SSG Pharma Private Limited vs Amar Nath

S. Usha, Technical Member

Miscellaneous petition filed by the respondent to reject the main application on the ground that application is not maintainable ab-initio and this

Hon'ble Tribunal has no jurisdiction to entertain and try the application.

The petitioner stated that the respondent had filed a civil suit No. 524/2004 before the District Court and the said suit is still pending and the present

rectification has been filed subsequently. The petitioner had raised the defence under Clause (e) of Sub-section (2) of Section 30 of the Trade Marks

Act, 1999 (hereinafter referred to as the Act) in the written statement in the suit. Based on this defence, the court has framed issues - one of the

issues is ""Whether the suit for infringement of the plaintiff's trade mark is maintainable in view of the fact that the defendant is also the registered

proprietor of the trade mark in question?"" The respondent did not raise the plea of invalidity of the applicant's registered trade mark while filing the suit

and did not take permission, from the court where the suit is pending, to file the rectification application in accordance with the provisions of the Act.

The plaintiff can file the application for rectification only after raising the plea of validity of the registered trade mark and after obtaining permission

from that Court.

The respondent herein filed their counter stating that the petition is devoid of any merits. The petition has not been signed by the proprietor and the

petition is seen to be with the cause title as proprietorship concern but signed as a private limited concern. The petitioner has not raised the plea as

envisaged under the provisions of Section 124 of the Act in the counter statement to the main rectification application. The said petition has been filed

only to delay the matter and to avoid adjudication of the main matter. The Hon'ble High court of Delhi has also passed an order that the rival marks

are phonetically similar and that the respondent's adoption is prior and registration is also prior. Rectification application has been filed in the year 2005

and having not raised any such plea in the counter statement about the maintainability of the rectification application only shows the malafide intention

of the applicant to delay the proceedings. The miscellaneous petition be, therefore, dismissed.

The matter came up before us at the Circuit Bench sitting at Delhi on 11.02.2009 when Shri Shailender Kumar, learned Counsel appeared for the

applicant (respondent in the M.P.) and Shri U.S. Sharma, learned Counsel appeared for the respondent (petitioner in the M.P.)

The counsel for the petitioner contended that the procedures laid down under the provisions of Sections 124 and 125 have not been followed. He

also relied on the provisions of Section 28 and Clause (e) of Sub-section (2) of Section 30 of the Act. He relied on the issues framed by the Court in

the Civil Suit. He relied on the judgements reported in (i) 1999 PTC (19) 718 Patel Field Marshal Agencies v. P.M. Diesels Ltd., (ii) 2007 (34) PTC

469 (DB) (Del.) Astrazeneca UK Ltd., and Anr. v. ORCHID Chemicals & Pharmaceuticals Ltd., (iii) ORA/209/2007 TM/DEL Md. Shariq v. Fair

International in support of his petition for rejecting the application for rectification.

The counsel for the respondent submitted that the Civil Suit was field in the year 2004 and an order of injunction was granted against the petitioner

and the same was confirmed by the Hon'ble High Court - reported in 2007 (35) PTC 398(Del.) SSG Pharma Pvt. Ltd. v. Amar Nath. The counsel

further submitted that only from the written statement, the petitioner became aware of the registration and have filed this application for rectification.

7 . We have perused the petition for rejecting the application for rectification. There are two grounds on which the petition has been filed. The petition

has also been filed under Section 124 read with Section 125 of the Act. The applicant has not followed the procedure as given under the provisions of

Section 124 of the Act and that this Board has no jurisdiction as per the provisions of Section 125 of the Act.

8 . Before dealing with the question as to whether the applicant has followed the procedure contemplated under the provisions of Section 124 of the

Act, we shall deal with the aspect as to the jurisdiction of the Board as per Section 125 of the Act. Section 125 of the Act reads as under:

(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the

defendant or where in any such suit the defendant raises a defence under Clause (e) of Sub-section (2) of Section 30 and the plaintiff questions the

validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined

only on an application for the rectification of the register and notwithstanding anything contained in Section 47 or Section 57, such application shall be

made to the Appellate Board and not to the Registrar.

(2) Subject to the provisions of Sub-section (1) where an application for rectification of the register is made to the Registrar under Section 47 or

Section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.

