V. V. BEDARKAR, J. ( 1 ) THIS is a long drawn battle in a suit for infringement of Registered Trade Mark and Passing Off because the suit filed on 3 is still at the dispute of a stay granted under sec. 111 of the Trade and Merchandise Marks Act 1958 (herein after referred to as the Act ). ( 2 ) THE petitioner The Atul Products Ltd. has got made Mark ATUL registered with the Registrar of Trade Marks. On or about 8-11-1962 the petitioner-Company made three applications. After scrutinising and hearing on various points the applications were granted and the trade marks were registered. All these aspects are mentioned in paragraph 4 and onwards of the petition which I do not propose to discuss in details. Another batch of three applications was given on 1-12-1964 and those applications were accepted and registration was duly granted. Then in paragraph 8 and onwards it has been mentioned that there is a vast market for the products of the petitioner-company and the registered trade mark has become synonymous with the products of the Company and its popularity etc. and also there is mention about various awards etc. having been received by the petitioner-Company for the products of ATUL. The petitioner-Company also in collaboration with a seem Company known as CIBA formed a company CIBATUL LIMITED. Then concoctions with another American Company and internationally reputed companies are also shown. But those names have nothing to do with the word ATUL. Therefore I do not mention them. ( 3 ) IT is the case of the petitioner-Company that the opponent-Company was also dealing in dyes and is using the name ATUL DYES. Having known that the trade-mark ATUL was being infringed and the goods of opponent-Company were being passed off as those of the petitioner-Company the petitioner filed Regular Civil Suit no. 6 of 1977 on 3-11-1977 in the District Court Surat to restrain the opponent-Company from infringing the petitioner-Companys registered trade-marks as well as the trading style. In that ad interim injunction was obtained against the opponent-Company which was later on confirmed. Against that order the opponent-Company filed an appeal being Appeal from Order No. 85 of 1978 before this Court on 17-3-1978. In that appeal from order a compromise was entered into. In that ad interim injunction was obtained against the opponent-Company which was later on confirmed. Against that order the opponent-Company filed an appeal being Appeal from Order No. 85 of 1978 before this Court on 17-3-1978. In that appeal from order a compromise was entered into. In that compromise it was mentioned that the opponent-Company would mention prominently at a conspicuous place on their products the words Not connected with THE ATUL PRODUCTS LIMITED OF BULSAR and therefore the interim injunction was vacated. But it is also the grievance that this undertaking is breached and the opponent-Company is not mentioning the aforesaid words on its goods prominently at a conspicuous place. At any rate this is a matter involved in another Appeal from Order No. 163 of 1981 which is before this Court and which is to be decided after the decision of this revision petition. ( 4 ) IN the suit issues were raised after hearing the parties and also some proposed issues were deleted. The matter proceeded. Evidence of the plaintiffs side was over. Some evidence on behalf of the defendant was also recorded. The plaintiffs evidence commenced on 27-7-1978 and was over on 11-10-1979. Evidence of defendants side started on 4-11-1979 and cross-examination of defendants first witness started on 1-3-1980 and it is alleged that on 4-7-1980 the opponent made an application under sec. 107 of the Act to the High Court of Bombay for rectification proceeding against the trade mark of the petitioner. It is above the grievance that in the interim order which was passed in September 1978 in Appeal from Order it was decided that the suit should be heard expeditiously and finished within three months. This was not done. It is also the grievance of the petitioner that in the meantime rectification proceedings started and an application under sec. 111 of the Act was given to the trial Court on 19-7-1980 mentioning that as the opponents had filed Miscellaneous Petition No. 334 of 1980 in the Honble High Court of Bombay for rectification of the trade marks registered the suit before the Surat Court should be stayed. This was application Ex. 201. The petitioner filed a detailed reply at Ex. 202. This was application Ex. 201. The petitioner filed a detailed reply at Ex. 202. After hearing the parties the learned Assistant Judge Surat who was trying this suit granted stay in favour of the opponent-Company and therefore the petitioner-Company has come by way of this revision petition. ( 5 ) MR. G. N. Desai learned Advocate for the petitioner has contested the decision of the Learned Assistant Judge on various grounds. His submission is that the lower Court has misconstrued the provisions of sec. 111 of the Act under the impression that when such an application for rectification is made and it has been brought to the notice of the Court trying the suit the suit must be stayed. He has taken me through various provisions of the Act to show that under what circumstances such an application can be made and also stay can be granted-I shall refer to the relevant provisions of the Act wherever it will be necessary to refer to them. But the main dispute before me is whether application Ex. 201 filed by the opponent-Company was such on which stay should have been granted. So for this purpose it will be necessary to appreciate the provisions of the main section i. e. sec. 111 of the Act which authorises or gives jurisdiction to the Court to stay the proceedings. ( 6 ) BUT before that I would try to consider the preliminary objections raised by Mr. S. B. Vakil learned Advocate for the opponent-Company as to the maintainability of this revision petition under sec. 115 of the Code of Civil Procedure 1908 (hereinafter referred to as the Code ). It is his submission that if it is found that the lower (Court had jurisdiction to grant stay or to refuse time stay then unless it has been shown that there is jurisdictional error revision cannot be entertained. For that he has cited before me some rulings also. ( 7 ) APPARENTLY it can be said that under sec. 111 of the Act jurisdiction to grant stay has been conferred on the Court. There are some circumstances under which the stay can be granted and the main grievance of the petitioner-Company is that the circumstances provided for by and under the provisions of sec. ( 7 ) APPARENTLY it can be said that under sec. 111 of the Act jurisdiction to grant stay has been conferred on the Court. There are some circumstances under which the stay can be granted and the main grievance of the petitioner-Company is that the circumstances provided for by and under the provisions of sec. 111 of the Act to do not permit granting of stay and in the alternative it has been submitted that because stay can be granted under sec. 111 of the Act only in a suit pertaining to the infringement of the registered trade-marks that much part can be stayed and if the whole suit which is also cause of action of passing off is stayed then it can be said that the trial Court has exceeded the jurisdiction vested in it and therefore it will be covered by sec. 115 of the Code. ( 8 ) NOW in the instant case it is question whether the Court could have granted stay. The suit was already filed and proceeded. It will be further clarified from the discussion of sec. 111 of the Act but for the time being it is the suggestion that under sec. 111 of the Act the Court has power to grant stay in two places (1) if the application as already filed meaning thereby as argued by Art. Desai before the filing of the suit and (2) if pending the suit the Court finds that challenge to the registration is tenant then it should frame issue and direct the defendant to approach for rectification proceedings within three months. It is the submission that as both the aspects are absent in the instant case exercise of jurisdiction is not in accordance with the provisions laid down and therefore the provisions sec. 115 of the Code are untenable. I prima facie feel that the main challenge of the petitioner is to the exercise of jurisdiction by the trial Court under sec. 111 of the Act attempting to show to this Court that that exercise was not in accordance with the procedure laid down by sec. 111 of the Act. 115 of the Code are untenable. I prima facie feel that the main challenge of the petitioner is to the exercise of jurisdiction by the trial Court under sec. 111 of the Act attempting to show to this Court that that exercise was not in accordance with the procedure laid down by sec. 111 of the Act. Whether the argument advanced ultimately succeeds in the final decision of the revision petition would be a different matter but so far as the tenability of the revision is concerned these are the material arguments advanced and therefore there is challenge to the procedure adopted by the trial Court in exercise of its jurisdiction vested under sec. 111 of the Act and therefore I think that the revision is maintainable. ( 9 ) IN order to elucidate this point it is necessary to reproduce the provisions of sec. 111 of the Act though for the present dispute reproduction of only a part of sec. 111 of the Act would be sufficient. In order that it may not be required to be repeated I reproduce the entire sec. 111 of the Act which is as follows:"111 (1) Where in any suit for the infringement of a trade mark (A) the defendant pleads that the registration of the plaintiffs trade mark is invalid; or (B) the defendant raises a defence under clause (d) of sub-sec. (1) of sec. 30 and the plaintiff pleads the invalidity of the registration of the defendants 