Trade Mark,Number,Class,Date,Goods
MORTEIN and
ARROW
device",1071289,5,02/01/02,"Insecticides,
Pesticides,
Rodenticides
and Miticides
a party should obtain leave of the Court before filing an application for rectification of the Register, as a Statutory right is conferred under Section 47",,,,
and Section 57 of the Act upon an aggrieved person to file application for rectification/removal of the entry made in the Registrar. The grounds are,,,,
stated in the respective Section 47 and Section 57 based on which such rectification application can be made by an aggrieved person. There is no,,,,
condition prescribed in either of the said provisions contained in Section 47 or Section 57 providing for prior permission or approval of a Civil Court,,,,
before filing application for rectification. Section 125 of the Act, it was contended, provides a Forum where such an application can be made. It was",,,,
lastly submitted by Shri Deb Jyoti Ghosh that if the contention of Shri Subhojit Roy was accepted it would mean imposing a restriction upon the,,,,
statutory right conferred upon an aggrieved person to seek rectification, such restriction to maintain application for rectification, not having been",,,,
provided by statute, cannot be a ground for rejection of the application for rectification filed under Section 47 and Section 57 read with Section 125 of",,,,
the Act. The miscellaneous petition, therefore, deserves to be dismissed.",,,,
9. With the assistance of Learned Counsel for the respective parties we have perused the relevant pleadings. The foremost question that came to our,,,,
mind is as to whether instant petition M.P. No. 131/2006 should be considered at this stage or the main rectification application should itself be heard,,,,
wherein the objection as to a maintainability can also be considered. Being a Tribunal constituted under a Special Enactment it is but appropriate that,,,,
matters should be disposed of in entirety in contradistinction to piecemeal disposals. However, keeping in view the observations of the Division Bench",,,,
of the Gujarat High Court in Field Marshal Agencies case (supra), we decided to take up the threshold objection and to dispose of the same. To",,,,
appreciate the said observations (extracted hereunder) the reference to Section 111 in the said judgment is with respect to Trade and Merchandise,,,,
Marks Act, 1958, the corresponding provision being Section 124 of the Act, 1999.",,,,
The question of determination of issue and abandonment of it through non-prosecution are inter-woven in the scheme and, therefore, once the suit for",,,,
infringement has been instituted by the proprietor of registered trade mark, and a plea of invalidity has been raised by the Defendant, the parties must",,,,
adhere to follow the rectification proceedings as envisaged under Section 111 and not otherwise. It also does not commend that though for the purpose,,,,
of suit a person raising the plea is deemed to abandon the plea, but independent of the suit, during the pendency of that very suit he is free to move",,,,
rectification application d and again plead for a judgment in the light of decision obtained outside the provisions of Section 111. In case a plea is,,,,
deemed to have been abandoned, the only remedy of the party concerned may be to approach that very Court, to extricate himself from the",,,,
consequence of abandonment, or higher Forum. Else, as far as the parties to the suit are concerned, they must be left to contest the suit as it stands",,,,
without independent recourse to rectification application once the right to have recourse to rectification proceedings has accrued in their favour and,,,,
they abandoned it by dint of their own act.,,,,
10. Therefore, the only question now for consideration is whether the applicant (Godrej Sara Lee Ltd.) is entitled to maintain the rectification",,,,
application without the plea as to the invalidity of the registered mark in the pending suit, and if such a plea has been raised in the suit recourse to",,,,
rectification proceedings is available without obtaining prima facie satisfaction of the Civil Court as to the tenability of the said plea.,,,,
11. As already noticed from the pleadings, both in the main rectification application as also from the counter in M.P. No. 131/2006 it is not clear as to",,,,
whether any plea as to invalidity of the registered trade mark of the Respondent, required to be rectified in the present rectification proceedings, has",,,,
been raised in the suit by the rectification Petitioner and whether any issue has been framed by the Hon'ble Court in seized of the suit. That is why, to",,,,
the extent relevant, averments made in the pleadings by the rectification Petitioner have been extracted supra.",,,,
12. The instant application M.P. No. 131/2006, as already noticed, is the Respondent's petition for dismissal of the rectification application based",,,,
mainly on non-observance or non-compliance of the provisions of Section 124(1)(ii) of the Act. To appreciate the said contention based purely on law,",,,,
it will be appropriate to read the said Section 124 in its entirety.,,,,
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 Plaintiffs 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 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 insofar 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.,,,,
13. From the facts as culled out from the pleadings it is apparent that Respondent in the Rectification Application filed a suit for injunction, passing off",,,,
etc., being CS (OS) No. 826 of 2002. The plaint was subsequently amended to include relief based on infringement of Trade Mark, after the Plaintiff",,,,
