Raj Kumar Saraf vs Bindal Food Products

S. Usha, J

Miscellaneous petition has been filed by the Respondent in the ma(Sic) rectification application seeking the direction of this Appellate Board to

dismiss the main rectification application with costs.

The grounds of the miscellaneous petition are that the Respondent her(Sic) came to know of the registration of the Petitioner from the copy of the

plaint file(Sic) in S. No. 10 of 2004 in Delhi High Court. The Respondent has filed this instant rectification application as they have been facing several

litigations against the Petitioner. The provisions of Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) has been quoted.

The Petitioner has quoted the observation of the Delhi High Court in the case of Astrazeneca UK Limited and Anr. v. Orchid chemicals and

Pharmaceuticals Ltd., 2007 (34) PTC 469 and has state that prior permission from the Civil Court is to be obtained to file a rectification application.

The procedure has not been followed and hence the main application be dismissed. The criminal proceedings are pending. The Respondent has no

(sic)roached this Court with clear hands. In the interest of justice, equity and good (Sic)science the main rectification application be dismissed at the

threshold.

The Respondent herein filed their counter to the main application. The miscellaneous application has been filed only to drag on the proceedings

being heard (Sic)nd hence not maintainable. In the instant matter, in a writ petition before the Delhi High Court against the orders of this Appellate

Board in a miscellaneous petition, the Delhi High Court has directed that the main rectification application be disposed of within nine months from the

date of the order. Having not raised the issue of non-maintainability before the High Court, now to raise the issue by filing a miscellaneous petition is

not maintainable as the Hon'ble High Court with the (Sic)onsent of the Petitioner directed that the main rectification application be heard and decided.

The judgment of this Board relied on by the Petitioner is also not applicable as they are totally different.

We have heard both the counsel during the Circuit Bench sitting at Delhi on 04.02.2010 where learned Counsel Shri Sudharshan Kumar Bansal

with Saurabh Kapoor appeared for the applicant and learned Counsel Shri Shailen Bhatia appeared for the Respondent.

Learned counsel for the Petitioner argued that as per the provisions of Section 113 of the Act when the criminal proceedings were pending no

permission was sought from that Court before the rectification application was filed. He also relied on the provisions of Section 124 of the Act in this

context where permission of the Civil Court was to be taken before filing of the rectification application as per the observation made by the Delhi High

Court in Astrazeneca's case. The counsel relied on judgments in support of the contention that this Board has already passed an order based on the

observations made by the Delhi High Court in Astrazeneca's case and stated that it be followed in this case. Finally he submitted that the order of the

High Court was that the Petitioner consented only for withdrawal and nothing else and have no objection for the Writ Petition being withdrawn.

In the interest of justice, the petition be allowed and the rectification application be dismissed with costs for non compliance of the procedures as

contemplated in the Act.

The counsel for the Respondent submitted that the provisions of Section 113 of the Act was not applicable here in this case. Even if applicable,

charges are yet to be framed and after charges are framed, the Court has to be satisfied in this case. The issue of maintainability under Section 124 of

the Act was neither raised in the counter statement nor was it pleaded in the writ petition before the Hon'ble High Court. The counsel also relied on

some judgments in support in support of his claim and also submitted that the judgments relied on by the counsel for the Petitioner were not relevant to

the case on hand.

We have perused the miscellaneous petition along with annexure and also have gone through the reply filed to the miscellaneous petition and have

considered the arguments of both the counsel. We find that though the learned Counsel w(Sic) vehemently submitting about the provisions of Section

113 of the Act, but nothing has been pleaded in the miscellaneous petition except for a statement in para (Sic) ""That even otherwise criminal

proceedings are pending before the Criminal Copu(Sic) and matter is pending."" Criminal matters are pending for which we do not find an material

placed before us. The plaint when seen mentions about the criminal matters but no mention as to what is the stage of the criminal matter as it pertain

to the year 2002.

It is worthwhile to quote the observation of the Division Bench of Delhi Court in an application under Section 124 of the Act:

The provisions which would be applicable to the facts and circumstances the present case are those which envisage that where the application for

rectification of the order in such proceedings is not pending, then a party seekit(Sic) rectification applies for rectification, subject to a prima facie

satisfaction of the Court regarding invalidity of the registration of the mark of the opposite part. The Appellants/Plaintiff's therefore could not have

filed an application for rectification without showing establishing and obtaining prima facie satisfaction to 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.

Once a suit for infringement of Trade Mark is instituted the objector ge(Sic) right to move an application for rectification after the Civil Court, trying

the suit based on infringement of the Trade Mark, has examined prima facie tenability (Sic) of the plea with respect to invalidity of the registered mark

and makes an order raising an issue in the suit. If no plea as to invalidity of registered Trade Mark is raised in the infringement suit no question of filing

rectification application arises. The parties to the suit must adhere to the procedure prescribed in Section 124 with respect to the filing of rectification

proceedings. The question of dete(Sic) mination of issue as to invalidity of the registered mark and abandonment of (Sic) due to non-prosecution are

interwoven in the scheme of the Act. Therefore, if there is abandonment of the plea as to the validity of the mark albeit for the purposed of the suit

the objector is not entitled to move rectification application as he would have disentitled himself to plead for judgment in the light of the decision, if any

obtained dehors the procedure prescribed therefor under Section 124. In case of plea is deemed to have been abandoned, the only remedy of the party

cornered may be to approach that very court, to extricate himself from, the consequence of abandonment, or higher forum.

It is very clear on a reading of the observation that when a person has abandoned the plea as to the invalidity of the registration of the mark cannot

raise a plea afresh dehors the suit by filing a rectification application and resume such.

(Sic). In the instant case, the suit has been filed by the Petitioner herein where the distraction is said to have been stated and hence the Respondent

has filed the (Sic)tification application. There is no mention as to what is the stage of the suit, (Sic)ether written statement filed and issue of invalidity

of the registration of the mark raised etc. In such circumstances, we are of the view that no permission from the Civil Court needs to be obtained to

file a rectification application.

Moreover, the Petitioner has not raised any such plea of maintainability in the counter-statement to the main application for rectification. To raise

such a plea at this belated stage is only to delay the proceedings is our considered opinion.

The counsel for the for the Petitioner vehemently relied on the view of this Appellate Board that permission is required from the Civil Court where

the suit is pending for filing an application for rectification. There is no doubt regarding that view, but depending on the fact that position is to be

considered. Each case has to be decided on its own merits.

In view of the above finding, we are of the opinion that there is no merit in the miscellaneous petition and is liable to be dismissed. Miscellaneous

Petition No. 05/09 is therefore dismissed with no order as to costs.