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Judgment
S. Usha, Technical Member
1 . The above Miscellaneous Petitions are filed by the 1st respondent in the Transferred Appeal No. 144/2003/TM/DEL. The applicant, by way of
M.P. No. 103/2008 has sought stay of the hearing of the appeal till the adjudication of the rectification matter under No. 150690 in class 16 and by
way of another M.P. No. 104/2008 sought a direction from this Appellate Board to direct the appellant to amend the petition and to provide the latest
address of the parties.
2 . The brief facts of the case are that the 1st respondent (Petitioner in the Miscellaneous Petition) filed an application for registration of the trade
mark Helix in class 16 on 24th September, 1986. The appellant herein (Respondent in the Miscellaneous Petition) opposed the said registration and the
opposition was dismissed on 5th March, 1999. The instant appeal is against the said order.
Meanwhile, the 1st respondent filed a rectification application on 27th March 1993 for removal of the trade mark registered under No. 150690.
They also filed an interlocutory petition seeking an amendment of the rectification. Even without notice being served on the appellant herein the
Registrar had passed an order in the interlocutory Petition on 11th November, 1997. The appellant herein filed on 13th April, 1998a review petition
against the said order. On 26th August 2005 the Registrar allowed the Review Petition and set aside the order dated 11th November 1997. The 1st
respondent filed an appeal against the order dated 26th August, 2005 before this Appellate Board and is pending.
The appellant in the meantime, filed a civil suit No. 1751 of 1995 before the Delhi High Court against the 1st respondent and also filed an interim
application to stay the suit under Section 111 of the Trade & Merchandise Marks Act, 1958. The interim application for stay was dismissed on 2nd
May, 2002. In the year 2003, the said suit was transferred to the District Court, Delhi for lack of pecuniary jurisdiction. The appellant herein filed an
application for amendment of the plaint to include invoices showing sale of the appellant's products in India. The amendment application was dismissed
by the District Judge on 4th November, 2004 against which an appeal was preferred before the Delhi High Court. The Hon'ble High Court of Delhi,
on 9th May, 2005 stayed the operation of the order dated 4th November, 2004 and other proceedings.
In July 2005, the appellant herein, filed another suit being C.S. No. 179 of 2005 for infringement of trade mark and passing off before the Hon'ble
High Court of Calcutta on a fresh cause of action. On an interim application moved by the appellant, the Hon'ble High Court was pleased to pass an
order of injunction on 26th July, 2005 against the respondent restraining them from using the impugned trade mark Helix. The order of stay was
vacated on 4th October, 2005 but the same was subsequently re-instated on 24th October, 2005. The 1st respondent filed a petition for stay of the suit
and for vacating the order of injunction. The Hon'ble Calcutta High Court passed an order on 3rd August, 2007 directing the appropriate authorities to
dispose of the rectification proceedings within a period of six months and during which period an order of stay to continue. Inspite of the directions of
the Hon'ble High Court, no developments have taken place.
6 . The 1st respondent along with the appellant had filed an application for postponing the hearing of this appeal in M.P. No. 150/2007 and the same
was dismissed on 15th February, 2008. The 1st respondent filed Writ Petition against the said order. The Hon'ble High Court of Delhi had granted
liberty to file a petition for adjournment of the hearing of this instant appeal individually and had not gone into the merits of the matter. Pursuant to that
order, the 1st respondent is before us with this M.P. No. 103/2008.
7 . The 1st respondent had filed this petition on the ground that the parallel proceedings would create multiplicity of proceedings. The rectification
matter would decide the validity of the registration.
The appellant herein filed their reply to the Miscellaneous Petition and stated that the petition was not maintainable and that the principles of res
judicata would apply.
9 . We have heard Ms. Rashmi Virmani, learned Counsel for the appellant and Shri Shailen Bhatia, learned Counsel for the 1st respondent in the
Circuit Bench Sitting at New Delhi on 19th January, 2009.
1 0 . The learned Counsel for the 1st respondent mainly contended that the miscellaneous petition be allowed and stay be granted as it would only lead
to multiplicity of proceedings. He relied on various judgments in support of his contentions. He also brought to our notice the view of this Appellate
Board in granting stay in such kind of proceedings from the judgment in OA/39/2007/TM/DEL.
The learned Counsel for the appellant mainly contended that the 1st respondent is only trying to delay the matters by filing such frivolous
applications. She further submitted that the 1st respondent has been filing several adjournment applications and now has come up with such an
application which proves the intentions of the 1st respondent.
We have carefully considered the arguments of both the parties. On perusal and after going through the pleadings of the parties, we understood
that the impugned order under appeal has been passed in the year 1999. The rectification proceedings is of the year 1998. The 1st respondent has also
filed an appeal before this Appellate Board against an order passed by the Assistant Registrar in an interlocutory petition in the rectification
proceedings in the year 2005 which is pending.
13 . We also find that there has been a direction from the Hon'ble High Court of Calcutta to dispose of the rectification proceedings within a period of
six months from August 2007, whereas there is no further development. The order passed in the interlocutory petition in the rectification petition is
under challenge before the Appellate Board. In such a case, the rectification proceedings can be taken up only after the appeal against the
Interlocutory Petition is disposed of.
As regards the view of this Appellate Board in OA/39/2007/TM/DEL, we are of the opinion that in that case the stay was sought when the
opposition was pending, whereas, in this case, the stay is being sought after a long delay. We don't think it would be just to have the matter pending for
over a decade.
During the course of the argument, when this Board had sought clarification as to the stage of the rectification proceedings and as to the
completion of the procedural aspect, the counsel of the parties were not in a position to clarify the same.
In such circumstances and with the observations made above, we don't' find any merit in the application for staying the appeal proceedings. Apart
from this, the Act does not provide any powers to stay the rectification proceedings. We are also of the view that the rectification petition is to decide
the question as to the entering in register the mark whether is valid or not, whereas in a opposition proceedings, it is to be decided whether the mark is
to be entered in the register or not. We therefore dismiss the application in M.P. No. 103/2008. No order as to costs.
As regards the Miscellaneous Petition No. 104/2008 for direction by this Hon'ble Board to the Petitioner to amend the petition and to provide the
latest address of the parties, we find no grounds made out in the application and hence dismissed.