TMI Blog2010 (2) TMI 1253X X X X Extracts X X X X X X X X Extracts X X X X ..... by the Respondent, that is, 'Non-Dust' was registered with the Registrar of Trade Marks. 4. The Appellants objected to the registration of the trade mark 'Non-Dust' and filed a rectification/cancellation application which is still pending with the Intellectual Property Appellate Board. These facts are not disputed by either of the parties. 5. After filing the application for rectification/cancellation, the Appellants moved an application before the learned Single Judge under Section 124 of the Trade Marks Act, 1999 for a stay of the suit with regard to the alleged infringement. Section 124(1) of the Act which is material for our purposes reads as follows: 124. Stay of proceedings where the validity of registration ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Marks Act, 1958 being Section 111 thereof and that came up for interpretation in two cases before different learned Single Judges of this Court. 8. In the first case that is Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co., Bikaner AIR 1982 Delhi 230 a composite suit was filed for infringement of a trade mark and for passing off. The learned Single Judge observed in paragraph 4 of the Report that once rectification/cancellation proceedings are initiated, the suit in the High Court is liable to be stayed: As for the question of stay, the position appears to be quite simple. Both the parties are registered owners of the identical trademarks. The trademarks in favour of one are under challenge by the other. Rectification ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 07, 46 and 56 of the Trade Merchandise Marks Act for the rectification of the plaintiffs trade Mark No. 252967-B in Class 7, dated. 7-11-1968 Section 111 seeks to prevent parallel enquiries in the same matter. The intention of the Legislature is that the Court trying the suit must wait for the result of rectification proceedings before it passes any final order or decree involving the validity of the registration. Instead of requiring the Court to raise as issue regarding the invalidity of the plaintiff's registration of the trade mark, the defendant filed the rectification proceedings. In my opinion this is a substantial compliance with the provisions of Clause (B) (ii) of Sub-section 1 of Section 111 of the Trade Merchandise Marks ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... corresponding to Section 124 of the New Act shall not be raised and the trial court would be free to proceed with the suit. 12. On a reading of the above paragraph, we find that it is quite clearly stated that both learned Counsel appearing in the Supreme Court had agreed that early disposal of the matter would be in the interest of the parties. Learned Counsel for the appellants in the Supreme Court stated that the question relating to the bar of jurisdiction under Section 111 of the Trade and Merchandise Marks Act (corresponding to Section 124 of the Trade Marks Act) shall not be raised and the trial court would be free to proceed with the suit. 13. In view of the above, we find that the judgment referred to by learned Counsel is n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on 124 of the TM Act stood attracted. It appears to this Court that there is no option but to stay the further proceedings in terms of Section 124 of the TM Act. 17. We are of the view, therefore, that the law on this issue is quite well settled. Where an application for rectification/cancellation of a registered trade mark is pending before the statutory authority, the High Court is obliged to stay further proceedings in the suit pending before it pursuant to Section 124(1) of the Trade Marks Act, 1999. 18. In so far as the suit out of which present appeal arises is concerned, there is an allegation against the Appellants of passing off the trade mark 'Plasto' as well as 'Non-Dust' and there is an allegation of inf ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
