Anupam Khemka Trading As Sarvsidhi Fashion vs Shreeshidhi Creations Pvt. Ltd. And The Registrar Of Trade Marks, Trade Marks Registry

S. Usha, J

The original rectification application filed for rectification of the trade mark 'SARVSIDHI' registered under No. 1725536 in class 25 under Sections

9,11,18(1),57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The applicant has filed a miscellaneous petition Nos. .96 /10

seeking to stay the operation and /or temporary suspension of the registered trade mark No. 1725536 in class 25.

The Petitioner had started a business of boutique under the name and style 'SIDHVI'S' in the year 2004. In the year 2006, the Petitioner along with

one Bimal Kumar Goenka formed the first Respondent company. Subsequently in the year 2007, the Petitioner resigned from the company and

commenced a separate business under the name and style of 'SARVSIDHI FASHION' using the trade mark 'SARVSIDHI'.

In the year 2008, the said Bimal Kumar Goenka along with one Kundan Kumar Singh formed a firm under the 'SARVSIDHI FASHON' and had

adopted the trade mark 'SARVSIDHI'. The first Respondent filed the impugned registration application on 26.8.2008 claiming user since 20.02.2006.

As the place of business of both the Petitioners and Respondents were in the same premises, there was confusion and deception among the public. In

2009, the Petitioner came across a caution notice issued by the first Respondent claiming themselves to be the registered proprietors of the trade mark

'SARVSIDHI'.

The Petitioner therefore filed a civil suit before the City Civil Court Kolkata where an order of interim injunction was granted and the first

Respondent preferred an appeal against the said order, the same was dismissed confirming the injunction order. The Petitioner thereafter filed the

rectification application on the ground that the Respondent has obtained registration by claiming false date of user, dishonestly adopted the trade mark,

the registration was in contravention of the provisions of the Act, for non-user and on various other grounds.

The first Respondent were served with the notice of hearing and had deputed their accountant to appear and seek adjournment on the ground that

the Directors of the firm had gone abroad. The counsel for the Petitioner opposed the adjournment and reiterated the contents of the miscellaneous

petition and prayed for the temporary suspension of the effect of registration.

After hearing the learned Counsel for the Petitioner, the only issue for consideration is whether an ex parte order of stay as prayed for can be

granted. There is no doubt that Section 95 of the Act lays down the condition that the stay order can be granted after serving copies of the appeal and

documents and after opportunity being given to affected party. In this case, the parties have been served with the copies as early as in the first week

of May,2010 for the hearing on 23.6.2010. That apart we find force in the arguments of the Petitioner that the parties are already litigating before the

civil court in respect of the same trade mark. In considering an application for interim injunction, the prima facie case and balance of convenience is to

be considered.

On a bare perusal of the pleadings and documents, it is seen that the applicant and the said Bimal Kumar Goenka (Director of the first Respondent)

were carrying on business under the name Shreesidhi Creations Pvt. Ltd., till the Petitioner resigned as a Director in the year 2007. The impugned

application has been made in the year 2008 where the adoption is itself dishonest. The sales figures referred to in the affidavit of use submitted by the

first Respondent to the Registrar of Trade Marks for obtaining registration certificate is also not valid as even though the registration of the trade mark

'SARVSIDHI' has been made in four different classes, the sales figures under all the classes are one and the same which only creates a doubt in our

minds.

We also do not find any prejudice or loss being caused to the first Respondent if the effect of registration is stayed till the next date of hearing as

the common law rights are always available to the first Respondent. In our considered opinion, we are of the view that the Petitioner has made out a

prima facie case for grant of stay of the effect of registration.

Counsel for the applicant has given his consent to argue the matter in Chennai if the Respondent takes out an application for early hearing of the

main matter. The Respondent is at liberty to move an early hearing petition to hear the matter at Chennai.

We, therefore grant on order of stay of the operation of the registered trade mark No. 1725536 in class 25 till the next date of hearing. The

miscellaneous petition No. 96/10 is disposed in terms of the above with no order as to costs.