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TMI Blog2017 (12) TMI 96X X X X Extracts X X X X X X X X Extracts X X X X ..... ave granted in S.L.P. (C) No.1851 of 2009 and S.L.P. (C) No.27309 of 2012. 2. A relatively simple question though of considerable importance in Intellectual Property Rights jurisdiction has presented itself for an authoritative pronouncement of this Court in the present bunch of appeals. The question arising will be formulated for an answer at a subsequent stage and for the present we will take notice of the relevant facts giving rise to the issue in question. 3. The respondent in Civil Appeal Nos.4767-4769 of 2001 (P.M. Diesels Ltd.) is the registered owner of three trade marks, the common feature of all of which is the words "Field Marshal". The three registration certificates issued by the Registrar of Trade Marks in favour of the respondent-Company (through its predecessor) is in respect of the mark "Field Marshal" (Registration No. 224879); the second certificate is in respect of trade mark "Field Marshal" in lettering style (Registration No. 252070) and the last certificate is in respect of trade mark "FM Field Marshal" (Registration No. 252071-B). The first registration certificate is dated 16.10.1964 and the second and third registration certificates are dated 4.10.1968. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntation before the competent court in the State of Gujarat. The said order was challenged by the respondents herein (plaintiffs in the suit) before the Division Bench. The Division Bench by Order dated 24.10.2008 held that in the facts of the case the plaint ought not to have been rejected; however, as the appellant before it (respondent-plaintiff) had no objection to carry on the proceedings in the competent court at Rajkot, Gujarat, the plaint was returned to be filed in Rajkot. Thereafter, the case was transferred from the Delhi High Court to the court at Rajkot and the proceedings came to be numbered as Civil Suit No. 1 of 2009 in the file of the learned Additional District Judge, Rajkot. 8. While the aforesaid Order of the Division Bench dated 24.10.2008 is the subject matter of challenge in the connected Civil Appeal arising out of S.L.P. (C) No. 1851 of 2009 also filed by the appellant, what is of significance is that when the suit in question was pending adjudication in the High Court of Delhi, the appellants herein initiated parallel proceedings before the High Court of Gujarat (in the year 1997) seeking rectification of the registration of the trade mark(s) granted to th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Rajkot, despite the conclusion of the Appellate Bench that the order of the learned Single Judge holding that the Delhi High Court had no jurisdiction and hence the plaint should be returned, is not correct. As the said direction of the Division Bench of the High Court challenged in the appeal was at the instance of the plaintiff (respondent herein), who was the appellant before the High Court, we would understand the stand taken to be a virtual withdrawal of the appeal and an undertaking to comply with the direction of the learned Single Judge to present the plaint before the competent court at Rajkot. In these circumstances, we do not consider it necessary to continue to entertain the challenge made in the appeal arising out of S.L.P. (C) No.1851/2009 so as examine the legality of the correctness of the said order on merits. The person aggrieved before the High Court i.e. the respondent herein chose to comply with the order of the leaned Single Judge. The appellant herein was not aggrieved by the order of the learned Single Judge. The aforesaid proceeding i.e. arising out of S.L.P. (C) No.1851/2009, in the circumstances set out above, is accordingly closed. Two appeals, therefor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Section 41 (b) of the Specific Relief Act, 1963 which restrains a subordinate court from preventing a person from instituting any proceeding in a higher court has also been stressed upon and reliance has been placed in this regard on Cotton Corporation of India Ltd. Vs. United Industrial Bank Ltd. and Ors. (1983) 4 SCC 625 Reliance has also been placed on the decision of the High Court of Madras in B. Mohamed Yousuff Versus Prabha Singh Jaswant Singh and Others (2008) 38 PTC 576 Madras DB and the judgment of the Full Bench of the Delhi High Court in Data Infosys Limited and Others Versus Infosys Technologies Limited 2016 (65) PTC 209 Delhi FB. 14. In reply, on behalf of the respondent, it is contended that the provisions of Section 111 of the 1958 Act particularly sub-sections (3) and (4) thereof make it very clear that once the Civil Court is satisfied with regard to the prima facie tenability of the issue of invalidity of the registration of a trade mark that may be raised before it by any party to an infringement suit, the said question has to be decided in a rectification proceeding and not in the suit. The suit will remain stayed and the final decision of the statutory aut ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... "46. Removal from register and imposition of limitations on ground of non-use. (1) Subject to the provisions of section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either- (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted un ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ound of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit. (3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register. (4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2). (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly. (6) The power t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... apply to the High Court 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. 