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Judgment
S. Usha, J
Miscellaneous petition filed by the first Respondent for dismissal of the rectification application for non-compliance of the provisions of Section
124(1) of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The Petitioner/first Respondent had stated that they are the prior adopter and user of the trade mark under dispute. On coming to know of the use
of the identical trade mark by the Respondent/applicant, they issued a cease and desist notice to which the Petitioner filed a civil suit at Amritsar for
infringement and passing-off against the first Respondent on 22.12.2007 and the first Respondent filed their written statement on 18.08.2008. The
Respondent as a counter-blast has filed the instant application for rectification without complying with the provisions of Section 124 of the Act. The
rectification application therefore be dismissed.
The Respondent/applicant did not file counter but advanced his arguments.
The counsel for the Petitioner reiterated what was stated in the miscellaneous petition. The counsel relied on the Astrazeneca's judgment passed by
the Division Bench of the Delhi High court in deciding the issue under Section 124 of the Act and also the judgments of this Appellate Board.
The counsel for the Respondent contended that the suit was filed in December, 2007 and the written statement was filed in August, 2008 whereas
the rectification application was filed in June, 2008. The Petitioner has not pleaded about the Respondent' suit in the miscellaneous petition and has
raised the same only before this Board now.
We have heard and considered the arguments of both the counsel. The main issue that has to be decided is whether the Respondent has complied
with the provisions of Section 124 of the Act before filing the main rectification application. We think it fit to quote the observations made by this
Appellate Board in a similar case in M.P. No. 72/2007 in ORA/62/2007/TM/DEL - M/s Safari Cycles Pvt. Ltd. v. Safari Bikes Limited.
We have considered the submissions of learned Counsel on this aspect of the matter. In view of the judgment of the Gujarat High Court (cited
sputa) as also of the jurisdictional High Court in Astrazeneca case (cited supra), there is no scope for considering the matter on first principles.
However, in our view what distinguishes the case on hand from cited cases is the fact that the present rectification proceedings are initiated before
the time for raising the plea of invalidity of the Defendant's mark in that suit has arisen. Suffice it here to extract a relevant passage from the Division
Bench judgment of the Gujarat High Court in Field Marshall's case (Para 8)
...if proceedings for rectification are already pending before raising the plea of an invalidity, that is to say, the attention of an appropriate forum having
already been invited to that issue, those proceedings must first be continued, decision thereon to be obtained and then civil suit for infringement can
proceed in the light of that decision. In case, no such proceedings for rectification are pending at the time of raising the plea of invalidity, the
prosecution of such plea by the person raising it depends on prima facie satisfaction of the court about the tenability of this plea....
We are also fortified in our view by the following observations in Astrazeneca Case:
... However, in the present case, the provisions of Section 124 (i) (b) (ii) would not be applicable. The said provisions are applicable only to an
application for rectification which is already pending, in view of which, the suit could be stayed, pending final disposal of such proceeding. 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 in such proceeding 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 issue as to obtaining permission of the civil court would arise if no rectification application has been filed. Here, in the instant case, the suit was
filed in December, 2007 and the rectification was filed in June, 2008. The written statement was filed in August, 2008. Even before the written
statement was filed raising the issue of invalidity of the registration, the rectification has been initiated. In such case, we are of the opinion that there is
no necessity for permission to be taken from the civil court for filing the rectification application. In view of the above, we find no merits in the
miscellaneous petition and deserves to be dismissed. Miscellaneous Petition No. 70/09 is dismissed without costs.