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 plaintiffs or defendants trade mark are poundage before the Registrar or the High Court 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 defendants 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 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-sec. (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-sec. (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 on 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) That final order made in any rectification proceedings referred to in sub-sec. (1) or sub-sec. (2) shall be binding upon the parties and the Court shall dispose of the suit comfortably 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 (including any order granting an injunction directing accounts to be kept appointing a receiver or attaching any property) during the period of the stay of the suit". ( 10 ) SO far as jurisdictional aspect is concerned the Court trying the suit is bound to stay the proceedings if the proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the Registrar or the High Court. Now an attempt was made by relying on the decision that this has reference to the proceedings pending prior to the filing of the suit and the second aspect is that if no such proceedings are pending then the Court should be satisfied about the plea regarding the invalidity of the registration of the plaintiffs or defendants trade mark being prima facie tenable and thereafter an issue has to be raised regarding the same and the Court has to adjourn the case for a period of three months requiring the party concerned to apply to the High Court for rectification of the register. According to the petitioner as the application was filed at the intermediary stage i. e. not before the filing of the suit nor after the Court raising an issue considering the dispute prima facie tenable and staying the proceedings and detecting the defendant to file an application but the proceedings have been filed after the suit had proceeded without getting an order from the Court under sec. 111 (1) (ii) of the Act and therefore there is jurisdictional error. This point certainly affects the procedural aspect exercising jurisdiction and therefore the revision is maintainable. It will be another aspect to consider whether the ultimate decision arrived at by the learned trial Judge was justified or not on the facts and circumstances of the case but so far as the maintainability of revision petition is concerned on this aspect it can certainly be said that it is maintainable. ( 11 ) NOW the first point about the merits raised by Mr. C. N. Desai learned Advocate for the petitioner is that there is no provision in the Scheme of sec. 111 of the Act to make an application by a party concerned of its own accord when the suit is already pending and issues are framed. It is also his submission that the proceedings were protracting for such a long period and having realised that the defendant would be on losing side in order to protract the proceedings further. though it had not made application at any earlier stage before the filing of the suit nor requested the Court for taking recourse under sec. 111 (1) (ii) directly filed an application to the High Court and then claimed for the stay of proceedings. This eventuality is not there in the Scheme of sec. 111 of the Act and therefore the lower Court should not have exercised the jurisdiction. It is also the submission that this application was made mala fide just to protract the proceedings. It is also the submission that in order to grant stay even in such circumstances it was necessary for the trial Court to come to the conclusion that issue about invalidity of registration is prima facie tenable. However no such issue was at all raised even earlier or at the time of passing the order of stay and therefore jurisdiction exercised by the trial Court under sec. 111 (1) (ii) of the Act is improper. However no such issue was at all raised even earlier or at the time of passing the order of stay and therefore jurisdiction exercised by the trial Court under sec. 111 (1) (ii) of the Act is improper. It is patent fact that the impugned order passed by the learned trial Judge on 2-4-1981 below Ex. 201 clearly mentions that the case of the opponent-defendant for stay would be covered under sec. 111 (1) (ii) of the Act and therefore Mr. Desai has advanced these arguments. ( 12 ) AS against this surprisingly Mr. S. B. Vakil for the opponentdefendant came not with the case that the learned trial Judge has committed an error in considering that the provisions of section 111 (1) (i) of the Act would not be attracted but the provisions of sec. 111 (1) (ii) would he attracted. That aspect will be considered at the relevant stage. But these are the objections raised against the impugned order and the main objection is that even if it can be said that the suit can be said the entire suit should not have been stayed and other issues should have been tried so that the matter may not protract. ( 13 ) NOW in order to support his basic point raised Mr. Desai submitted before me that under the scheme of the Act the trade mark of the petitioner-Company was registered under Part A of the register. It is also not in dispute that the trade-mark of the petitioner-company was registered earlier i. e. on 21-2-64. Registration of second batch of applications which was filed on 1-12-64 was also granted. So prima facie these trade marks were registered since 1964 or 1965. As per the provisions of sec. 32 of the Act registration of such a trade-mark cannot be called into question for seven years except on three counts mentioned therein. That sec. 32 of the Act reads:"subject to the provisions of sec. 35 and sec. 46 in all legal proceedings relating to a trade mark registered in part A of the register (including applications under sec. 32 of the Act registration of such a trade-mark cannot be called into question for seven years except on three counts mentioned therein. That sec. 32 of the Act reads:"subject to the provisions of sec. 35 and sec. 46 in all legal proceedings relating to a trade mark registered in part A of the register (including applications under sec. 56) the original registration of the trade mark shall after the expiration of seven years from the date of such registration be taken to be valid in all respects unless it is proved (A) that the original registration was obtained by fraud; or (B) that the trade mark was registered in contravention of the provisions of sec. 11 or offends against the provisions of that section on the date of commencement of the proceedings; or (C) that the trade mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor. (D) It is therefore the contention of Mr. Desai that after a period of seven years except on three counts i. e. (a) (b) and (c) mentioned in sec. 32 of the Act there cannot he any challenge to the registration of the trade mark and therefore the lower Court should have considered this aspect and should not have granted the stay. ( 14 ) NOW under sec. 32 of the Act a ground can be advanced even after seven years that original registration was obtained by fraud. Also a ground can be taken under clause (c) that the trade mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor. Now what is meant by at the commencement of the proceedings will be considered later on. But these two arguments can be available even after seven years. So it will be necessary to see whether these aspects were raised initially by the opponent in the suit. ( 15 ) IN order to challenge the action of the learned trial Judge Mr. Desai has elaborately argued on various aspects including the availability of clause (a) or clause (b) of sec. 32 of the Act. But the initial ground which he has advanced is as to whether under the scheme of sec. ( 15 ) IN order to challenge the action of the learned trial Judge Mr. Desai has elaborately argued on various aspects including the availability of clause (a) or clause (b) of sec. 32 of the Act. But the initial ground which he has advanced is as to whether under the scheme of sec. 111 of the Act the application given by the opponent to the Court should have been entertained and thereafter he has argued on the point whether there was any such issue and also whether the dispute was tenable. It is his submission that sec. 111 of the Act clearly postulates two circumstances. First is that in a suit for infringement of a trade mark the defendant must plead that the registration of the plaintiffs trade mark is invalid as per sec. 111 (1) (a) of the Act. Section. 