1851 (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 making any interlocutory order ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... does not deal with the discretion of the Court to permit or not to permit the filing of a rectification application. The High Court further was of the view that a plain reading of Section 124(1)(ii) does not disclose that the said provision of the 1999 Act mandates a party to first obtain permission/leave of the Court to file a rectification application which is a statutory right vested by the Act (Sections 47 and 57 of the 1999 Act) and therefore cannot be curtailed by any other provision of the 1999 Act. 20. The issue arose once again before the Delhi High Court in Data Infosys Limited (supra) which was referred to a Full Bench, perhaps, for a closer look into the matter in view of the conflict of opinions in Astrazeneca UK Ltd. (supra) and B. Mohamed Yousuff (supra). After an elaborate consideration of the matter, the Full Bench of the Delhi High Court concluded that where registration of a trade mark is questioned after initiation of a suit for infringement it is open for the party setting up the plea of invalidity to apply to the IPAB under Sections 47 and 57 of the 1999 Act for rectification. The High Court went on to hold that the effect of the prima facie evaluation of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Section 124(2) of the 1999 Act. 22. Insofar as its earlier view in Astrazeneca UK Ltd. (supra) is concerned, the Full Bench was of the opinion that the appellate jurisdiction of the High Court would only be confined to a consideration of the question of the prima facie assessment of tenability which would not touch upon the question of invalidity of the trade mark on merits. The view expressed in Astrazeneca UK Ltd. (supra) was held to be unacceptable on that basis. Insofar as the abandonment of the plea of invalidity is concerned, the Full Bench was of the opinion that Section 124(3) merely contemplates abandonment of the plea/defence of invalidity in the suit and not an abandonment to claim rectification under Sections 47/57 of the 1999 Act. 23. Registration of a trade-mark vests in the registered owner an exclusive right to use the mark in relation to the goods in respect of which the mark has been registered. This is, however, subject to such conditions and limitations as may be incorporated in the registration itself. It also grants to the registered owner a right to seek and obtain relief in case of infringement of the mark. Section 46 in Chapter VI of the 1958 Act conte ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion of the register. Section 111(2) of the 1958 Act provides that in case an application for rectification is filed within the time allowed the trial of the suit shall remain stayed. Sub-Section (3) of Section 111 provides that in the event no such application for rectification is filed despite the order passed by the Civil Court, the plea with regard to validity of the registration of the trade mark in question shall be deemed to have been abandoned and the suit shall proceed in respect of any other issue that may have been raised therein. Sub-section (4) of Section 111 provides that the final order as may be passed in the rectification proceeding shall bind the parties and the civil court will dispose of the suit in conformity with such order insofar as the issue with regard to validity of the registration of the trade mark is concerned. 26. Following well accepted principles of interpretation of statutes, which would hardly require a reiteration, the heading of Section 111 of the 1958 Act i.e. "Stay of proceedings where the validity of registration of the trade mark is questioned, etc.", cannot be understood to be determinative of the true purport, intent and effect of the prov ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cise of jurisdiction to rectify is, however, different in the two situations enumerated. Such difference has already been noted. 30. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive. 31. The legis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... found that the defendant is guilty of infringement and is appropriately restrained by a decree of the Civil Court. If the right under Section 46/56 of the 1958 Act is to subsist even in such a situation, the possible uncertainty and possible anarchy may well be visualized. This is why the legislature by enacting Section 111 of the 1958 Act has mandated that the issue of invalidity which would go to the root of the matter should be decided in the first instance and a decision on the same would bind the parties before the civil court. Only if the same is abandoned or decided against the party raising it that the suit will proceed in respect of the other issues, if any. If the above is the legislative intent, which seems to be clear, we do not see how the same can be overcome by reading the rights under Sections 46 and 56 of the 1958 Act to exist even in a situation where the abandonment of the same right under Section 111(3) has taken effect in law. The mandate of the 1958 Act, particularly, Section 111 thereof, appears to be that if an aggrieved party does not approach the Tribunal for a decision on the issue of invalidity of registration as provided for under Section 111(2) and (3 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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