Sun Pharmaceuticals Industries Limited vs Joint Registrar Of Trade Marks And Ors

K.N. Basha, J

This appeal is preferred by the appellants challenging the order passed by the Joint Registrar of Trade Marks, Kolkata dated 28.09.2007 granting the relief of stay of opposition proceedings initiated by the appellants herein pending disposal of the appeal filed against the order dated 24.03.2003 passed by the Deputy Registrar of Trade Marks, Mumbai in Rectification No. BOM-1034 pending before the IPAB, Chennai.

Factual Backgrounds

The respondent filed an application No. 1213108 in Class 05 for registration of the trade mark of 'ZOLAM' word per se in respect of medicinal and pharmaceutical preparations. The said application was ordered to be advertised before the acceptance for registration in the Trade Mark Journal. Thereafter, the appellants herein filed notice of opposition after filing TM-44 for seeking extension of time for filing such notice of opposition. The opponents are also filed counter statement along with their evidence. The matter was fixed for hearing on 04.05.2006 and at that point of time the respondent No. 3 herein filed the interlocutory petition seeking for the relief of staying the opposition proceedings till the final disposal of the appeal filed against the order dated 24.03.2003 passed by the Deputy Registrar of Trade Marks, Mumbai. The appellants/opponents filed their counter and objected the same. On consideration of the claims and contentions made by both sides, the present impugned order was passed by the Joint Registrar of Trade Marks. The said order is challenged in the present appeal.

3 . Mrs. Mitul Das Gupta representing M/s. S. Majumdar & Co. appearing for the appellants would contend that the impugned order is liable to be set-aside on the ground of non application of mind and on the ground of erroneous consideration on facts and in law.

It is contended that the interlocutory application itself filed seeking for the relief of stay of opposition proceedings until the disposal of the appeal pending before the IPAB against the order dated 24.03.2003 passed by the Deputy Registrar of Trade Marks, Mumbai. The learned counsel would contend that such ground for stay was not available to the respondent No. 3 herein even at the time of passing the impugned order. It is pointed out by the learned counsel for the appellants that the Joint Registrar himself has clearly stated in the impugned order that the appeal pending in TA/RECT/60/2003/TM/MUM was disposed of by the IPAB as per the order dated 23.08.2006 in favour of the appellants. Therefore, it is vehemently contended the prayer made in the interlocutory application for the relief of stay was not at all surviving even at the time of passing the impugned order.

5 . It is further pointed out that the prayer in the interlocutory application itself only for staying the opposition proceedings till the disposal pending appeal before the IPAB and there was no prayer for challenging the opposition proceedings till the disposal of the suit filed for infringement before the Hon'ble High Court, Kolkata. The learned counsel would also contend even the writ petition preferred by the respondent No. 3 against the order of IPAB was dismissed and the Hon'ble Supreme Court also upheld the said order. Therefore, it is contended that the impugned order is liable to be set-aside has no ground made out as on date for staying the opposition proceedings initiated by the appellants.

Per Contra, Mr. Rupak Ghosh, the learned counsel appearing for the respondent No. 3 herein would vehemently contend that no ground made out for setting aside the impugned order by the appellants. It is contended that the impugned order was passed on two grounds namely on the ground of pendency of the appeal before IPAB and as well as on the ground of pendency of the civil suit pending in CS No. 143 of 2003 on the file of the Hon'ble High Court, Kolkata. It is contended that though the first ground is not surviving as on date as the IPAB has been disposed of the appeal and reach its finality up to the Hon'ble Supreme Court. The civil suit is pending as on date on the file of the Hon'ble High Court, Kolkata and as such till the disposal of the suit the opposition proceedings cannot be continued. It is contended that the Joint Registrar clearly given its findings in the impugned order to the effect that by using the inherent powers the opposition proceedings are to be stayed with a view to avoid multiplicity of proceedings till the disposal of the appeal before the IPAB and the Civil Suit before the Hon'ble High Court, Kolkata.