111 (1) (b) of the Act is not material for our consideration because the dispute does not fall within that section. ( 16 ) THE second ground advanced by Mr. Desai is that the power of the Court to stay the suit is available only on two eventualities. One is if any proceeding for rectification of register in relation to the plaintiffs trade mark is pending before the Registrar or the High Court it is abundantly clear that no such proceedings were pending when the suit was filed. Now this aspect has been disputed by Mr. Vakil by submitting that it is not necessary that proceedings should be pending before the filing of the suit. ( 17 ) IN fact Mr. Desai relied on the decision of the Delhi High Court in Kedar Nath v. Monga Perfumery and Flour Mills A. I. R. 1974 Delhi 12 wherein it has been considered as to at what stage application should have been filed. It is observed:"clause (i) (of sec. 111 (1)) applies where proceedings under sec 107 i. e. Rectification of the Register of trade-marks are pending before the Court at the time of institution of a suit for infringement of a trade-mark. CLAUSE (ii) and not clause (i) will apply where after the institution of such suit the defendant has applied or wants to apply for rectification. In such ease the Court may on being satisfied that defendants plea of invalidity of registration of the trade-work is prima facie tenable adjourn the suit". CLAUSE (ii) and not clause (i) will apply where after the institution of such suit the defendant has applied or wants to apply for rectification. In such ease the Court may on being satisfied that defendants plea of invalidity of registration of the trade-work is prima facie tenable adjourn the suit". In that case before the Delhi High Court the defendant had already applied for rectification of the register after the filing of the suit and therefore his plea that clause (i) was applicable was rejected. On merits the Court was not satisfied about the requirements under clause (ii) and therefore refused to stay the suit. It should be noted that under sub-sec. (1) (i) of sec. 111 of the Act if rectification proceedings pending the Court has to stay the suit pending the final disposal of the suit. But if no such proceedings are pending and application is made later on and if the provisions of clause (ii) of sub-sec. (i) of sec. 111 of the Act are made applicable then it will be necessary for the Court to consider whether the plea raised is prima facie tenable. But it should be appreciated that even before the Delhi High Court procedure according to clause (ii) of sub-sec. (1) of sec. 111 of the Act was not strictly applied because the application for rectification was made independent of the Courts order. Therefore it shall have to be seen whether though it can be said that in order to attract clause (1) rectification proceedings must be pending or even according to the Delhi High Court it must be pending at the time of the institution of the suit whether as Contended by Shri Desai application made in between the period can never be considered by the Court. If it can be considered then it cannot be said that the lower Court has committed jurisdictional error in granting the stay. ( 18 ) THE Delhi High Court on interpretation of the section considered that if the contention is prima facie tenable then even though all the ingredients of sec. If it can be considered then it cannot be said that the lower Court has committed jurisdictional error in granting the stay. ( 18 ) THE Delhi High Court on interpretation of the section considered that if the contention is prima facie tenable then even though all the ingredients of sec. 111 (1) (ii) of the Act are not satisfied meaning thereby the Court is not required to satisfy itself about the plea regarding the validity of the registration of the plaintiff suo motu or on an application and then give time for three months to enable the party concerned to apply to the High Court for rectification or otherwise there will not be any jurisdiction to stay the suit has no basis. The Delhi High Court considered the eventuality of an application filed after the suit was filed and even then considered that that matter would be covered by sec. 111 (1) (ii) of the Act. ( 19 ) UNDER these circumstances the contention that application Ex.- 201 is not contemplated by the provisions of sec. 111 of the Act would not stand if reliance is placed on the decision of the Delhi High Court. But apart from that reading of sec. 111 of the Act clearly shows that stay order is to be passed by the Court trying the suit. Under the scheme of sec. 111 of the Act it is nowhere mentioned that proceedings must have been filed either before the High Court or before the Registrar prior to the filing of the suit. The Court has to apply its mind when it tries the suit and the trial of the suit includes all the stages right from the filing of the written statement till the arguments are advanced and decision is given. ( 20 ) ON this ground Mr. Vakil submitted that if the words the Court trying the suit are considered then the Court will have jurisdiction to stay the suit or according to firm if clause (i) of sub-sec (1) of sec. 111 of the Act is attracted then the Court shall have to stay the suit because the proceedings are pending and it has been brought to the notice of the Court trying the suit. As a distinctive feature he drew my attention to sec. 87 of the Act criminal proceedings are required to be stayed. 111 of the Act is attracted then the Court shall have to stay the suit because the proceedings are pending and it has been brought to the notice of the Court trying the suit. As a distinctive feature he drew my attention to sec. 87 of the Act criminal proceedings are required to be stayed. Sec. 87 of the Act is as follows:"87 (1) Where the offence charged under sec. 78 or sec. 79 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid the following procedure shall be followed: (A) If the magistrate is satisfied that such defence is prima facie tenable he shall not proceed with the charge but shall adjourn the proceeding for three/ months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act for the rectification of the register on the ground that the registration is invalid. (B) If the accused proves to the magistrate that he has made such application within the time so limited or within such further time as the magistrate may for sufficient cause allow the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification and of the appeal if any therefrom. (C) If within a period of three months or within such extended time as may be allowed by the Magistrate the accused fails to apply to the High Court for rectification of the register the Magistrate shall proceed with the case as if the registration were valid. (2) Where before the institution of a complaint of an offence referred to in sub-section (1) any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal the Magistrate shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complaint relies upon the registration of this mark. Now clauses (a) (b) and (C) of sub-sec. (1) of sec. 87 of the Act are practically identical with the provisions of sub-secs. (2) and (3) of sec. Now clauses (a) (b) and (C) of sub-sec. (1) of sec. 87 of the Act are practically identical with the provisions of sub-secs. (2) and (3) of sec. 111 of the Act. Sub-sec. (2) of sec. 87 of the Act requires the Magistrate to stay the proceedings if before the institution of a complaint of an offence an application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the Tribunal. Now this Tribunal according to sec. 107 of the Act is both the High Court as well as the Registrar. It would therefore be pertinent to refer to sec. 107 of the Act. It reads:"107 Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (d) of sub-sec. (1) of sec. 30 and the plaintiff questions the validity of the registration of the defendants 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 sec. 46 sub-sec. (4) of sec. 47 or sec. 56 such application shall be made to the High Court and not to the Registrar. (3) Subject to the provisions of sub-sec. (1) where an application for rectification of the register is made to the Registrar under sec. 46 or sub-sec. (4) of sec. 47 or sec. 56 the Registrar may. if he thinks fit refer the application at any stage of the proceeding to the High Court". Therefore sec. 107 is to the effect that wherein a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned then notwithstanding anything contained in sec. 46 sub-sec. (4) of sec. 47 or sec. 56 an application shall be made to the High Court and not to the Registrar. . ( 21 ) TRIBUNAL is defined in clause (x) of sub-sec. (1) of sec. 2 of the Act which means the Registrar or as the case may be the High Court before which the proceeding concerned is pending. Therefore reference to Tribunal in sec. 56 an application shall be made to the High Court and not to the Registrar. . ( 21 ) TRIBUNAL is defined in clause (x) of sub-sec. (1) of sec. 2 of the Act which means the Registrar or as the case may be the High Court before which the proceeding concerned is pending. Therefore reference to Tribunal in sec. 87 of the Act is to both but sec. 107 of the Act limits the jurisdiction only to the High Court and not to the Registrar if the dispute is raised pending the suit. This aspect in sec. 107 of the Act is very material because the defendant-company itself has made an application not to the Registrar but to the High Court meaning thereby it wants to lake recourse to the fact that the dispute has been raised during the pendency of the suit and therefore it had approached the High Court. ( 22 ) BEFORE proceeding further with the point which I have taken for discussion I would deal with this aspect presently. Under clause (i) of sub-sec. (1) of sec. 111 of the Act if the proceedings are to be covered then application may be pending before the Registrar or the High Court and under the circumstance the Court can stay the suit. Here the defendant has not gone to the Registrar knowing full well that it has raised the distribute during the pendency of the suit and has therefore approached the High Court meaning thereby it bad in mind provisions of clause (ii) of sub-sec. (1) of see. 111 of the Act because under that clause party has to approach only the High Court for rectification. Under clause (ii) there is no question of directing the party to approach the Registrar and that is quite in consonance with the provisions of sec. 107 of the Act which prohibit approaching the Registrar when the suit is pending and therefore by all necessary implications when an application is made when the suit is pending it will certainly be covered by clause (ii ). This I hold for the time being before 1 deal with the submissions of Mr. Vakil on this point. ( 23 ) SO far as the Scheme of secs. This I hold for the time being before 1 deal with the submissions of Mr. Vakil on this point. ( 23 ) SO far as the Scheme of secs. 87 and 111 of the Act is concerned the Legislature was conscious as to when the matter shall be stayed so far as criminal complaint is