Apex Laboratories Pvt. Ltd. vs Apex Formulations Pvt. Ltd.

S. Palanivelu, J.—Following are the allegations contained in the affidavit filed by the applicant/Plaintiff along with the petition filed under

Order XIV Rule 8 of Original Side Rules r/w Section 124 of the Trade Marks Act 1999:

1.(a) The applicant has filed a suit for permanent injunction restraining the Respondent company from in any manner infringing the applicant''s

registered trade mark and trading style ''Apex Laboratories Private Limited'' by using the offending trading style, ''Apex Formulations Private

Limited'' and also from in any manner passing off their pharmaceutical and medicinal preparations under the offending trading ''Apex Formulations

Private Limited''. The Respondent has filed the written statement in June 2010. Pending the trial of the suit, the Respondent has also filed an

application on 17.4.2004 before the Registrar of Trade Marks for registration of its corporate name ''Apex Formulations Pvt. Ltd.'' under the

Trade and Merchandise Marks Act, 1958 under Application No. 1003963 in class 5 claiming user since 31.12.1998. Against the said application,

the applicant has filed necessary opposition proceedings under AMD No. 192440 before the Registrar of Trade Marks, Ahmedabad and the said

opposition is still pending.

2.(b) Till a decision is pronounced by the concerned authority in the opposition proceedings, the present suit should be stayed. The subject matter

in issue in the proceedings before the learned Registrar of Trade Marks and in the present suit before this Court are substantially one and the same.

Hence, the suit has to be stayed till the disposal of the opposition proceedings before the Registrar of Trade Marks.

Heard the learned Counsel for both parties.

Mrs. P. V. Rajeswari, the learned Counsel for the applicant would contend that inasmuch as Section 124 of the Trade Marks Act 1999

contemplates the procedures of granting of stay by the Court, in like proceedings, it is appropriate to stay further proceedings of the case. It is her

further contention that as per Section 124(1)(a) of the Trade Marks Act, 1999, registration of the Plaintiff''s trade mark has been challenged as

invalid in the written statement specifically, that even the Defendant in the written statement has pleaded that in view of the opposition proceedings

initiated by this applicant is pending before the concerned authority the present proceedings are required to be stayed till the disposal of the

opposition filed by the Plaintiff and that when the Defendant has not filed any rectification application after challenging the registration of the

Plaintiffs trade mark as invalid before this Court, the statutory direction as enshrined in Section 124(1)(b)(ii) of the Act has to be complied with.

Contending on the other side of the coin, Mr. A.A. Mohan, the learned Counsel for the Respondent/Defendant would contend that the suit was

filed in the year 1998 and at a belated stage the present application has been filed by the Plaintiff, which is unsustainable, that when the Defendant

has not filed rectification petition, Section 124 is not applicable and that there is no scope for passing order of stay in this case.

To appreciate the contentions advanced from either sides, it is profitable to extract Section 111(1) of the Trade and Merchandise Marks Act,

1958:

Stay of proceedings where the validity of registration of the trade mark is questioned etc.,

(1) where in any suit for the infringement of a trade mark

(a) the Defendant pleads that the registration of the Plaintiff''s trade mark is invalid; or

(b) the Defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 and the Plaintiff pleads the invalidity of the 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

High Court, 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 tenabe, 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 High Court for rectification of the register.

The above said provision has been verbatim reproduced in the subsequent Act, Trade Marks Act, 1999, in Section 124(1), save directing the

party concerned to apply to the appellate board instead of High Court, as mentioned in the earlier Act. It is to be borne in mind that the suit has

been filed under Order IV Rule 1 of Original Side Rules and Sections 105 and 106 of the Trade and Merchandise Marks Act 1958. However, as

Section 124, in the present Act is analogous to Section 111 of the earlier Act, there could not be much debate in this respect.

It is also advantageous to extract the exact pleadings available in the written statement which read thus:

The Defendant further submit that their application for registration of trade mark is pending before the register of trade mark and the present

Plaintiff have filed an opposition therefore, when the Defendant is claiming right to use as a trade mark as a honest, concurrent user, without any

instance of confusion and deception are entitled to get right to use the mark APEX and the said matter is pending before the registrar who is

authority to decide the said right as per the provisions of the trade marks act and therefore, once the mark is registered in favour of the Defendant,

the infringement proceeding is not maintainable therefore, the present proceeding is required to be stayed till the disposal of the oppositions filed by

the present Plaintiff.

Concededly, the opposition proceedings initiated by the Plaintiff is pending before the concerned authority and the Defendant himself has stated

before this Court through the written statement that the present suit proceedings have to be stayed till the opposition filed by the Plaintiff is

disposed of. It is also to be noted that going by the allegations in the written statement, there is specific challenge on the registration of the Plaintiff''s

trade mark as invalid, from the sentences in paragraph No. 12 to the effect that ""The Plaintiff has not registered the trademark APEX word per se

as evidenced by the documents filed with the plaint.

The learned Counsel for the Respondent would place reliance upon a decision of this Court in M/s. Ganga Engineering Works Vs. M/s. Ganga

Foundry, J, wherein Section 111 of Trade and Merchandise Marks Act, 1958 has been discussed. It is observed therein that when the suit was

posted for trial as last chance, the Plaintiff filed an application for stay of further proceedings in the suit and the dismissal of the same by the Court

below was confirmed by this Court.

Adverting to the facts of the present case, the suit is ripe for trial. Issues were framed by this Court on 12.07.2010. When the matter was

taken by the Additional Master-I for recording evidence, both the parties reported that they have no oral evidence and hence evidence was closed

and the case has been posted before the Court. The Additional Master has passed the order on 3.12.2010. This petition has been filed on

7.01.2011. The circumstances above said would indicate that there had been no delay on the part of the applicant/Plaintiff. In the decision of this

Court above cited, the suit was originally posted in the list for trial on 10.6.1993, an exparte decree was passed which was subsequently set aside

on 3.3.1994; after the restoration of suit, it was transferred from the Principal District Court to I Additional District Judge and then it was posted

on 29.06.1994 for trial as last chance and on that date the Petitioner filed the stay application before the Court. Hence this Court opined that the

petition was highly belated. But the facts in the present case are otherwise.

Section 111(1) of Trade and Merchandise Marks Act 1958 does not speak about filing of the opposition petition by any of the parties, but it

only deals with the rectification proceedings to be initiated by the parties. Since there is no rectification petition filed by the Respondent/Defendant

admittedly, Section 111(1)(b)(ii) of the old Act or Section 124(1)(b)(ii) of the present Act would come to play. As per this provision, since there is

no such rectification proceedings taken by the Respondent, this Court has to frame an issue regarding the validity of the registration of Plaintiff''s

trade mark. Accordingly, the following issue is framed:

whether the registration of trade mark ''Apex Laboratories Private Limited'' of the Plaintiff is valid?

A doubt as to which Act is applicable to the proceedings which commenced anterior to the passing of the present Act is being removed by

Section 159(4) of the present Act, which reads thus:

Repeal and savings:

1 ...

2 ...

3 ...

Subject to the provisions of Section 100 and not with standing anything contained in any other provision of this, any legal proceeding pending in

any Court at the commencement of this Act may be continued in that court as if this Act had not been passed.

In view of the operation of the above said provision, as far as the case on hand is concerned, since the suit was filed prior to the

commencement of the present Act, the earlier Act will come to play. In this circumstance, the suit is adjourned to 25.04.2011 enabling the

Respondent/Defendant to comply with the statutory requirement in Section 111(b)(ii) of Trade and Merchandise Marks Act, 1958.

This application is disposed of in the above said terms. No costs.