Delhi High Court
Brahmos Aerospace Pvt Ltd vs Fiit Jee Limited And Anr. on 25 February, 2019
Author: Prateek Jalan
Bench: S. Ravindra Bhat, Prateek Jalan
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 30.10.2018
Pronounced on: 25.02.2019
+ FAO(OS)(COMM)247/2018 & CM Appl. 10465/2017
BRAHMOS AEROSPACE PVT LTD ..... Appellant
Through: Mr. A. Das, Ms. Rashi Bansal
and Ms. Anju Agarwal,
Advocates.
versus
FIIT JEE LIMITED AND ANR. ..... Respondents
Through: Mr. Mohan Vidhani and
Mr.Ashish Singh, Advocates.
CORAM:
HON'BLE MR. JUSTICE S. RAVINDRA BHAT
HON'BLE MR. JUSTICE PRATEEK JALAN
MR.JUSTICE PRATEEK JALAN
%
1. The challenge in this appeal is to an order dated 17.02.2017 by
which the learned Single Judge had stayed the suit filed by the
appellant herein, Brahmos Aerospace Pvt. Ltd. [hereafter referred to as
"Brahmos"] against the respondent FIITJEE Ltd. [hereafter referred to
as "FIITJEE"]. This order was passed under Section 124 of the Trade
Marks Act, 1999 to enable FIITJEE to approach the Intellectual
Property Appellate Board [hereafter referred to as "IPAB"] for
rectification of the Register of Trade Marks in respect of the disputed
FAO(OS)(COMM)247/2018 Page 1 of 14
trade mark of "BRAHMOS", which forms the subject matter of the
suit.
Background
2. The suit in question [CS(OS) 2655 of 2013 subsequently
renumbered as CS (Comm) 556/2018] was filed by Brahmos on
19.12.2013 claiming to be the owner of a well known and reputed
trade mark "BRAHMOS" which was inter alia registered for
educational services under class 41. It alleged that FIITJEE was using
the same name for an online aptitude test and thus infringing the trade
mark. The principal reliefs sought by Brahmos in the suit are as
follows:
"a) A decree for permanent injunction restraining the
Defendants, by themselves, their servants, agents, etc.
from unauthorizedly using, taking unfair advantage,
advertising, visually representing, offering sale of
services, directly or indirectly dealing in services under
the trademark BRAHMOS or any other trademark
deceptively and/or confusingly similar to the trademark
BRAHMOS so as to infringe the Plaintiff‟s registered
trademark BRAHMOS. And/Or
b) A decree for permanent injunction restraining the
Defendants, by themselves, their servants, agents, etc.
from unauthorizedly using, taking unfair advantage,
advertising, visually representing, offering sale of
services, directly or indirectly dealing in services under
the trademark BRAHMOS or any other trademark
deceptively and/or confusingly similar to the trademark
BRAHMOS as may lead to passing off-unfair
competition.And/Or
c) A decree of damages on account of Infringement and
passing off and unfair competition, by the use of the
FAO(OS)(COMM)247/2018 Page 2 of 14
trademark enumerated herein of the Plaintiff in favour of
the Plaintiff and against the Defendants."
3. FIITJEE has contested the suit by way of a written statement
filed on 09.01.2014. By an order dated 24.02.2014, the learned Single
Judge decided an application for injunction [I.A. No.21136/2013] filed
by Brahmos, in its favour. FIITJEE was injuncted from using the
trade mark "BRAHMOS" in relation to educational activities or part of
a domain name in any manner whatsoever. Although there appears to
be some dispute regarding the compliance of this order by FIITJEE,
inasmuch as, contempt proceedings have also been instituted by
Brahmos, that is not relevant for the adjudication of this appeal.
4. In July, 2015, FIITJEE filed I.A. No.14418/2015, under
Section 124 of the Trade Marks Act, 1999 for a stay of the suit for a
period of three months to enable it to file cancellation/rectification
petitions before the IPAB, seeking removal of the registrations of the
mark in favour of the plaintiff from the Register of Trade Marks. This
application was contested by Brahmos but has been allowed by the
impugned order of the learned Single Judge.