concerned and that is if the proceedings are pending before the institution of the complaint. While under sec. Ill of the Act no such words like before the institution of the suit are used but only the words the Court trying the suit are used. It is therefore the submission of Mr. Vakil that when the words the Court trying the suit are used it would not be proper for the Court to hold that in order to attract provisions of clause (i) of sub-sec. (1) of sec. 111 of the Act proceedings must be pending before the institution of the suit and therefore he submitted that this Court should distinguish the decision of the Delhi High Court in Kedar Naths case (supra) ( 24 ) IT should be noted that the Delhi High Court in Kedar Naths case (supra) relied on the decision of the Calcutta High Court in Formica International Ltd. v. Caprihans (India) Pvt. Ltd. AIR 1966 Calcutta 247 for consideration of the point whether the entire suit should be stayed or only a part of the suit should be stayed when there is a joint cause of action for infringement of trade mark as well as for passing off and the Calcutta High Court observed that a party can ask for the stay of the suit even before the filing of the written statement. The question before the Calcutta High Court was as to what is meant by words the Court trying the suit. It was contended before the Calcutta High Court that this eventuality would arise when the Court has proceeded to try the suit and not before the stage of filing the written statement. The Calcutta High Court considered the word pleads in clause (a) and words the Court trying the suit in sub-sec. (1) of sec. 111 of the Act and observed as follows:". . . THE word pleads is not necessarily confided to averments made in plaints and written statements and can be and is given an extended meaning. The Calcutta High Court considered the word pleads in clause (a) and words the Court trying the suit in sub-sec. (1) of sec. 111 of the Act and observed as follows:". . . THE word pleads is not necessarily confided to averments made in plaints and written statements and can be and is given an extended meaning. The words the Court trying the suit do not mean actually trying that is at the trial itself. The words trying Court cannot be in the context of the purpose the legislature seeks to enforce in this section the Court before which the suit is pending the Court charged with the duly of the trying the action. A suit can therefore be stayed on an interlocutory application". In the body of the judgment the Calcutta High Court observed:". . THE word pleads in the section should be given the meaning which I have suggested. In other words if the defendant even before the filing of the written statement and before the trial pleads in any petition or affidavit that the registration of the plaintiffs trade mark is invalid he would be entitled to ask for a stay of the suit provided that the other conditions specified in the section are satisfied". The case before the Calcutta High Court was that the stay of the suit was sought by the defendant even before he filed the written statement. So the Calcutta High Court considered that the stage of trial was even before the actual trial i. e. not before the filing of the issues and when the parties went to trial. That would also show that the stage of trial would start from the beginning to the end of the suit and therefore at any stage the defendant can take a plea about the invalidity of the registration. Not only that but the judgment of the Calcutta High Court would also show (hat pleading by the defendant should not necessarily be in the written statement nor at that stage but at any stage of trying the suit and therefore if during the pendency of the suit by applications like Ex. 201 plea is raised can it not be said that the defendant has pleaded the invalidity of the registration of the trade mark and has it not pleaded that aspect before the Court trying the suit even after the issues are framed? 201 plea is raised can it not be said that the defendant has pleaded the invalidity of the registration of the trade mark and has it not pleaded that aspect before the Court trying the suit even after the issues are framed? This I am observance because it was attempted to be shown from the fine distinction of the judgment of the Delhi High Court and the judgment of the Calcutta High Court that matter in both the proceedings was prior to the stage of framing the issues. But if the interpretation of the words the Court trying the suit is not restricted to a particular stage but to the entire stage right from the filing of the plaint till the decision of the suit then it cannot be given any restricted meaning either prior to raising of issues or after raising of issues. So also the pleadings cannot be restricted to only the written statement but even an affidavit or an application drawing the attention of the Court about the invalidity of the registration of the plaintiffs trade mark ( 25 ) THOUGH the Delhi High Court in order to appreciate the availability of clause (i) of sub-sec. (1) of sec. the of the Act considered that in order to attract that provision proceedings must be pending on the date of the suit in order to attract the provisions of clause (ii) of sub-sec. (1) of sec. 111 of the Act the Delhi High Court did not considered this necessity. ( 26 ) IN a subsequent judgment which is the latest in Chandra Bhan Dembla Trading Delhi v. Bharat Sewing Machine Co. Bikaner AIR 1982 Delhi 230 the Delhi High Court observed:"a suit for infringement of trademarks in which the contest between the parties is with regard to validity of registration of each other can be stayed under sec. 111; when rectification proceedings regarding the trademarks are pending. The fact that such proceedings are filed after the institution of the suit would be in view of sub-sec. (2) of sec. 111 be immaterial for she purpose of stay". From the facts of that case it clearly transepts that the proceeding for the rectification of registration in respect of Harsha were filed subsequently and were pending in the High Court. (2) of sec. 111 be immaterial for she purpose of stay". From the facts of that case it clearly transepts that the proceeding for the rectification of registration in respect of Harsha were filed subsequently and were pending in the High Court. The Delhi High Court held that once such proceedings are filed for the purpose of stay the fact that they are subsequent to the suit would be immaterial. Under the circumstances it cannot be said that in order to attract the provisions of sec. in of the Act it is necessary that proceedings must be filed prior to the suit and if they are so filed then neither sub-sec. (1) (i) nor (1) (ii) of sec. 111 of the Act would be attracted. ( 27 ) NOW before proceeding further with the arguments on behalf of the petitioner-Company I will consider the argument advanced by Mr. Vakil to the effect that in fact the trial Court has committed an error in considering that provisions of clause (ii) and not clause (i) of sub-sec. (1) of sec. 111 of the Act are applicable It is his submission that once the Court comes to the conclusion that the stage of trying the suit is any time before the decision of the suit and if without taking recourse to sub-sec. (2) of sec. 111 of the Act party has filed an application before the Tribunal (i. e. now the High Court) provisions of sub-sec. (1) shall be made applicable and there is no authority in the Court except to stay the suit and therefore as it is obligatory further argument advanced by Mr. Desai about the prima facie tenability of the contention and other aspects would not be available. By this Mr. Vakil wanted to cut short the dispute and therefore this argument requires to be considered. ( 28 ) AS appreciated earlier there is certainly some distinction between sec. 87 and sec. 111 of the Act. In sec. 87 of the Act there are specific words before the institution of a complaint while in sec. 111 of the Act there are no such words. Therefore it is the submission that the decision of the Delhi High Court that proceedings must be pending before the institution of the suit is incorporating something into the enactment which the legislature did not intend. To some extent Mr. 111 of the Act there are no such words. Therefore it is the submission that the decision of the Delhi High Court that proceedings must be pending before the institution of the suit is incorporating something into the enactment which the legislature did not intend. To some extent Mr. Vakil is right that the legislature which enacted sec. 87 showed that it was conscious that in order to grant stay mandatorily proceedings must be pending before the institution of a complaint. While in the same way it is stated that sec. 111 of the Act did not contemplate such an eventuality and merely says that the Court trying the suit shall stay the suit if proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the Registrar or the High Court and the suit is to be stayed pending the final disposal of such proceedings. Now if the interpretation is accepted then a litigant can approach the Court trying the suit at any stage and stop the proceedings if he finds that the evidence on record at that stage or even at the time of argument or even before the judgment he finds that the decision would be against him then without the knowledge of the court he would merely make an application and request the Court to stay the proceedings. Therefore if this argument of Mr. Vakil is accepted then it would be giving impetus to such practices in order to avoid the defect in a suit for infringement of trade mark. Therefore the Delhi High Court considered that in such cases sub-sec. (2) of sec. 111 of the Act would be applicable seems to be justified though it can be said that there are no words in sec. 111 of the Act to show that in order to attract the provisions of sub-sec. (1) of sec. 111 of the Act application must be filed prior to the suit. But we cannot overlook the intention of the legislature when it provides for two eventualities. 