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Judgment
Z.S. Negi, J
The appellant has preferred the above appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) against the order
dated 27.9.2007 passed by the Assistant Registrar of Trade Marks whereby he dismissed the opposition and allowed the application No. 730099 in
class 29 to proceed for registration. The appellant has along with the appeal filed a miscellaneous petition for stay of operation of the impugned order
and stay the registration of the impugned mark till the disposal of the appeal.
2 . The stay petition came up before us for hearing on 4.2.2009 wherein Shri Manu T.R, Advocate appeared for the appellant and Shri M.A.
Mahadgut, Advocate appeared for the respondent No. 2. Learned Counsel for the appellant submitted that the appellant is a company incorporated
under the laws of the State of Delaware, U.S.A. and it is engaged in the business of operating restaurants, hotels, merchandise stores and similar
entertainment ventures. It commenced its operations from 22.10.1991 in New York with a theme restaurant chain inspired by the popular portrayal
and of Hollywood with the backing of leading Hollywood stars, went on periodic expansion and diversification and today it is a company having
international presence, with business operations/restaurants and or/merchandise stores in major cities from Sydney to Toronto and has now entered
the casino and resort business also. He submitted that though the popularity of the Planet Hollywood brand has been well known in India on account
of its connection with the entertainment industry but actual operation in India began in the year 2005 with tie-up with Indian-origin businessmen
promoted Arch Millennium Corporation. Learned Counsel submitted that the priority of adoption of trade mark PLANET HOLLYWOOD, its long
and continuous use and the close association with the immensely popular and highly ubiquitous and well known entertainment business has led to
creation of tremendous goodwill and reputation of this trade mark world wide which has traveled to India also. In addition to various registrations
worldwide, the mark Planet Hollywood and logo mark are registered under No. 724127 in class 25 and No. 595585 in class 16, respectively, and such
registrations are valid and subsisting and its other application for similar mark under class 42 is pending registration. The respondent No. 1 has despite
voluminous evidence filed by the appellant in support of its opposition to registration dismissed the opposition and allowed the application for
registration of mark of the respondent No. 2 under class 29, even on total lack of evidence filed in support of application for registration as there could
not have been any evidence being mark proposed to be used. Learned Counsel submitted that the impugned registration granted to respondent No. 2 is
in contravention of various provisions of the Act, despite objections raised by the appellant under Sections 9(1)(a) and 9(2)(b), 11(1), (2), (3) and (10)
and 18(1) of the Act and in view of this the applicant is likely to succeed in getting the impugned order set aside. It was submitted that great prejudice
will be caused to the appellant in case the impugned mark is allowed to be registered pending adjudication of the appeal. Whereas if the stay as
requested for is granted, the respondent No. 2 will not suffer any harm or injury as the application made by respondent No. 2 for registration of the
impugned trade mark was proposed to be used. Learned Counsel for the appellant in support of his submission relied on the following cases:
(i) MANU/IC/5007/2007 - Metropolitan Trading Co. v. Shri Mohanlal Agarwal and Ors.
(ii) 2007 935) PTC 44 (Mad.) - Health & Glow Retailing Pvt. Ltd. v. Dhiren Krishna Paul, Trading as Health and Glow Clinic and Anr.
(iii) MANU/DE/1564/2008 - Ford Motor Company and Anr. v. Mrs. C.R. Borman and Anr.
( i v ) 1996 PTC (16) High Court of Delhi - N.R. Dongre v. Whirlpool Corporation.
(v) MANU/MH/0349/2002 : 2003 (26) PTC 208 (Bom) - Pizza Hut International LLC and Ors. v. Pizza Hut India Pvt. Ltd.
(vi) MANU/IC/0054/2008 : 2008 (38) PTC 536(IPAB) - Philips Electronics NV and Anr. v. Kunj Aluminium Pvt. Ltd. and Anr.
(vii) Unreported judgement by this Appellate Board in MP No. 9 of 2008 in OA/3/2008/TM/CH (Order No. 68/2008) - Shri N.G. Subbaraya Setty v.
Shri T.V. Venugopal.
3 . On the other hand, Counsel for the respondent No. 2 submitted that the stay application has no merits and the same is not maintainable as there is
no provision in the Act to stay the operation of order refusing or rejecting the an opposition. The order passed by the Assistant Registrar of Trade
Marks is based on sound principles of law of trade marks and the said findings is not required to be disturbed and the order under appeal ought to be
upheld. He submitted that the appellant has approached this Appellate Board with unclean hands. He further submitted that the registration is already
granted to the respondent No. 2 and hence there is no question of staying the operation of impugned order at this stage. It was further submitted that
there is nothing on record to substantiate the averment made by the appellant that grave prejudice will be caused to the appellant in case no stay is
granted by this Appellate Board. Placing reliance on the order passed by this Appellate Board in Beecham Group P.C. and Anr. v. Tablet (India)
Limited and Anr. 2008 (36) PTC 375 (IPAB), the learned Counsel urged that the stay petition, being without any merits, deserves to be rejected with
costs.
4 . We have carefully considered the arguments of both the counsel. It is well established that normally the prayer for grant of an interim relief is at a
stage when the existence of the legal right and its violation are both contested and uncertain. Therefore, at this stage certain well established principles
are followed. Keeping in view that the object of granting interim relief is to preserve status quo in rights of the parties and not to disturb the status quo.
Interim relief is granted on the basis of prima facie case made out in the pleadings and that in the interest of justice such interim order is necessary in
order to maintain the situation as on date. At the same time, in restraining the opposite party from exercising what he considers his legal right, we are
required to take into consideration the balance of convenience. In the light of these principles, the application for interim relief would require to be
tested on that anvil. In the case on hand, the appellant has not established any prima facie case for stay or interim injunction. The cases cited by the
appellant will be of no help to him as the facts therein are distinguishable, especially when no prima facie case has been made out herein. In response
to the averment of the respondent No. 2 that the registration is already granted and hence there is no question of staying the operation of impugned
order at this stage, the appellant has furnished a copy of website search report showing the status of respondent No. 2's application as under
opposition. That being the position, we are of the opinion that hearing of the appeal may be expedited instead of staying the operation of the impugned
order and also issuance of certificate of registration for which no prima facie case has been made out and no irreparable injury or balance of
convenience shown. We, therefore, subject to completion of pleadings, direct the Registry to post the appeal before the next Bench Sitting at Mumbai
for final hearing. The miscellaneous petition for stay is disposed of in the above terms. There shall be no order as to costs.