obtained registration of its trade mark. On coming to know of the amendment of the plaint which according to Godrej Sara Lee Ltd., the applicant in",,,,
the rectification application before us, is on the basis of wrongful registration obtained, therefore, it filed the rectification application before this",,,,
Tribunal. It is the case of the applicant for rectification that no permission or leave is to be taken from the Court for initiating rectification proceedings,,,,
before this Tribunal, nor is there any statutory requirement therefor.",,,,
14. The contentions of law advanced before us by Shri Deb Jyoti Ghosh, Ld. Counsel for Godrej Sara Lee, appear to be both plausible and attractive.",,,,
The right to file application for rectification or removal of any entry made in the Register is e conferred by Section 47 and Section 57 of the Act. Such,,,,
an application can be filed only by a person aggrieved on the grounds specified in Section 47 and Section 57 of the Act. Section 47 of the Act deals,,,,
with the removal of the trade mark on the grounds of non-use. It pre-supposes that the registration which was initially validly made is liable to be taken,,,,
off the Register by subsequent non-user. On the other hand Section 57 of the Act deals with situations where the initial registration should not have,,,,
been made or was incorrectly made.,,,,
15. Section 47 and Section 57 of the Act lay down the grounds based on which the registered mark may be taken off the Register or an order can be,,,,
made for cancelling or varying the registration of a trade mark on the ground of any contravention or failure to observe a condition entered on the,,,,
Register. Section 125 of the Act prescribes the Forum where such rectification application can be filed. Application for rectification under Section 47,,,,
or Section 57 of the Act can be filed either before the Appellate Board or the Registrar. The Section (Section 125) however provides that the,,,,
application for rectification should be made to the Appellate Board where in any suit for infringement of a registered trade mark, the validity of the",,,,
registered trade mark is questioned, the validity of the mark can be determined only on an application for rectification of the registered trade mark",,,,
made to the Appellate Board. Section 125 of the Act reads as under:,,,,
125. Application for rectification of register to be made to Appellate Board in certain cases.--(1) Where in a suit for infringement of a registered trade,,,,
mark the validity of the registration of the Plaintiffs trade mark is questioned by the Defendant or where in any such suit the Defendant raises a,,,,
defence under Clause (e) of Sub-section (2) of Section 30 and the Plaintiff questions the validity of the registration of the Defendant's trade mark, the",,,,
issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register,,,,
and, notwithstanding anything contained in Section 47 or Section 57, such application shall be made to the Appellate Board and not to the Registrar.",,,,
(2) Subject to the provisions of Sub-section (1), where an application for rectification of the register is made to the Registrar under Section 47 or",,,,
Section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.",,,,
16. We have already read Section 124 and it does not appear that there is any condition prescribed therein or even in Sub-section (1)(ii) for obtaining,,,,
an order b from the Civil Court for filing an application for rectification. As contended by Shri Deb Jyoti Ghosh we do not find that there is any,,,,
requirement of permission of the Court under Section 124(1)(ii) of the Act for filing an application for rectification. Clause (i) of Sub-section (1) of,,,,
Section 124 is attracted where the rectification application has been filed before the institution of the infringement suit, where, however, an application",,,,
for rectification is sought to be filed after the institution of such suit then Clause (ii) of Sub-section (1) of Section 124 is attracted. The procedure,,,,
envisaged is that the objector must raise a plea in the said suit regarding invalidity of the mark and satisfy the said Court prima facie as to the tenability,,,,
of such plea to enable the objector to apply to the Appellate Board to rectification of the Register. Sub-section (2) of Section 124 of the Act lays down,,,,
the consequences of filing such an application for rectification. The consequence being stay of the trial of suit until final disposal of rectification,,,,
proceedings. Sub-section (3) of Section 124 of the Act deals with the consequences of not filing an application for rectification. The consequence,,,,
being deemed abandonment of the issue as to validity of the registration of the Trade Mark. Sub-section (4) of Section 124 makes it explicit that the,,,,
final order made in any rectification proceedings shall be binding upon the parties and the Court shall dispose of the suit in conformity with the said,,,,
order insofar as the issue as to the validity of registration of the trade mark is concerned. As already noticed, under Section 125 the issue in the",,,,
pending suit as to the validity of the registration of the trade mark concerned shall be determined only on an application for rectification of the register,,,,
and not withstanding the Forum f prescribed under Section 47 or Section 57 such application shall be made to the Appellate Board and not to the,,,,
Registrar.,,,,
17. Adverting now to the decisions relied upon by Shri Subhojit Roy, Ld. Counsel for the Petitioner in the instant Miscellaneous Petition. The decision",,,,