111 of the Act to show that in order to attract the provisions of sub-sec. (1) of sec. 111 of the Act application must be filed prior to the suit. But we cannot overlook the intention of the legislature when it provides for two eventualities. One is about the proceedings for rectification brought to the notice of the Court trying the suit and second is of no such proceedings pending and the Court having been satisfied about the prima facie tenability of the plea and then adjourning the case for three months directing the defendant or party contesting to approach the High Court. This distinction clearly envisages two stages. One is a stage where Courts attention is drawn to the fact that the suit is already filed and second is after the trial has proceeded and it has been brought to the notice of the Court that such an application is filed. Therefore if an application is filed requirement of adjourning the case for three months and directing the defendant or the party concerned to approach the High Court by filing rectification proceedings would not arise because an application is already filed. But because it is filed during the pendency of the trial provisions of sub-sec. (2) only would be applicable and not that of sub-sec. (1) If sub-sec. (2) is applicable the Court has to be satisfied about the plea regarding the invalidity of registration to be prima facie tenable. This provision is made giving some discretion to the Court to consider that plea is prima facie justified because after the suit is proceeded the Court has come to know as to whether any support is there for the contention about the invalidity of the registration of the trade mark from the evidence on record which may be in the form of pleadings affidavits or documents produced. If evidence is led then there is still further scope for the Court to scrutinies the material and from opinion as to whether plea is prima facie tenable. Therefore in the eventuality of the proceedings which has gone further than the stage of framing issues and evidence is recorded it will not be proper to say that provisions of clause (i) of sub-sec. (1) of sec. 111 of the Act would be attracted thus depriving the trying Court of its jurisdiction to consider the prima facie tenability of the plea. (1) of sec. 111 of the Act would be attracted thus depriving the trying Court of its jurisdiction to consider the prima facie tenability of the plea. If this interpretation is given to the provisions of sec. 111 of the Act then the trying Court would be rendered helpless even in spite of the material before it to come to the conclusion that there is no scope for granting the stay. The Delhi High Court in Kedar Naths case (supra) on materials before it came to the conclusion that there is no case for granting the stay. This should also be available to the District Court which is trying the case and before whom parties have placed all pleadings and documents on record and led the evidence. If at the stage the Court is made helpless by involving the provisions of sec. 111 (1) (i) of the Act then the entire exercise of raising issued recording evidence would be made redundant merely by an application Sled to High Court and then bringing it to the notice of the Court. Therefore in such an eventuality I also fell that provisions of clause (ii) and not of clause (i) of sub-sec. (1) of sec. 111 of the Act would be attracted and the jurisdiction of the Court to consider whether the contention raised is prima facie enable would certainly be there. I am fortified in this finding bookies as considered earlier under clause (i) party can be either to sub-Registrar or to the High Court while under clause (ii) of sub-sec. (1) of sec. 111 of the Act and also sec. 107 of the Act party has to 80 to the High Court. In the instant case the defendant has gone to the High Court and therefore it clearly seems that the defendant was conscious that it had to take the advantage of getting stay under clause (ii) and not clause (i) of sub-sec. (1) of sec. 111 of the Act. Even apart from what the litigant feels from the over-all appreciation of the circumstances of the case this Court is of the opinion that in this case also clause (ii) would be applicable. ( 29 ) BEFORE proceeding further I would observe that the Delhi Hi Court in Kedar Naths case (supra) in para 18 has observed;". . . UNDER sec. ( 29 ) BEFORE proceeding further I would observe that the Delhi Hi Court in Kedar Naths case (supra) in para 18 has observed;". . . UNDER sec. 111 (1) (ii) where no rectification proceeding is pending and the Court is satisfied that the contention as to the validity is bona fide and prima facie sustainable an issue as to validity will be raised to enable the party concerned to apply to the High Court for rectification. (emphasis supplied)". In para 19 it is observed that when it is considered that clause (ii) is attracted then in that case the Court must be satisfied that he contention as to validity of the defendants registration is bona fide and prima facie sustainable. Under the circumstances Mr. Desai has pressed the point to show that as the defendant had made an application for rectification after a long lapse of time it should be considered that it is that bona fide. I will consider this argument on the facts submitted by him. But an argument has been advanced by Mr. Vakil that here the Delhi High Court has imported words into the section which are not there. Sec. 111 of the Act nowhere speaks of bona fide claim. It merely talks of prima facie tenability and not bona fide. Insistence is placed on the word bona fide merely on relying on the decision of the Delhi High Court is Kedar Naths case (supra) and to my mind it will be too much to import the word bona fide into this section which does not contain this word at all. ( 30 ) IT is true that when a litigant requests the Court to exercise its jurisdiction of granting stay then he must show that his claim is tenable. But whether it is necessary that he should show that his claim is bona fide How is bona fide to be weighed ? Merely because a person after a long lapse of time during the proceeding of the suit makes an application for rectification can it be said to be without bona fide or can it be said to be mala fide ? Further when the proceedings are pending before the Court and evidence has been led parties have filed documents affidavits and pleadings the Court has discretion to consider whether the plea in prima facie tenable. Further when the proceedings are pending before the Court and evidence has been led parties have filed documents affidavits and pleadings the Court has discretion to consider whether the plea in prima facie tenable. I must emphasise the word prima facie tenable and not conclusively tenable because arguments are advanced before me as if all the aspects should have been considered by the learned trial Judge before granting stay. I would also say that an the passing reference before the decision of the Delhi High Court was cited the learned trial Judge has in the last line of para 8 of his order observed that the application (Ex. 201) is bona fide but he has not elaborated the aspect. But as considered earlier this is importation of word bona fide by the Delhi High Court and it is something which is beyond the provisions of sec. 111 of the Act. But in order to show that there are no bona fides with the opponent Mr. Desai drew my attention to the proceedings. ( 31 ) THE suit was filed on 3-11-1977. Ex party ad interim injunction was granted by the Court on 3-11-1977. On 29-11-1977 written statement was filed. On 30-1-1978 ad interim injunction was confirmed. The opponent-Company preferred Appeal from Order no. 85 of 1978 on 17-3-1978 before this Court. In that Appeal from Order parties entered into consent terms and agreed to the modification of the injunction order and those concert terms were filed in Court on 2-6-1978. Parties also agreed that the disposal of the suit would be within three months of 2-6-1978. On 5-8-1978 the trial Court framed the issues. Evidence on behalf of plaintiff commenced on 23-2-1978 and it was over on 11-10-1979. Evidence on behalf of the defendant-company started on 15-12-1979 and the cross-examination started on 1-3-1980. It is known what happened to the matter between 1 and 4-7-1980. But probably because the matter was shunted earlier during the vacation and after the vacation on 4-7-1980 application was submitted to the Bombay High Court and this was brought to the notice of the trial Court by application Ex. 201 dated 15-7-1980 which was actually submitted on 19-7-1980 in the Court. From this it is the submission of Mr. But probably because the matter was shunted earlier during the vacation and after the vacation on 4-7-1980 application was submitted to the Bombay High Court and this was brought to the notice of the trial Court by application Ex. 201 dated 15-7-1980 which was actually submitted on 19-7-1980 in the Court. From this it is the submission of Mr. Desai that after having known the evidence of the plaintiff and having entered in the witness-box the defendants side after finishing the examination-in-chief of its witness chose to make an application to the High Court for rectification proceedings and therefore of should be considered that there are no bona fides. ( 32 ) NOW again the difficulty in the way of the petitioner-company world be that of the eventuality is contemplated by sec 111 of the Act nor it says that delay in making application during the proceeding of the suit will be termed as mala fide or lack of bona fide. It is true that in order to get relief from the Court