5. During the pendency of the present appeal, the Division Bench
passed an order dated 04.05.2017 wherein it was recorded that
FIITJEE had invoked the jurisdiction of IPAB under Section 124 of
the Act. The Division Bench directed that the impugned order and
further proceedings before the IPAB would remain stayed. By a
further order dated 17.10.2017, it was inter alia directed that the
proceedings in the suit be expeditiously concluded and not adjourned,
except in exceptional circumstances. These orders dated 04.05.2017
FAO(OS)(COMM)247/2018 Page 3 of 14
and 17.10.2017 have been carried to the Supreme Court by FIITJEE
in SLP(C)No.28793-94/2017. The Supreme Court, by an order dated
17.10.2017 directed that the suit in question i.e. CS(OS)
No.2655/2013 shall not proceed until further orders. The present
situation therefore is that the IPAB has been approached by FIITJEE,
but the proceedings before it, as well as the suit pending in this Court,
are stayed.
Maintainability
6. In view of the fact that during the pendency of this appeal, the
suit has been converted into a "commercial suit" within the meaning
of the Commercial Courts Act, 2015, the first question which arises is
as to the maintainability of this appeal under Section 13 of that Act.
The said section provides as follows:
"13. Appeals from decrees of Commercial Courts and
Commercial Divisions.
(1) Any person aggrieved by the judgment or order of
a Commercial Court below the level of a District Judge
may appeal to the Commercial Appellate Court within a
period of sixty days from the date of judgment or order.
(1A) Any person aggrieved by the judgment or order of a
Commercial Court at the level of District Judge
exercising original civil jurisdiction or, as the case may
be, Commercial Division of a High Court may appeal to
the Commercial Appellate Division of that High Court
within a period sixty days from the date of the judgment
or order:
Provided that an appeal shall lie from such orders
passed by a Commercial Division or a Commercial
FAO(OS)(COMM)247/2018 Page 4 of 14
Court that are specifically enumerated under Order
XLIII of the Code of Civil Procedure, 1908 (5 of 1908) as
amended by this Act and section 37 of the Arbitration
and Conciliation Act, 1996 (26 of 1996)
(2) Nothwithstanding anything contained in any other
law for the time being in force or Letters Patent of a
High Court, no appeal shall lie from any order or decree
of a Commercial Division or Commercial Court
otherwise than in accordance with the provisions of this
Act. "
7. It is evident from the proviso to Section 13 (1A), and Section 13
(2) of the Commercial Courts Act, 2015, that appeals from orders
from the Commercial Division of the High Court are maintainable
only if the orders are specifically enumerated in Order XLIII of the
Code of Civil Procedure, 1908. It is not disputed that an order under
Section 124 of the Trade Marks Act, 1999, does not fall within this
category.
8. The interpretation of Section 13 of the Commercial Courts Act,
2015, came up for consideration before a coordinate Bench of this
Court in HPL (India) Ltd. Vs. QRG Enterprises (2017) 238 DLT 123
(DB) wherein this Court held as follows:
"30. We now come to the meaning to be ascribed to the
proviso in Section 13(1). It clearly stipulates that an
appeal shall lie from such orders passed by a
Commercial Division or a Commercial Court that are
specifically enumerated under Order XLIII of the CPC,
as amended by the said Act, and Section 37 of the
Arbitration and Conciliation Act, 1996. We have
seen that „orders' as understood under the CPC are
different and distinct from „decrees'. And, orders are
FAO(OS)(COMM)247/2018 Page 5 of 14
nothing but the formal expression of any decision of a
Civil Court not amounting to a decree. Therefore, the
amplitude and width of the expression „order' is very
wide under the CPC itself but not all orders are
appealable. The appealable orders are enumerated in
Order XLIII of the CPC. We have already pointed out
above, that there are only two kinds of appeals
recognized under the CPC, namely, - „Appeals from
decrees' and „Appeals from orders'. Section 104, which
has been extracted earlier in this judgment, specifies the
orders from which appeals lie. It clearly provides that an
appeal shall lie from the orders enumerated in the said
provision itself and, save as otherwise expressly provided
in the body of the CPC or by any law for the time being
in force, from no other orders. This means that appeals
from orders are restricted to those orders which are
either specified in Section 104 itself or expressly
provided in the body of the Code or by any law for the
time being in force. Insofar as the impugned order is
concerned, it is clear that it does not fall within the
orders specified under Section 104. We now have to look
at Order XLIII Rule 1 which stipulates that an appeal
shall lie from the orders enumerated therein under the
provisions of Section 104. In other words, only an order
specified under Order XLIII Rule 1 would be appealable
and, read with the provisions of Section 104, no other
order would be an appealable order under the CPC. In
this backdrop, the proviso to Section 13(1) makes it
abundantly clear that an appeal shall lie from such
orders passed by a Commercial Division or a
Commercial Court that are „specifically enumerated'
under Order XLIII of the CPC, as amended by the said
Act and Section 37 of the Arbitration and Conciliation
Act, 1996. Clearly, in our view, this restricts the
appealable orders to only those orders which are
specifically enumerated in Order XLIII. In the present
case, the impugned order is admittedly not one specified
under Order XLIII."