of the Division Bench of the Gujarat High Court in Patel Field Marshal Agencies, 1999 PTC (19) 718 is one based on the provisions of Section 111 of",,,,
the repealed Act, 1958, corresponding to Section 124 of the Act, 1999.",,,,
18. The Delhi High Court judgment in Kedarnath's case is also based on the provisions of the repealed Act, 1958. The recent judgment of the Delhi",,,,
High Court in Astrazeneca, MANU/DE/8684/2006 : 2006 (32) PTC 733 (Del) is, however, based upon the provisions contained in Section 124 of the",,,,
Act, 1999. It must also be stated that the provisions of Section 111 of the repealed Act is in pari materia with Section 124 of the present Act and",,,,
Section 107 of the repealed Act is in pari materia with Section 125 of the present Act, the one difference in the respective provisions of the repealed",,,,
and present Act is that the words 'High Court' appearing in Sections 107 and 111 are substituted by the words 'Appellate Board' in the corresponding,,,,
Section 125 and Section 124.,,,,
19. The Division Bench of the Gujarat High Court in Field Marshal's case (supra) after observing that Section 111 unfolds the scheme envisaged,,,,
under the Act for deciding the issue as to the validity of a registered trade mark, where a suit for its infringement has been filed, by the Forum",,,,
prescribed for rectification of the entry in the register of Trade Marks, before the trial of suit can proceed further and not by the Court trying the suit",,,,
held that the question of determination of issue as to invalidity of the registered mark and abandonment of it due to non-prosecution are interwoven in,,,,
the scheme of the Act. Therefore, it was further ""held that once the suit for infringement has been instituted by the proprietor of the registered mark",,,,
and the plea of invalidity has been raised by the Defendant parties must adhere to follow the rectification proceedings as envisaged under Section 111,,,,
(corresponding Section 124). Another significant observation which has been relied upon by the Learned Counsel Shri Subhojit Roy is as under:,,,,
Once the suit for infringement of the trade mark is filed the same that is entwined between Sections 107 and 111 becomes operative. Firstly, in that",,,,
event jurisdiction of the registrar to entertain such an application is barred and the application only lies to High Court. That is the effect of filing of suit,,,,
simpliciter. If the right to move rectification thereafter could be exercised independent of raising the plea, there could be no necessity to enact Section",,,,
107 for confining proceedings after filing of suit to a Forum which is a Civil Court and whose decision operates as final. The issue of invalidity of,,,,
mark, which is a subject matter of suit cannot be tried by the Court trying the suit for infringement, but can only be tried through independent",,,,
rectification application and that too not by making a reference by the Court but on an application by the person aggrieved. That is to say if a plea as,,,,
to invalidity is not raised, no question of filing the application arises, and the operation of Section 111 remains dormant. As soon as the plea of invalidity",,,,
is raised Section 111 would spring into operation. If the plea has been raised after approaching the rectification Forum, Clause (i) of Sub-section (1)",,,,
may apply to such plea. If the plea is raised in the suit itself, for the first time the Court would at that stage examine prima facie tenability of such plea",,,,
and make an order of raising an issue if it is so satisfied and Clause (ii) of Sub-section (1) would be operative and the objector shall get a fight to move,,,,
an application for rectification in accordance with Sub-section (2) Section 111. In case, at this stage, Civil Court finds that there is no substance in the",,,,
plea for the purpose of raising the issue in the trial, the resultant position would be the same as if the plea has been raised initially and found not",,,,
tenable even prima facie to merit trial. The scheme is wholesome to avoid multiplicity proceedings on frivolous grounds that withhold the proceedings,,,,
which is founded on a trade mark which carried with it a presumption of validity whether rebuttable under Section 31 or conclusive under Section 32.,,,,
20. The Delhi High Court in Kedarnath's case (supra) while dealing with an application for stay of proceedings the final decision of the rectification,,,,
petition held,,,,
The Defendant cannot file an application subsequent to the institution of the suit under Section 111(1)(i) and claim that the Plaintiffs suit for,,,,
infringement must be stayed. If no proceeding for rectification of the register is pending on the date of the institution of the suit by the Plaintiff then,,,,
Section 111(1)(ii) is attracted and a Court may adjourn the case for a period of three months in order, to enable the Defendant to apply to the High",,,,
Court for rectification of the Register. In that case the Court must be satisfied that the contention as to the validity of the Defendant's registration is,,,,
bona fide and prima facie sustainable.,,,,
21. In the recent judgment in Astrazeneca case, MANU/DE/8684/2006 : 2006 (32) PTC 733 (Del) the Delhi High Court has followed the dicta in",,,,
Kedarnath's case as well as the Division Bench judgment of the Gujarat High Court. Certain passages from the judgment upon which much reliance,,,,
has been placed by Shri Subhojit Roy and which support the contentions advanced by the Learned Counsel Shri Subhojit Roy are extracted hereunder:,,,,
