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

Z.S. Negi, J

The above two rectification applications are filed by the same applicant for removal of the registration of trade marks 'P.P. Mall' under No.

1308303 in class 37 and 'P.P. Shopping Mall' under No. 1308302 in class 37, respectively, registered in the name of the respective Respondents in the

applications, or to rectify the register under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

During the pendency of the applications, the Respondent/Petitioner in both the applications has filed miscellaneous petitions in both the rectification

applications being M.P. No. 84/2008 and M.P. No. 85/2008 seeking direction of this Appellate Board to the Applicant/Respondent that, it, must follow

the procedure and method laid down in Section 124 of the Act. It, is stated that averment, in paragraph 8(f) of the respective rectification application

have been made that the applicant has been extremely vigilant in safeguarding and protecting its well known PP trade marks and has initiated a civil

suit bearing No. 19 of 2005 before the Hon'ble High Court of Delhi against the proprietor of the impugned mark and has craved leave therein to refer

to and rely upon documentary evidence filed in such proceedings in respect of use, promotion and well-known character of the 'PP' trade marks as

may be required in support of its contentions in the applications. It is further stated that in such circumstances, the applications could not, in view of the

provisions of Section 124 of the Act, have been filed in the manner in which the Applicant/Respondent have filed the present applications. Referring to

the observation made by the Division Bench of High Court of Delhi in the case of Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and

Pharmaceuticals Ltd., 2007 (34) PTC 469, which reads thus: ""13. It was however submitted on behalf of the Appellants/ Plaintiffs that in view of

provisions of Section 124 of the Act there should have been a stay of the proceedings when the validity of the registration of trade mark is in question.

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 Appellants/Plaintiffs therefore could not have filed an application for

rectification without showing, establishing and obtaining prima facie satisfaction of the Court that they have sufficient material to be able to invalidate

the registration of the mark of the Respondent/Defendant. The aforesaid rectification proceeding which is filed is still pending for consideration.

Therefore, the learned Single Judge was justified in not staying the Suit. In this connection, reference may be made to the provisions of Section 124(5)

of the Trade Marks Act, which entitles the Court to deal with the interlocutory application. Therefore, the submission of the counsel for the

Appellants/Plaintiffs in this regard, is misconceived and cannot' be accepted"", the Respondent/Petitioner has stated that in such circumstances, the

petitions are not maintainable. It is also stated the Respondent (Plaintiff in the suit) in the said suit has filed an amendment application seeking to bring

on record factum of the present registration. The applicant has filed the present petitions after receipt of copy of the amendment application. Having

chosen its course of proceedings, the applicant must follow the procedure and method as laid down in Section 124 of the Act. The applicant may not

prefer the proceedings dehors the suit, independently. It is prayed that it is in the interest of justice, the petitions be dismissed at the threshold.

Shri Shailen Bhatia, learned Counsel for the Petitioner raised objection relating to the very maintainability of the rectification applications and

submitted that the same is filed without following the procedure prescribed under Section 124 of the Act and placed reliance upon the Division Bench

judgment of the Gujarat High Court in Field Marshal Agencies v. P.M. Diesel Limited, 1999 PTC (19) 718 and 2007 (34) PTC 468 (DB) (Del.)

Astrazeneca UK Limited v. ORCHID Chemicals and Pharmaceuticals and para 61 of judgment in Whirlpool Corporation v. Registrar of Trade

Marks, AIR 1999 SC 22 : 1998 PTC (18) 717 (SC). It was submitted that the applicant herein has filed a suit pending on the file of Hon'ble High

Court of Delhi, against the Respondent herein for passing off. The applicant in the rectification applications have took out an application in the civil suit

seeking amendment of the plaint by incorporating the factum of registration of the trade mark which has not yet been allowed. The provision of

Section 124 of the Act provides that where a rectification application is already filed and filing of suit for infringement follows then an application be

filed in the suit under that section and the court trying the suit stays the suit and where the infringement suit is already filed the Defendant must put in

an appearance and put forward a plea that the Plaintiffs trade mark is invalid, the court trying the suit must be satisfied itself that the plea of the

Defendant is prima facie tenable, then the court; trying the suit would raise an issue and adjourn the suit for three months and the party concerned

may file the rectification application, but in the present case nothing of the sort has been followed by the applicant and therefore the rectification

applications are not maintainable.