FAO(OS)(COMM)247/2018 Page 6 of 14
The Court also considered whether the appeal would be maintainable
under the Delhi High Court Act, 1966 and concluded that it would not.
9. The judgment in HPL (supra) was considered by another
Division Bench [to which one of us, S.Ravindra Bhat, J., was party],
in Eros Resorts & Hotels Ltd. Vs. Explorer Associates Pvt. Ltd. (2018)
251 DLT 101 (DB). In Eros Resorts (supra), the Court was concerned
with a case where the appeal had been instituted prior to the date when
the Commercial Courts Act was brought into force. Following the
judgment of the Supreme Court in Videocon International Ltd. Vs.
SEBI (2015) 4 SCC 33 and of this Court in Ardee Infrastructures vs.
Anuradha Bhatia (2017) 1 HCC (Del.) 137, the Division Bench held
that the right to an appellate remedy is not extinguished by the
enactment of a new statute when the appeal had been instituted prior
to the amendment in the statutory regime.
10. Although the Division Bench decisions in HPL (supra) and Eros
Resorts (supra) have both been challenged in SLP (C) No. 5837/2017
and SLP (C) No. 23365/2018 respectively, which are pending before
the Supreme Court, there does not appear to be any interim order of
stay of the judgment of this Court.
11. Coming to the facts of the present case, this appeal was
instituted on 10.03.2017. The Commercial Courts Act, 2015 came
into force on 23.10.2015, and the Commercial Division was notified in
this Court by an order dated 17.11.2015. Section 15 of the
Commercial Courts Act requires transfer of suits pending in a High
Court to the Commercial Division if the suit relates to a "commercial
FAO(OS)(COMM)247/2018 Page 7 of 14
dispute" of "specified value", as defined in Sections 2(1)(c) and 2(1)(i)
respectively. In the present case, the renumbering of the suit in the
Commercial Division of this Court has occurred only on 16.02.2018
pursuant to an order of the Joint Registrar dated 06.02.2018.
12. It is evident from the above that, on the date when the present
appeal was instituted by Brahmos, the suit had not been transferred to
the Commercial Division and the provisions of Section 13 of the
Commercial Courts Act were therefore, not attracted to these
proceedings. In view of the clear pronouncement of the Supreme
Court in Videocon (supra) to the effect that an appellate remedy
becomes vested in a party on the date when the dispute/lis is instituted,
and the consequent judgment of this Court in Eros Resorts (supra),
we, therefore, hold that the present appeal at the instance of Brahmos
is maintainable.
Merits
13. Turning now to the merits, it is necessary first to notice the
provisions of Section 124 of the Trade Marks Act, 1999, which are
set out below:
"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
FAO(OS)(COMM)247/2018 Page 8 of 14
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 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
FAO(OS)(COMM)247/2018 Page 9 of 14
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."
14. As noted by the learned Single Judge in the impugned
judgment, this provision has been considered in the judgment of a Full
Bench of this Court in Data Infosys Ltd. Vs. Infosys Technology Ltd.
(2016) SCC OnLine (Del) 677 [to which one of us, S. Ravindra Bhat,
J., was party] wherein it was inter alia held as follows:
"2. This Court holds, by its majority judgment (Vipin
Sanghi, J dissenting on this point) that the two situations
whereby the infringement action is stayed, are when the
rectification proceedings are instituted before the filing
of the suit (Section 124 (1) (i)) and after the plea of
invalidity is held to be prima facie tenable under Section
124(1) (ii)). In the first situation, if such plea exists,
before the filing of the suit, the Court has to stay the suit
to await the decision of the IPAB. In the second situation,
if there is no application for rectification before the IPAB
when the suit is filed and a party to the infringement suit,
wishes to challenge it after the filing of the suit, it may do
so, but the court has to assesses the tenability of the
invalidity plea- if it finds it prima facie tenable, then and
then alone, would it stay the suit to enable the party to
approach the IPAB within a time period. If the party does
not avail of this, or approaches the IPAB after the period
given, the court would proceed with the suit; the plea of
invalidity is deemed abandoned in the infringement suit."
