for exemption)
10. Allowed, subject to all just exceptions. Application is disposed of. I.A.16756/2023 [u/O. 14 Rule 5 seeking modification]
11. This is an application seeking modification of order dated 31st July, 2023 and framing of further issues in the petition. The prayer in the application is as under:
"a. Modify the Order dated 31.07.2023 to the extent of framing the additional preliminary issues on the basis of taking judicial notice of documentary evidence: (a) Whether "Jilling" is a geographical name? (b) C.O. (COMM.IPD-TM) 125/2021 Page 2 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:30:21 Whether it attracts the bar under section 9 (2) of the Trade Marks Act, 1999?"
12. A perusal of the application would show that the stand of the Petitioner is that two additional issues ought to be framed and as per ld. Counsel Ms. Sukumar, the said issues ought to be decided as preliminary issues without the need of cross examination. In the opinion of the Court, the attempt of the Petitioner is to now - amend the petition, add further documents and seek framing of issues to be adjudicated based on the additional documents, without cross examination. This attempt at this stage, after framing of issues would in effect result in reviewing the order dated 31st July 2023, where it was clearly agreed that oral evidence would be led by parties, considering the nature of issues raised. The amendment sought and whether documents are to be taken on record, is yet to be decided in the fresh I.As. listed today.
13. The order dated 31st July, 2023 is clear to the effect that there are three issues on which oral evidence would be required to be led. The affidavits of witnesses would also be required to be filed by the parties. Along with the said affidavits, the parties are at liberty to exhibit whatever documents they wish.
14. However, the question as to whether cross examination ought to take place on any particular document or not, would be a matter to be considered after the affidavits of evidence is filed. The same cannot be pre-judged today.
15. Insofar as the ground of Section 9(2) of the Act is concerned, the same is sought to be added today by way of an application under Order VI Rule 17 which would be adjudicated by the Court after pleadings are C.O. (COMM.IPD-TM) 125/2021 Page 3 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:30:21 completed. Irrespective of the same, Issue No. 3 does not restrict the ground of rectification on cancellation to either Section 9(1) or Section 9(2) of the Act or to any provision of law.
16. If the amendment as sought for is allowed, then the grounds of Section 9(2) of the Act can be automatically availed of as a ground for rectification, that would be considered and adjudicated. If the amendment is not allowed, the ground would be restricted to the grounds already pleaded in the petition.
17. In view of this, the present application is misconceived in the opinion of the Court and is dismissed with costs of Rs.5,000/- to be paid to the Respondent. The costs shall be paid within four weeks. C.O. (COMM.IPD-TM)-125/2021
18. List on the date already fixed for hearing of I.As. For the time being, the Local Commissioner shall not fix any date for evidence.
PRATHIBA M. SINGH, J.
SEPTEMBER 1, 2023 mr/dn C.O. (COMM.IPD-TM) 125/2021 Page 4 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 15:30:21