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2019 (12) TMI 1599 - CALCUTTA HIGH COURTSuit for infringement of this trademark and passing off - first and foremost point is that ‘Shyam’ is another name of Lord Krishna, no exclusive right can be claimed by anybody over this mark - HELD THAT:- Section 125 says that where in a suit for infringement of a registered trademark the validity of registration is questioned by the defendant, the application under Section 57 has to be made only to the Appellate Board. Sub-section 2 provides that subject to sub-section 1 if an application for rectification of the register is made to the Registrar under Section 57, if he thinks fit shall refer the application at any stage of the proceedings to the appellate board. The effect of this section, inter alia, is that the question of validity of a trademark is to be decided by the tribunal. The court retains its powers to decide the question of validity on a prima facie basis, pending this decision. When this question of validity is raised and referred to the tribunal or it is pending before the tribunal, the interlocutory application can be disposed of but the suit has to remain stayed till the disposal of the lis by the Appellate Board. This court cannot say as an infallible principle of law that registration of the word ‘Shyam’ was invalid and its registration should be cancelled. The respondent has to prove, by leading cogent evidence, before the Board, that indeed the name ‘Shyam’ refers to God only, is not distinctive of the appellant, is generic and common. Hence, its registration was invalid. The respondent has not been able to establish this, even prima facie - The respondent has also not been able to produce any significant evidence to show that it was carrying on business using the subject trademark evidence by sales figures, prior to registration of the appellant’s mark or prior to the date from which the appellant claimed first user of the mark. The impugned ad-interim order was made only on the basis of the petition. Before us there is additional evidence in the form of the affidavit-in-opposition and the affidavit-in-reply. Some supplemental papers have also been filed. Therefore, the case is considered on the basis of the petition as well as the additional evidence produced. This court is not called upon only to evaluate whether the exercise of discretion by the learned trial court was right or wrong. This court is duty bound to pass a suitable interim order, pending trial of the suit. In doing so, this court has to put itself in a position as if it was moved to pass an interim order in the suit. The prima facie case on facts theoretically is in favour of the appellant. However, for atleast four years from December, 2015 the respondent has been manufacturing and selling TMT bars using the trademark ‘Shyam’, without any active interference by the appellant. Prima facie, it is opined that there is no acquiescence to its use on the part of the appellant but inaction and delay in taking action. The respondents shall be permitted to clear their exiting stock by manufacture and sale of their products with the said existing subject trademark till 30th April, 2020 - application disposed off.
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