It is contended that the Joint Registrar followed the decision reported in 1949 (66) RPC 331-Flowerdale Ltd. Vs. Hale Electric Co. Ltd. The learned counsel for the respondent No. 3 would contend that the same questions are involved in the civil suit pending before the Hon'ble High Court, Kolkata as in the instant case pending before Registrar. Therefore the Registrar has assigned valid reasons in granting the relief of stay in the impugned order and the appellants has not made out any ground to set-aside the said order and the appeal is liable to be dismissed.

8 . The learned counsel for the respondent No. 3 would also submit that the respondent No. 3 also filed fresh Rectification Petition before the Registrar of Trade Marks in respect of the very same trade mark.

9 . We have given our careful and anxious consideration to the rival contentions put forward by either side and perused the entire materials available on record including the impugned order.

At the out set, it is to be stated that the interlocutory petition itself was filed before the Registrar of Trade Marks by the respondent No. 3 herein seeking for the relief of stay of opposition proceedings initiated by the appellants herein till the disposal of the appeal pending against the order of the Deputy Registrar of Trade Marks, Mumbai dated 24.03.2003 passed in Rectification No. BOM-1034 on the file of IPAB bench. There is absolutely no prayer for seeking the relief of staying the opposition proceedings pending disposal of the civil suit in CS No. 143/2003 on the file of Hon'ble High Court, Kolkata. In the Interlocutory petition, merely a mention was made about the filing of suit and obtaining an order of injunction from the Hon'ble High Court, Kolkata. It is pertinent to note that not even the Civil Suit number was mentioned in the Interlocutory petition. It is also relevant to note that in the Interlocutory application, the respondent No. 3 has not made any pleadings or mentioned any specified grounds for seeking the relief of stay of opposition proceedings initiated by the appellants herein. It is nothing but a bald and vague petition.

1 1 . The perusal of the impugned order, it is clearly demonstrates the total non application of mind on the part of the Joint Registrar to the factual position by making self contradictory statements in the impugned order. It is pertinent to note that in the impugned order itself, the Joint Registrar has categorically stated that the appeal pending before the IPAB Bench against the order of the Deputy Registrar, Mumbai dated 24.03.2003 was disposed of by the order dated 23.08.2006 by IPAB. It is further stated that the IPAB Bench has held that Deputy Registrar has no power to entertain the application for rectification. Therefore, it is crystal clear that the only ground raised in the Interlocutory application for seeking for the relief of stay namely, the pendency of the appeal on the file of IPAB Bench was disposed of even on the date of passing the impugned order dated 28.09.2007. At the risk of repetition, it is to be reiterated that the Joint Registrar has mentioned about the grounds for stay pending disposal of IPAB Bench and the prayer made in the Interlocutory petition in the very beginning while narrating the facts of the case. Knowing fully well about the non survival of the appeal pending before the IPAB, the Joint Registrar has no ground at all to stay the opposition proceedings and the impugned order was passed erroneously resulting in grave miscarriage of justice to the appellants.

The yet another factor to be borne in mind is that the respondent No. 3 admittedly filed the civil suit before the Hon'ble High Court, Kolkata prior to the filing of the application for registration and such being the position, there is no justification for seeking the relief of stay of the opposition proceedings initiated by the opponents even on the ground of pendency of the suit The learned counsel would now also submit that they have filed a fresh rectification petition and we are of the considered view that the same would not be an obstacle for the continuation of the opposition proceedings. We are also constrain to state that the Joint Registrar has exceeded his jurisdiction by granting the relief of stay inspite of the disposal of the appeal and the same reaching its finality up to the Hon'ble Apex Court and granting the relief on the ground of pending civil suit which was not at all a prayer made by the respondent No. 3 in the Interlocutory application. It is very unfortunate to note that the opposition proceedings are kept pending for the last more than a period of 11 years on unjustifiable grounds.

In view of the aforesaid reasons, we are constrained to allow the appeal and set-aside the impugned order.