Indian Kanoon - Search engine for Indian Law

5. That is how, as indicated earlier, defendant is in appeal before this court.

6. Mr. Gaurav Chopra, learned counsel for the defendant, in reference to Section 124 of the Act, submits that in a suit for infringement of a trade mark, if the defendant pleads that the registration of the plaintiff's trade mark is invalid or vice-versa, and if before the institution of the suit, the IPAB was already seized of the rectification proceedings, the court shall have to stay the suit. But, in the event, no such proceedings were pending, For Subsequent orders see CM-16925-CII-2016 8 of 64 but the court is satisfied that the plea of invalidity set up by the defendant or the plaintiff, as the case may be, is prima facie tenable, the court shall adjourn the suit for a specified period to enable the party concerned to move the IPAB for rectification of the register. And, if indeed such an application is moved, within the stipulated time, the trial of the suit shall stand stayed in terms of Section 124(2) of the Act. In the matter in hand, he submits that, no rectification proceedings were pending before the institution of the suit, for the defendant indeed moved the IPAB subsequently, and that too without any order of the court under Section 124(1)(ii). But, that is inconsequential, for the right to invoke the jurisdiction of the Board is not dependent upon any prima facie determination of the plea of invalidity by the civil court. In reference to paragraph 64(1)(a) of the decision of the Full Bench of Delhi High Court in Data Infosys Ltd. And Ors. v. Infosys Technologies Ltd., 2016(65) PTC 209, he submits that IPAB has the exclusive jurisdiction to decide upon the plea of invalidity of registration of a trade mark, and Section 124 does not control the choice of a litigant to seek rectification of the register. That is how, he asserts, the trial court being cognizant of the plea of invalidity set up in defence, pendency of the rectification proceedings before the IPAB, and on consideration of the specific application, under Section 124, moved by the defendant, stayed the suit, which implies that court found the invalidity plea to be prima facie tenable. For, otherwise the suit could never be stayed under Section 124(2) of the Act. Thus, he asserts, once the trial court found the plea of invalidity to be prima facie tenable how could, it still hold that there also exists a prima facie case in favour of the plaintiff, and grant injunction.

14. A bare analysis of the provisions of Section 124(1)(i) reveals that where in any suit for infringement of a trade mark, defendant pleads that registration of the plaintiff's trade mark is invalid or he sets up a defence in terms of clause (e) of sub-section (2) of section 30 of the Act, and the plaintiff questions the validity of registration of defendant's trade mark, the court shall stay the suit, if the rectification proceedings are pending before the IPAB, till the final decision is reached in those proceedings. And, in case no such proceedings are pending, and the court finds the plea of invalidity to be prima facie tenable, in terms of Section 124(1)(ii), it would raise an issue in this regard, and adjourn the matter for a specified time to enable the party concerned to apply to the Appellate Board for rectification of the register. And, if the rectification proceedings are initiated within the specified time, the court shall stay the suit, in terms of Section 124(2) of the Act, to await final decision in the rectification proceedings. However, in the event no such application is moved, sub- section (3) of Section 124 postulates that the issue as to the validity of registration of the trade mark shall be deemed to have been abandoned, and the court shall proceed with the suit in regard to other issues. And, under sub-section (4) of section 124, the final order made in the rectification For Subsequent orders see CM-16925-CII-2016 21 of 64 proceedings shall be final and binding upon the parties, and the court shall dispose of the suit in terms thereof, in so far as it relates to the issue as to the validity of registration of the trade mark. Sub-section (5) of Section 124 suggests that even though the suit is stayed, it shall still not preclude the court from making any interlocutory order during the period of the stay of the suit.

16. The matter can be viewed from yet another perspective: what Section 124(1)(i) postulates is; 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. Nowhere does it say that the court shall stay the suit if the rectification proceedings "were pending prior to or before or on the date of institution of the suit". Needless to assert, that neither can the court subtract or add words to a Statute nor read something into it which indeed does not exist. The Hon'ble Supreme Court in Nasiruddin and Ors. v. Sita Ram Agarwal, AIR 2003 SC 1543, observed:

To construction must not, of course, be strained to include cases plainly omitted from the natural meaning of the words."

For Subsequent orders see CM-16925-CII-2016 25 of 64 Thus, to my mind, Section 124(1)(i) not only takes within its sweep a situation where the rectification proceedings were already pending at the time of institution of the suit, but also, if subsequent to the filing of the suit a party concerned moves the Registrar/IPAB, for rectification of the register, and then set up a plea of invalidity in the written statement or vice- versa. However, the precise moment or stage at which, if the rectification proceedings are pending, the court shall have to stay the suit, in terms of Section 124(1)(i) is: when, post completion of the pleading of the parties, the court takes cognizance of the dispute for the first time, and applies its mind.