party must show that it is acting properly or with all bona fides. That is one thing and to say that because the party has delayed there are no bona fides and therefore application for stay should have been rejected in its entirety is another thing. When that jurisdiction has been granted to the Court by a statute that jurisdiction has to be exercised within the frame-work of that statute and the Court would not import any words into the statute which are not put by the legislature. If the legislature thought it fit to use the words plea prima facie the legislature would have also used the word bona fides and then required the Court to considered the question of bona fides also. But that is not the tenor of the enactment and therefore with respect use of the word bona fide by the Delhi High Court does not seem to be proper and therefore I am not inclined to accept the argument of Mr. Desai that merely because the defendant-Company made an application to the High Court behind the back of the trial Court without taking the order of the Court under sub-sec. (2) of sec. 111 of the Act; the action should be considered to be mala fide. Desai that merely because the defendant-Company made an application to the High Court behind the back of the trial Court without taking the order of the Court under sub-sec. (2) of sec. 111 of the Act; the action should be considered to be mala fide. ( 33 ) NOW good deal of arguments are advanced before me that the issues were framed after hearing both the parties and though the plaintiff submitted issues the defendant did not submit any issue and secondly though the Court earlier proposed 19 issues on the submissions made by the plaintiff the Court deleted some issues and the defendant did not take any objection to delete those issues and therefore it can be said that the plea about the invalidity of registration was abandoned. Now in order to support this argument my attention is drawn to various documents in the paper-book supplied for the decision of this matter. ( 34 ) ON page 280 of the paper-book there is Ex. 52 wherein 19 issues are raised. Original record was called for and on page 517 of file No. 2 of that record one paper on which these 19 issues have been drawn up is given Ex. 54 but in fact Ex. 54 is on earlier page No. 503 in which there are 14 issues signed by the learned Extra Assistant Judge on 5-8-1978 and these are final issues. Now issue No. 14 in Ex. 52 (or 54 ?)containing 19 issues is to the following effect:"14 Does the defendant proves that Atul is not an invented work of being registered as a Trade AMark "?this would mean that the validity of the registration was put in question. But thereafter an application was made by the plaintiff which is on page 511 but there is no date. It seems that by that the Court was requested to delete issues Nos. 1 2 3 5 6 9 and 11. Some modification was suggested in issue No. 10. Issue no. 12 was considered to be not necessary but modification was suggested and especially issue No. 14 was proposed to be deleted as not necessary because the validity of the registration could not be challenged and therefore should not be permitted. It seems that probably on this application issues Nos. Some modification was suggested in issue No. 10. Issue no. 12 was considered to be not necessary but modification was suggested and especially issue No. 14 was proposed to be deleted as not necessary because the validity of the registration could not be challenged and therefore should not be permitted. It seems that probably on this application issues Nos. 1 2 3 4 5 6 9 11 12 14 16 and 17 were deleted and these issues were re-framed at Ex. 54 which are only 14 in number. It is therefore the submission of Mr. Desai that if issues were framed after hearing the parties and if no such issue as to the invalidity of the registration of the trade mark was allowed to remain for trial can it now be said that there is such issue and the same is prima facie tenable ? According to him it clearly seems that though validity of the registration of the trade mark was raised in the written statement and though issues were proposed after hearing the arguments advanced on behalf of the plaintiff that a particular issue was deleted it can well be said that the defendant did not press that issue. ( 35 ) AS against this Mr. Vakil submitted that issue No. 6 as it stands on Ex 54 is to the following effect:"6 Whether the same is duly registered and in actual use ?now this issue is connected with issue No. 5 which is to the following effect:"5 Whether the plaintiff proves that he adopted as his Trade Mark the word Atul and symbol as described in para 4 of the plaint in respect of their Dyes etc. ? If yes (6) (whether the same is duly registered and in actual use?)". It is therefore the submission of Mr. Vakil that due registration of this trade mark was there as one of the issues and this due registration would also involve the validity of the registration. It should be noted that in the draft issues which are wrongly given Ex. It is therefore the submission of Mr. Vakil that due registration of this trade mark was there as one of the issues and this due registration would also involve the validity of the registration. It should be noted that in the draft issues which are wrongly given Ex. 54 at page 517 there was no such issue as issue No. 6 but originally issue No. 2 in the proposed issue was like issue No. 5 and on page 511 where the objection to the proposed issues is raised for issue No. 2 it was stated that it was not necessary in view of the fact that the trade marks are duly registered. In spite of that issue No. 5 was raised to that effect and no issue like issue No. 6 of the final issues is anywhere found is original Ex. 54 wherein 19 issues are raised and still however issue No. 6 is settled as Whether the same (trade-mark) is duly registered and in actual use? Therefore after hearing the parties the Court framed issues at Ex. 54. Both the parties surrendered to that position and accepted the issues raised by the Court. Therefore it is the submission of Mr. Desai that because the defendant did not insist on the issue having been raised it should have stated to have abandoned the same. ( 36 ) NOW this argument is not tenable inasmuch as raising of issue is the task of the Court. A litigant may insist orally or in writing that a particular issue should be framed and it seems that that argument is advanced but ultimately the Court did not accept the Suggestion. Then can it be said that the party has abandoned the issue merely because that issue is not framed? It is true that when parties go to trial they try to lead evidence on the strength of issues framed. But the parties are also conscious of the pleadings and therefore they would try to show how far the contentions raised in the pleadings are also justified or not and for that also evidence would be led. It is true that when parties go to trial they try to lead evidence on the strength of issues framed. But the parties are also conscious of the pleadings and therefore they would try to show how far the contentions raised in the pleadings are also justified or not and for that also evidence would be led. If after the decision the unsuccessful party goes to the higher Court and makes a grievance that a particular issue was raised but it was not discussed or was not raised quite often the higher Courts accept that grievance and direct the trial Court to try that particular issue. So it is not that earlier an issue is raised and the party did not insist on framing a particular issue when final issues were settled by the Court it can be said to have abandoned the issue. If this position would be accepted it would be creating many hazards during the proceedings and also to the rights of litigating public. Therefore the argument of Mr. Desai that because no insistence was placed by the defendant for having that issue would Read to the conclusion of abandonment of that issue is not acceptable. Even otherwise if issue No. 6 as framed by the Court finally is considered can it not be said that it challenges the due registration of the trade mark of the plaintiff? Is there no scope for leading evidence to show that the trade mark is duly registered and that it is invalids Therefore this argument in my view has no substance. ( 37 ) THEN comes the question about the tenability of plea. It is the submission of Mr. Desai that from the evidence on record or from the material on record it cannot be said that issue is tenable. Now one thing is definite that both the parties in this revision petition have not led me through the entire evidence led to show the tenability or otherwise of the plea but have drawn my attention to broad facts and contentions of the parties. It cannot be said that the contentions about the validity of the Trade Marks were not raised in the written statement. The learned trial Judge has in paragraph 14 of his order considered paras 30 35 38 44 46 59 and 60 of the written statement (Ex. It cannot be said that the contentions about the validity of the Trade Marks were not raised in the written statement. The learned trial Judge has in paragraph 14 of his order considered paras 30 35 38 44 46 59 and 60 of the written statement (Ex. 12) of the defendant and come to the conclusion that these paras have raised pleas regarding invalidity of the registration of the plaintiffs trade-mark. or course the learned trial Judge considered para 38 of the defendants written statement specifically. Therein it is stated that Atul is not an invented word but it is a deceptive word. The word Atul and mark are not capable of being distinctive and therefore the word Atul cannot be registered. Mr. Desai submitted that it is not challenge to the registration and specifically submitted that such a challenge is not open after seven years in view of