15. The recent judgment of Supreme Court in Patel Field Marshall
Agencies vs. P.M. Diesels Ltd. (2018) 2 SCC 112 has also dealt with
this issue, although the proceedings before the Supreme Court were
FAO(OS)(COMM)247/2018 Page 10 of 14
under the corresponding provisions of the Trade and Merchandise
Marks Act, 1958. The Supreme Court in paragraph 9 of the said
judgment, formulated the issue before it in the following terms:
"In a situation where a suit for infringement is pending
wherein the issue of validity of the registration of the
trade mark in question has been raised either by the
plaintiff or the defendant and no issue on the said
question of validity has been framed in the suit or if
framed has not been pursued by the party concerned in
the suit by filing an application to the High Court for
rectification under Section 111 read with Section 107 of
the Trade and Merchandise Marks Act, 1958, whether
recourse to the remedy of rectification under Section
46/56 of the 1958 Act would still be available to contest
the validity of the registration of the trade mark."
16. The Supreme Court in the said judgment, referred inter alia to
the Full Bench decision of this Court in Data Infosys (supra) and
observed, that once an issue is framed with regard to the invalidity of
the trade mark by the civil court, that issue would fall for
determination of the Tribunal. Reference in this connection may be
made to paragraphs 34 & 41 of the judgment, which reads as follows:
"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 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.
FAO(OS)(COMM)247/2018 Page 11 of 14
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.
xxxx xxxx xxxx xxxx
41. 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 with in 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 cause
of justice by elimination of false, frivolous and untenable
claims of invalidity that may be raised in the suit."
[Emphasis supplied]
17. Although the said judgment was rendered in the context of the
1958 Act, it is expressly held by the Supreme Court [in paragraphs 10,
20, 41 & 42 thereof] that the provisions of the 1999 Act are in pari
materia with the corresponding provisions of the 1958 Act.
FAO(OS)(COMM)247/2018 Page 12 of 14
18. We note that, in the present case, FIITJEE had not moved the
IPAB under Section 124 of the Act prior to institution of the
infringement suit by Brahmos. The question of prima facie tenability
of its plea of invalidity, therefore, falls to be determined. FIITJEE
relies upon the judgment in Patel Field Marshall (supra) and submits
that a specific issue regarding validity of the trade mark has been
framed in the suit, by an order dated 09.12.2014 passed by learned
Single Judge. The issue in question reads as follows:
"(v) Whether the plaintiff‟s registrations for the mark
"BRAHMOS" are invalid/liable to be cancelled/removed
from the Register of Trademarks?OPD"
On the other hand, it is contended on behalf of Brahmos that the order
dated 24.02.2014, granting an injunction in its favour precludes any
prima facie finding of invalidity at this stage.
19. In our view, the issue of prima facie invalidity must, for the
purpose of this application, be decided in favour of FIITJEE following
the judgment of the Supreme Court in Patel Field Marshall (supra).
As the learned Single Judge has framed an issue in the suit with regard
to the validity of the trade mark registered by Brahmos, that is
sufficient to hold that FIITJEE was entitled to invoke the provisions of
Section 124 of the Trade Marks Act, 1999.
Conclusion
20. The impugned order therefore, warrants no interference by this
Court. However, in view of the fact that the rectification proceedings
FAO(OS)(COMM)247/2018 Page 13 of 14
filed by FIITJEE before the IPAB were stayed by the interim order
dated 04.05.2017, we dispose of this appeal by directing that the suit
shall continue to be stayed for a further period of three months from
the date of this judgment to enable the determination of the
rectification proceedings by the IPAB. It goes without saying that the
proceedings in the suit shall resume only in the event that the Supreme
Court vacates the stay granted by its order dated 27.10.2017 in SLP
(C) No.28793-94/2017.
21. The appeal, and pending application, are disposed of with the
aforesaid directions. No order as to costs.
PRATEEK JALAN, J.
S. RAVINDRA BHAT, J. FEBRUARY 25, 2019 „hkaur/pv‟ FAO(OS)(COMM)247/2018 Page 14 of 14