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1. The appellant herein got registration of trademark FORZID under No.1144258 dated 18.10.2002 in Class - 5 questioning this registration in favour of the appellant, the respondent herein filed application for removal of the aforesaid trademark FORZID or rectification of register under Sections 9, 11, 18, 57 and 125 of the Trademarks Act, 1999 (hereinafter referred to as „the Act‟). To put it in brief, the removal was sought on the ground that the said trademark FORZID was deceptively similar to an earlier registered trademark, viz., ORZID (label mark), standing registered in the name of the respondent No.1 in Class - 5. The plea of the respondent herein was accepted by the Intellectual Property Appellate Board („IPAB‟ for brevity) vide decision dated 14.10.2008. The IPAB allowed the rectification application with direction to the Registrar of the Trademarks to remove the trademark FORZID belonging to the appellant from the register. The appellant field Writ Petition challenging the said order of the IPAB which has been dismissed by the learned Single Judge vide orders dated 04.7.2011 thereby affirming the order of the IPAB. The appellant filed the instant intra-Court appeal questioning the validity of the said order of the learned Single Judge.

13. Dismissing the application for modification preferred by the appellant, vide orders dated 09.9.2011, the learned Single Judge, in the first instance, clarified that the plea of prior permission of the High Court of Madras High Court was not pressed when the writ petition was finally heard. However, counsel for the appellant had necessitated that this plea be taken on merits as it goes to the root of the matter. It was noted by the learned Single Judge that when the application for interim injunction was dismissed and ex parte stay vacated by the Madras High Court as far as infringement of trademark ORZID, the appellant thereafter filed application to restrain the appellant from passing off its pharmaceutical preparation using the trade mark FORZID. This application as dismissed by the learned Single Judge on 30.4.2008. Prior thereto on 11.3.2008, the respondent filed a rectification application before the IPAB. Consequently, when the respondent filed appeal before the Division Bench, the rectification application was already pending before the IPAB. The appellant, at this stage, could not point out to the Division Bench that the rectification application could not have been filed by the respondent before the IPAB to dispose of the rectification application on or before 16.10.2008. From this, the learned Single Judge has drawn the inference with the appellant accepted the maintainability of respondent‟s rectification application before the IPAB and in any case, the aforesaid order of the Division Bench amounted to imply permission for the purposes of Section 124 (1)(b)(ii) of the Act. That was a reason, this point was not urged by the IPAB or even before the learned Single Judge in the first instance. Another reason given by the learned Single judge is as under:

19. In normal circumstances, the answer to be given was simple, viz., this Division Bench is bound by the view taken by the coordinate Bench of this Court and not the Madras High Court. However, the matter becomes complicated because of the reason that the respondent has filed a suit in the Madras High Court. Had the respondent approached the Madras High Court for framing of the issue, recording prima facie view and seeking permission, having regard its own judgment in the aforesaid case, the Court would have said that no such permission is required. On the other hand, the appellant argues that since circuit Bench of IPAB in Delhi dealt with the rectification application, due compliance of Section 124(b) was mandatory, as this Bench would be bound by the decision of this Court in Astrazeneca UK ltd. And Anr (supra). Learned counsel for the appellant also referred to the reasoned judgment of IPAB with the Circuit Bench sitting in Delhi in the case of Kamadhenu Realtors Pvt. Ltd. Vs. Kamadhenu Ispat Limited & Anr., 2011 (46) PTC 93 (IPAB) where the IPAB followed the decision of this Court in Astrazeneca UK ltd. And Anr (supra).

20. Taking into consideration the position mentioned in the preceding paragraph, even when we proceed on the basis that IPAB was bound to follow the Division Bench judgment of this Court, the effect of that would have been to insist the respondent to seek compliance of Section 124(b) of the Act by filing application in the Madras High Court. We have to keep in mind that the suit is pending in Madras High Court and it is only the Madras High Court which would have considered such an application. However, even if such an application has been made by the respondent, the Madras High Court would have held that no such permission is required. Thus, approaching the Madras High for this reason, before filing the rectification application before IPAB would have been an empty formality. IPAB could not have, therefore, rejected the application on the aforesaid ground as the party cannot be directed to resort to the proceedings which may turn out to be infructuous. Had the case been before some other High Court, position would have been different. In the facts of this case, therefore, we hold that the application could not be dismissed as non- maintainable in the absence of specific permission of the Madras High Court under Section 124(1)(b) of the Trademark Act. This is more so when the plea of prior permission of the High Court of Madras was not even pressed when the writ petition was finally heard.