31. On plain reading of this provision, it is apparent that the Plaintiffs could not file the application for rectification without showing and obtaining prima",,,,
facie satisfaction of the Court about their plea of the invalidity of the registration of the Defendant.,,,,
At page 751 of the report in para 32 it was further held that,,,,
The plea of substantial compliance of the requirements of Section 124 by the Plaintiffs is also not sustainable. Either there is compliance of the said,,,,
provision or non-compliance in the facts and circumstances. Compliance will be when after the institution of the suit, if an application for rectification",,,,
is to be filed, prima facie invalidity of the opposing mark is to be demonstrated to the Court. The fact that the application could not be filed prior to the",,,,
institution of the suit will not entitle a party to circumvent the prima facie satisfaction of the Court.,,,,
In 2007 (34) PTC 469 (DB) (Del) being an appeal against the order in MANU/DE/8684/2006 : 2006 (32) PTC 733 (Del), the judgment of Hon'ble",,,,
learned single Judge of the Delhi High Court was upheld by the Division Bench of the Delhi High Court.,,,,
Even in the said recent Division Bench judgment of the Delhi High Court while dealing with the applications based on Section 124 of the Act, 1999 it",,,,
was held (see para 13 of the report) as under:,,,,
The provisions which would be applicable to the facts and circumstances of the present case are those which envisage that where the application for,,,,
rectification of the order is such proceedings is not pending, then a party seeking rectification applies for rectification, subject to a prima facie",,,,
satisfaction of the Court regarding invalidity of the registration of the mark of the opposite party. The Appellants/Plaintiffs therefore could not have,,,,
filed an application for rectification without showing establishing and obtaining prima facie satisfaction of the Court that they have sufficient material to,,,,
be able to invalidate the registration of the mark of the Respondent/Defendant. The aforesaid rectification proceedings which is filed is still pending for,,,,
consideration. Therefore, the learned single Judge was justified in not staying the suit.",,,,
The ratio of the judgments cited supra and relied upon by Shri Subhojit Roy Ld. Advocate, appears to be that an application for rectification cannot be",,,,
filed without showing, establishing and obtaining prima facie satisfaction of the Court (before which the suit for infringement is pending) that there is",,,,
material sufficient to invalidate the registration of the mark, invalidity of which is questioned in the suit. Once a suit for infringement of Trade Mark is",,,,
instituted the objector gets a right to move an application for rectification after the Civil Court, trying the suit based on infringement of the Trade Mark,",,,,
has examined prima facie tenability of the plea with respect to invalidity of the registered mark and makes an order raising an issue in the suit. If no,,,,
plea as to invalidity of registered Trade Mark is raised in the infringement suit no question of filing rectification application arises. The parties to the,,,,
suit must adhere to the procedure prescribed in Section 124 with respect to the filing of rectification proceedings. The question of determination of,,,,
issue as to invalidity of the registered mark and abandonment of it due to non-prosecution are interwoven in the scheme of the Act. Therefore, if there",,,,
is abandonment of the plea as to the validity of the mark albeit for the purposes of the suit the objector is not entitled to move rectification application,,,,
as he would have disentitled himself to plead for judgment in the light of the decision, if any, obtained de hors the procedure prescribed therefor under",,,,
Section 124. In case a plea is deemed to have been e abandoned, the only remedy of the party concerned may be to approach that very Court, to",,,,
extricate himself from the consequence of abandonment, or higher Forum.",,,,
22. The contentions raised by Shri Deb Jyoti Ghosh Learned Counsel for the Respondent in Miscellaneous Petition which appeared to us both,,,,
plausible and attractive, have to be rejected in the light of the binding judgments, cited supra, there being no other judgment, cited before us, taking a",,,,
contrary view.,,,,
23. Judged in the light of the ratio cited supra, the rectification application is bereft of material particulars as to the plea of invalidity of the mark,",,,,
whether the same was raised in Civil Suit and also with regard to the prima facie satisfaction of Court as to such plea. Further it is also not averred as,,,,
to whether any issue as to the validity of the registered mark has been framed in the pending suit. In other words, it is not established as to whether",,,,
there has been compliance with the provision of Section 124(1)(ii). For consideration of the instant miscellaneous petition we have assumed the,,,,
correctness of the averments made in the Rectification application and have eschewed from consideration the reply thereto.,,,,
24. In the circumstances M.P. No. 131/2006 is allowed and objection as to maintainability of the rectification application for non-compliance of the,,,,
provisions of Section 124(1)(ii) of the Act, 1999 is upheld. Consequently, the rectification application, without going into the merits of the",,,,
contentions/grounds raised therein, is liable to be and is accordingly dismissed as not maintainable. However, in the facts and circumstances of the",,,,
case, there shall be no order as to costs.",,,,