On the other hand, Shri Abhishek Malhotra, learned Counsel for the answering Respondent herein submitted that the provision Section 124 of the

Act is applicable where suit pertains to infringement of a registered trade mark is filed. By virtue of the unambiguous language of Section 124 of the

Act, the same is not applicable to a suit for passing off. This is evident from the fact that Section 124 of the Act requires the satisfaction of certain

conditions for application of the said provision, namely, (a) there should be a suit for infringement of trade mark and (b) the Defendant should raise a

plea of invalidity of Plaintiffs registered trade mark; or (c)the Plaintiff should, in response to the Defendant's defence under Section 30(2)(e) of the

Act, raise a plea of invalidity of the Defendant's registered trade mark. The Provision has been enacted to ensure that when a claim of infringement of

trade mark is made, in order to ensure that a civil court hearing the suit gets appropriate expert assistance/opinion while adjudicating the rights of the

parties. Placing upon the judgment in N.R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583, it was further submitted that in a suit for passing off,

the validity or otherwise of a registration of any party is not germane to deciding t he outcome of the suit, since the Plaintiff does not seek to rely upon

its registration in such a suit, nor is the registration owned by the Defendant, a defence in such a suit. In view of this, the opinion of the expert body

referred to above, is not. relevant, to determining a suit for passing oil and thus the civil court hearing a suit for passing off need not concern itself with

any application for cancellation, if made in a suit for passing oil as such an application will not affect the determination of rights of the parties in a suit

for passing off. Learned Counsel further submitted that the facts of the present case are similar to the facts set out in the recently decided case of

M/s. Safari Cycles Pvt. Ltd. v. Safari Bikes Limited, IPAB order No. 136/2007 dated 7.11.2007 in M.P. No. 72/2007 in ORA 62/2007/TM/DEL). In

that case, on the similar facts, wherein subsequent to the registration of the Defendant's trade mark the application for amendment of written

statement was filed and rectification proceedings were alleged to be initiated without obtaining the leave of the court, pending the amendment

application, the Intellectual Property Appellate Board rejected the Defendant's contention to dismiss the cancellation petition holding that the stage has

yet not arrived in the suit wherein the plea regarding the invalidity of the Defendant's trade mark is raised and hence Section 124 is not applicable to

the case. It was also the submission of the learned Counsel for the Respondent herein that all cases cited at the bar by the counsel for the Petitioner in

the present petitions related to suits for infringement of trade marks and not passing off, including the Astrazeneca case, Patel Field Marshall case and

the MICO case of this Appellate Board. In the light of the submissions made by him, the learned Counsel urged that the present petitions may be

dismissed with cost and fix a date for hearing of the rectification applications.

We have heard both sides carefully and gone through the pleadings. We see a considerable force in the submission of the learned Counsel for the

Respondent herein that though the amendment applications have been filed in the suit before the High Court of Delhi by the Plaintiff (answering

Respondent herein) and the Defendant (Petitioner herein) to bring their respective registrations on record and the said applications being pending, the

opportunity to raise a plea has for invalidity of the trade mark registrations either by the Plaintiff or the Defendant has not yet arisen and Section 124

of the Act has accordingly no application to the rectification applications. Counsel for the Respondent herein has rightly submitted that. The decisions

cited by the Petitioner herein are in relation to the infringement or infringement and passing off. This Appellate Board earlier had occasion to consider

almost similar issue in the case of M/s. Safari Cycles Pvt. Ltd. (supra) wherein it was observed as under:

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

supra) 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 hero 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 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 abut the tenabiity of this plea....

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 obtaining of Prima facie satisfaction of the civil court regarding invalidity of the registration of the Defendant's trade mark would arise where no

rectification petition is pending. That stage has not yet arrived in the suit, before that this rectification proceedings have been initiated. In the case on

hand proceedings for rectification have been initiated and these are already pending even before the plea regarding invalidity of registration of

Defendant's mark is raised in the civil suit.

Since the facts and issues in the instant cases are almost similar to the Safari Cycle case referred to above, by applying the above observations of

this Appellate Board in that case, we find that the miscellaneous petitions have no merits and as such they deserve to be dismissed. Accordingly, we

dismiss Miscellaneous Petitions Nos. 84 and 85/2008 without order as to costs. The rectification applications, along with pending miscellaneous

petitions if any, shall be listed in the ensuing Circuit Bench sitting at New Delhi after notice to the respective parties.