sec. 32 of the Act to which I have already made reference. Clause (a) of sec. 32 of the Act permits raising of a plea that the original registration was obtained by fraud. Clause (b) of it provides for raising of a plea that the trade mark was registered in contravention of the provisions of sec. 11 or offends against the provisions of that section on the date of commencement of the proceedings and it is attempted to be shown to me that this commencement of the proceeding in clause (b) and clause (c) refers not to proceedings of registration but the proceedings before the Tribunal or the Court. Therefore according to Mr. Desai any contention that at the time when the registration was granted the word Atul was not capable of being distinctive would not be available. I have gone through other paras of the written statement also and para 44 shows that the Trade Mark Registry objected to the registration of the word Atul and then it seems illegally registered the same. This has been considered by the learned trial Judge. The learned trial Judge also considered para 59 wherein it has been contended that the board Atul cannot be registered. It is wrongly registered. Hence its registration should cancelled and removed from the registry. In para 60 it has been mentioned that the trade mark is likely to be cancelled under secs. 52 and 56 of the Trade Marks Act. The learned trial Judge also considered para 59 wherein it has been contended that the board Atul cannot be registered. It is wrongly registered. Hence its registration should cancelled and removed from the registry. In para 60 it has been mentioned that the trade mark is likely to be cancelled under secs. 52 and 56 of the Trade Marks Act. So the contention as to the validity of the Trade Mark was raised. Whether that contention was tenable or not will have to be considered on the material before the Court. But it can well be said that the contention was there and merely because issue was not raised it cannot be said that the plea is abandoned. ( 38 ) IN so far as the tenability of the plea is concerned my attention is drawn to the decision of the Supreme Court in National Bell Co. v. Metal Goods Mfg. C. J. AIR 1971 Supreme Court 898. That decision clearly gives the guidelines as to what should be considered so far as interpretation of sec. 32 of the Act is concerned. It has been observed:"while clause (b) of sec. 32 relates to facts existing at the time of and after registration clause (c) relates to facts which are post-registration facts existing at the date of the commencement of rectification proceedings. If the trade-mark at such date is not distinctive was relation to the goods of the registered proprietor the rule as to conclusiveness enunciated in sec. 32 would not apply. Therefore a person can apply for cancellation on the ground that the trade mark in question was not at the date of the commencement of the rectification proceedings distinctive in the sense of sec. 9 (3)". Therefore it is clear that whatever grounds are advanced by the defendant so far as registration is concerned at time when the application for registration was made would not be available. The defendant shall have to show at the time of the commencement of the proceedings for rectification aspects under sec 32 (b) of the Act Looking to the written statement these arguments are also advanced to show that at the time of filing the written statement trade mark did not remain distinctive. That will be subject to the decision by the Court. Of course it has been contended by Mr. K. M. Mehta on behalf of Mr. That will be subject to the decision by the Court. Of course it has been contended by Mr. K. M. Mehta on behalf of Mr. Desai that before the registration of the trade mark evidence was produced and authorities were satisfied about the distinctiveness of the proposed trade mark and thereafter it was registered. Whatever it may be what we have to consider at this stage is whether a contention has been raised by the defendant in the written statement about position at the time of these proceedings and whether that contention is justified on facts or not is a different thing. ( 39 ) MR. Desai has relied on the decision of the Supreme Court in National Bell Co. s case (supra) to show that the defence of the defendant-Company that the registration of trade mark was invalid is not prima facie tenable from the observations made by the Supreme Court. The Supreme Court in that judgment considered the provisions of sec. 32 of the Act and observed:" The principle underlying clause (c) of sec. 32 is that the property in a made mark exists so long as it continues to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public. If the proprietor Is not in a position to use the mark to distinguish his goods from those of others or has abandoned it or the mark has become so common in the market that it has ceased to connect him with his goods there remains no justification in retaining it on the register. The distinctiveness of the trade mark in relation to the goods of a registered proprietor of such a trade mark may be lost in a variety of ways e. g. by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become publici juris". In the instant case distinctiveness is pertaining to mark Atul. According to the plaintiff-company some portion of different villages was given name Atul and formulated into a separate Gram Panchayat. If the case of the plaintiff that due to its enterprise that Atul received such an important name. As against that it is the contention of the defendant-company that now Atul has become a geographical name and it has been adopted by many persons. If the case of the plaintiff that due to its enterprise that Atul received such an important name. As against that it is the contention of the defendant-company that now Atul has become a geographical name and it has been adopted by many persons. It is their further case that Atul is the name of a son of the owner and therefore they have adopted it and there is no question of any infringement of trade mark and passing off and further Atul has lost its distinctive features. ( 40 ) THESE are the grounds advanced It will be for the Bombay High Court trying the rectification proceedings to come to a definite conclusion. But can it be said from these averments in the grant and allegations in the written statement that there is no case which can be said to be prima facie tenable. It is true that the Supreme Court in case of National Bell Co. (supra) has further observed:"where the evidence does not show that there were repeated breaches of registered trade mark which went unchallenged thought known to proprietor the mere fact that the trade mark was also used by other person would not in absence of proof that use was substantial attract clause (c) of sec. 32 so as to disentitle the registered proprietor from claiming its exclusive use". Now this is also an aspect which could be decided by the Bombay High Court before whom the rectification proceedings are pending. But when allegations are ther e and when some aspects are shown in the written statement which was read before me extensively it can well be said that there is triable issue before the Bombay High Court. . ( 41 ) IT should be noted that in the aforesaid case before the Supreme Court appeals arose out of two rectification proceedings filed in the High Court and orders passed thereon. Therefore after having considered the allegations and entire evidence led during the rectification proceedings the Supreme Court observed as mentioned above meaning thereby there was material before the Supreme Court to come to the conclusion that clause (c) of sec. 32 of the Act was not attracted. Therefore after having considered the allegations and entire evidence led during the rectification proceedings the Supreme Court observed as mentioned above meaning thereby there was material before the Supreme Court to come to the conclusion that clause (c) of sec. 32 of the Act was not attracted. From the decision of the Supreme Court it is very clear that whatever allegations are made by the defendant that the mark was not existing at the time of its registration would not be available because the commencement of proceedings in which question as to conclusiveness character of the registration as laid down in sec. 32 of the Act arises. Such a question may arise in a suit for infringement of the trade mark in which the registered proprietor may rely on sec. 32 to prove his title to the registered trade mark as also in rectification proceedings filed as a result of such a suit or otherwise and the period of seven years would have to be calculated according to the particular proceedings in which the conclusive nature of the validity of registration is relied on. It should also be noted that the decision of the Supreme Court is only on consideration of sec. 32 (c) of the Act. The defendant-company has also alleged fraud which is covered under clause (a) of sec. 32 of the Act. Therefore if the defendant has contended about fraud and also has claimed that the marks do not remain distinctive on the date of the proceedings and if the defendant base its case on the subsequent development then merely because some allegations the made also about the position at the time of the registration would not dis-entitle the diffident from raising the dispute about the absence of distinctiveness at the time of commencement of rectification proceedings merely because seven years have passed. It is also to be noted that the so-called piracy is actual piracy or public juris for Atul is not required to be proved fully as would be required in the rectification proceedings. But so far as the present suit is concerned if the allegations or defence prima facie seems to be tenable it cannot be said that the trial Court has wrongly exercised the jurisdiction