P.P. Buildwell Pvt. Ltd vs P.P. Jewellers Private Ltd

Syed Obaidur Rahaman, Technical Member

1 . The applicant has filed original rectification application seeking to rectify the Register and to cancel of the Respondent's trade mark 'PP' registered

under No. 1197470 in class 28. The Respondent have filed M.P. No. 99/2009 seeking dismissal of the original rectification application

ORA/85/2008/TM/DEL under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The facts of the case are that the rectification application has been filed in the year 2008 after the Respondent herein had filed a civil suit in

January, 2005 against the applicant being C.S. (O.S.) No. 19 of 2005 before the Hon'ble High Court of Delhi. The Respondent herein has relied upon

the registration of the mark in the said suit and this fact is admitted, by the applicant herein, before this Appellate Board in the proceedings pertaining

to ORA/42/2007/TM/DEL and ORA/43/2007/TM/DEL. Th applicant has in its written statement, filed in 2006 and again in 2007 in the aforesaid suit,

pleaded that the registration of the Respondent's mark is invalid. The Respondent has stated that while the aforesaid suit was pending and after the

application claimed in its written statement that the present registration of the mark of the Respondent was not valid, the applicant has filed the present

original rectification application. It is submitted that the said original rectification application has been filed without taking prior permission of the

Hon'ble High Court of Delhi. It is also submitted by the Respondent/applicant that as per settled law and as per provisions of Section 124 of the Act,

the applicant in the aforesaid circumstances is required to take permission from the Hon'ble High Court where the suit is filed, prior to filing the

original rectification application. Failure to take such permission renders the original rectification application as invalid and a nullity. Accordingly, the

Respondent states that original rectification application is liable to be dismissed on this ground alone.

3 . The learned Counsel for the applicant also relied upon judgment in 2009 (39) PTC 705 (IPAB) P.P. Jewelers Pvt. Ltd. v. P.P. Buildwell Pvt. Ltd.

The counsel further relied upon an unreported judgment of this Appellate Board in M.P. No. 13/2008 in ORA/209/2007/TM/DEL wherein it is stated

in para 16 and 17 as follows:

On a plain reading of the provisions of Section 124 of the Act, we do not find any specific requirement of permission for filing the rectification

petition from the Civil Court where the suit is pending. The Division Bench of the Gujarat High court in Patel Field Marshal case (supra) had decided

this issue under Section 111 Trade and Merchandise Marks Act, 1958. The Division Bench has held that once a person has abandoned the plea as to

the invalidity of the mark cannot raise a fresh plea de hors the suit by filing a rectification petition and resume such a plea if on discovery of sufficient

documents the Defendant was to raise a plea of invalidity of the trade mark, could do so by inviting the attention of the civil court as to the tenability of

the issue and after satisfaction approach the rectification court.

The Division Bench of the Delhi High Court in Astrazeneca case (supra) held that when a petition for rectification is field subsequent to the suit,

the party seeking rectification can apply for the same subject to a prima facie satisfaction of the court regarding the validity of the registration of the

trade mark.

4 . The learned Counsel for the applicant/Respondent submits that this M.P. is not maintainable. The pending suit proceedings, the opposite party have

obtained two registrations. He relied upon the judgment in AIR 1993 SC 352 R.N. Gosian, v. Yashpal Dhi.r This case law is not applicable in the

present case.

5 . In view of the above two judgments (i) M.P. No. 13/2008 in ORA/209/2007/TM/DEL and Astrazeneca case, the instant case is on the same

nature and the same view, that the Respondent filed this rectification application in the year 2008 after filed a civil suit against the applicant being suit

No. C.S. (O.S.) No. 19 of 2005 before the Hon'ble High Court of Delhi. The Respondent relied upon the registration of the mark in the said suit. It is

admitted fact by the applicant before this Board in proceeding pertaining to ORA/42/2007/TM/DEL and ORA/43/2007/TM/DEL. The applicant has in

its written statement filed in the aforesaid suit in 2006 and again 2007 pleaded that the registration of the applicant's mark is null and void. The same

original rectification application has been filed without taking permission of the Hon'ble High Court of Delhi. It is also settled law as per provision of

Section 124 of the Act, the applicant in the aforesaid circumstances is required to take permission of the Hon'ble High Court where the suit is filed

prior to filing of original rectification application. Failure to take such permission renders the original rectification as invalid and nullity. In this above

ground the application for rectification is deserve to be dismissed.

In view of the above observation and cited judgments we are of the view that the Respondents M.P. No. 99/2009 under Section 124 of the Trade

Marks Act, 1999 should be allowed. Accordingly, the M.P. is allowed. Consequently, the main rectification QRA/85/2008/TM/DEL application filed

by the applicant is dismissed.