9 . On a plain reading of the Sub-section (1) of Section 125, it is clear that when a suit for infringement is pending, the application for rectification will

only lie before the Appellate Board unlike an application under Section 47 or 57 of the Act where the application for rectification can be made either

before the Appellate Board or the Registrar. In this instant case, there is no doubt that a suit is pending before the Civil Court and therefore an

application filed before this Appellate Board is maintainable as the validity of the mark can be determined only on an application for rectification of the

registered trade mark to the Appellate Board. Sub-section (2) of Section 125 is also clear which goes to say that an application before the Registrar

may, at any stage, be referred to the Appellate Board, if the Registrar thinks it is necessary. In view of the above, the ground of no jurisdiction is,

therefore, dismissed.

We shall now deal with the next question as to whether the procedure as per the provisions of Section 124 of the Act is followed. Section 124 of

the Act reads as follows:

(1) Where in any suit for infringement of a trade mark:

(a) the defendant pleads that registration of the plaintiff's trademark is invalid; or

(b) the defendant raises a defence under Clause (e) of Sub-section

(2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark.

the court trying the suit (hereinafter referred to as the court), shall:

(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the

Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's

trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of

the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in Clause (b) (ii) of Sub-section (1) within the

time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final

disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to

the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard

to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in Sub-section (1) or Sub-section (2) shall be binding upon the parties and the

court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court form making any interlocutory order

(including any order granting an injections, directing account to be kept, appointing a receiver or attaching any property). During the period of the stay

of the suit.

We have read Section 124 and there appears no such condition as to filing of rectification application after obtaining permission from the court

where the civil suit is pending between the same parties. The procedure is that when a suit is pending, the person who raises the question as to the

invalidity of the mark may satisfy the court as to the issue and plead to the court to stay the suit until the disposal of the rectification application.

Section 124 of the Act has been interpreted in different ways by the High Courts of Madras, Delhi and Gujarat.

12 . The Hon'ble High court of Gujarat in Patel Field Marshal Case (supra) had decided this issue under Section 111 of the Trade and Merchandise

Marks Act, 1958. The view of the Division Bench was that such permission was necessary from the Civil Court where the suit was pending and the

same was the view of the Division bench of High Court of Delhi in Astrazeneca case (supra). But the Division Bench of the Madras High Court in B.

Mohammed Yosuff v. Prabha Singh, Yaswant Singh (unreported) was of the view that ""it does not mandate a party to obtain the leave of the court or

an order of the court for filing an application for rectification. The right to file an application for rectification is a statutory right conferred upon a party

who is aggrieved by an entry in the Register"".

Even though there has been different views by different High Courts we are to decide the issue keeping in mind the facts and circumstances in the

case on hand and follow the view of the jurisdictional High Court. The first point will be that the respondent i.e. the petitioner herein has not pleaded

about the maintainability of the application in the counter statement nor has raised this issue as to filing of the rectification in the counter statement.

The petitioner has only stated that the applicant is not a person aggrieved, the provision under which the application has been filed has not been

mentioned and the application has not been filed in the proper format and has also stated that the rival marks are different. The averment in the

miscellaneous petition is that the petitioner/the defendant has raised the question of validity of the applicant's trade mark under Clause (e) of Sub-

section (2) of Section 30 of the Act and an issue has been framed in the suit and the suit is in the trial stage.

The petitioner has placed the certified copy of the issues framed in the suit. We have perused the same and are of the view that the issue reads

as, ""Whether the suit for infringement of the plaintiff trade mark is maintainable in view of the fact that the defendant is also the registered proprietor

of the trade mark in question"". We do not find any issue as to the validity of the trade mark and is only an issue as to the maintainability of the suit.

That apart, the petitioner has raised the issue as to the validity of the respondent's registration and the issue to be decided herein is the petitioner's

registration.

Apart from these, we also are of the view that it is only an after thought by the petitioner. The petitioner herein has filed this miscellaneous petition

after four years from the receipt of the application for rectification when such plea to be raised was available with him at the time of filing of the

counter statement.

16 . We, therefore, find no merits in the petition and therefore dismiss the miscellaneous petition. There shall be no order as to costs.