in staying the suit. In paragraph 13 of National Bell Co. s case (supra) the Supreme Court has considered the allegations of the defendant. But so far as the present suit is concerned if the allegations or defence prima facie seems to be tenable it cannot be said that the trial Court has wrongly exercised the jurisdiction in staying the suit. In paragraph 13 of National Bell Co. s case (supra) the Supreme Court has considered the allegations of the defendant. They are that even on the date of the proceedings some articles having identical trade mark were being sold. This was in regard to foreign made bells such as Lucas 30 50 and 61 which were being sold as late as 1958. But the Supreme Court came to the conclusion that such sales must have been few and far between as they could only be from the remaining stock out of the earlier imports because later on imports were prohibited and therefore the Supreme Court considered that such sales could hardly be considered as evidence showing a likelihood of confusion or deception as contemplated by sec. 11 (a) of the Act. Now all this was on consideration of the evidence led in the rectification proceedings and therefore it cannot be overlooked that it will certainly be the jurisdiction of the High Court to consider all the materials placed before it and to come to the conclusion whether the registration was invalid or requires to be rectified. ( 42 ) IN Zenith Colour Trading Co. v. Taherally Esufally Rangwala 58 Bombay Law Reporter 912 the Bombay High Court had an occasion to consider the provisions of sec. 24 of the Trade Marks Act 1940 (Act no V of 1940) which is just analogous to sec. 32 of the Act as it is to the following effect:"in all legal proceeding relating to a registered trademark the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects witness such registration was obtained by fraud or witness the trade mark offends against the provisions of sec. 8". In that section allegation of fraud was excepted from the conclusivenses by rule of seven years as is the case in sec. 32 (a) of the Act. But clause (c) in sec. 32 of the Act is a new section. So that distinction cannot be overlooked. The proceedings before the Bombay High Court were also of rectification of registered trade-mark. In that section allegation of fraud was excepted from the conclusivenses by rule of seven years as is the case in sec. 32 (a) of the Act. But clause (c) in sec. 32 of the Act is a new section. So that distinction cannot be overlooked. The proceedings before the Bombay High Court were also of rectification of registered trade-mark. In the case before the Bombay High Court it was considered that the bar of sec. 24 would not be there if two saving clauses would be applicable i. e. whether registration was obtained by fraud or the trade-mark was obtained against the provisions of sec. 8 of the Trade Marks Act of 1940. Sec. 8 of that Act was like clause (a) of sec. 11 of the Act which is to the effect that A mark- (a) the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. That provision of course is in clause (b) of sec. 32 of the Act which takes all the clauses of sec. 11 of the Act mentioning that bar of seven years would not be applicable if it is proved that the trade mark was registered in contravention of the provisions of that sec. 11 or offends against the provisions of that section on the date of the commencement of the proceedings. That is why a contention has been raised by the defendant-company that the use of the trade mark is likely to deceive or cause confusion because the name Atul is very common. But the Bombay High Court considered that both the allegations were not in the pleadings before the High Court for rectification proceedings and therefore bar of sec. 24 of the Act of 1940 was not applicable. Here that is not the case. The learned trial Judge has considered the provisions of sec. 11 and other relevant provisions of the Act. He has also considered the written statement and then has come to the conclusion that the contention is prima facie tenable and therefore granted the stay. 24 of the Act of 1940 was not applicable. Here that is not the case. The learned trial Judge has considered the provisions of sec. 11 and other relevant provisions of the Act. He has also considered the written statement and then has come to the conclusion that the contention is prima facie tenable and therefore granted the stay. ( 43 ) IN view of the discussion made above I think that the learned trial Judge was quite justified in exercising his jurisdiction in staying the proceedings inasmuch as the dispute raised lay the defendant-Company was tenable so far as the rectification proceedings of invalidity of the registration of Trade Mark was concerned. ( 44 ) MR. Desai came out with another argument that if the learned trial Judge wanted to proceed under clause (ii) of sub-sec. (1) of sec. 111 of the Act it was necessary for him to raise the issue. Now it is true that the learned trial Judge in his impugned older has specifically observed that on the record there is no such issue framed looking to Ex. 54 but came to the conclusion that merely because the Court did not frame issue covering the contention of the defendant regarding the invalidity of the registration of the plaintiffs trade-mark it cannot be said that the present application is not tenable. This was observed on over all appreciation of the pleadings and contentions raised before the learned trial Judge. But it is also very clear that in spite of having come to the conclusion that no issue is framed covering the contention of the defendant regarding the invalidity of the registration of the plaintiffs trade-mark the learned trial Judge did not raise any issue as required under sec. 111 (1) (ii) of the Act. But does it mean that the jurisdiction exercised by the learned trial Judge which is otherwise proper should be interfered with only for this technical flaw? I think that exercise of powers of the Court under sec. 115 of the Code of Civil Procedure is not to be utilised for such technical flaws. There is no case of injustice to any party because as considered earlier issue No. 6 is couched in such terms that it would cover question of invalidity of registration. Of course the learned trial Judge was not conscious of that aspect. 115 of the Code of Civil Procedure is not to be utilised for such technical flaws. There is no case of injustice to any party because as considered earlier issue No. 6 is couched in such terms that it would cover question of invalidity of registration. Of course the learned trial Judge was not conscious of that aspect. Normally he should have raised an issue and thereafter stayed the suit. But merely because he has not raised an issue it would not result in injustice which would prejudice any party so as to require this Court to interfere under the provisions of sec. 115 of the Code of visit Procedure. These would certainly be raised by the Bombay High Court before whom rectification proceedings would go on and therefore as provided in sec. 111 of the Act decision in those proceedings would be final so far as the dispute pertaining to invalidity of registration is concerned. Mere non-raising of an issue would not make the impugned order without jurisdiction. ( 45 ) THEN comes the last limb of the argument of Mr. Desai. He submitted that even if it is considered that the Court has jurisdiction to stay the suit so far as the suit pertaining to infringement of the registered trade mark is concerned as provided under sec. 111 of the Act as this suit is for both infringement of trade mark as well as passing off action the Court was not justified in staying the whole suit but should have merely stayed the suit so far as issue pertaining to infringement of trade mark or whatever issues connected with it were concerned and have proceeded further to decide the suit regarding passing off action. ( 46 ) FOR that reliance is placed on the decision of the Calcutta High Court in Formica International Ltd. v. Caprihans (India) Pvt. Ltd. AIR 1966 Calcutta 247 (supra ). It has been observed therein:"a plaintiff can always file a mixed action for infringement and passing off. . . . In the former case the cause of action is founded on property in goods which has been infringed while in the latter case the plaintiff has to prove the reputation of his goods and prove further that the reputation has been assailed. . . . In the former case the cause of action is founded on property in goods which has been infringed while in the latter case the plaintiff has to prove the reputation of his goods and prove further that the reputation has been assailed. A plaintiff may fail to make out a case of infringement of a trade mark because he cannot prove its registration or that its registration extends to the Roods or to all of the goods in question or because the registration is invalid and may yet show that by imitating the mark claimed as a trade mark or otherwise the defendant has done what is calculated to pass off his goods as those of the plaintiff. A case of passing off is generally added as a second string to an action for infringement and is often successful where the claim for infringement fails. The causes of action for infringement and passing off are separate and distinct and one of them may fail while the other may succeed on the same evidence. Where two causes of action are combined and the defendant seeks to invoke the provisions of sec. 111 the Court has the power to and must stay the suit so far as it relates to infringement to trade mark". It is further observed that though such a suit may be filed for both the causes the legislature does not give to the Court the power to stay a suit for passing off. At the same time the legislature says that when rectification proceedings are pending it is the duty of the Court to stay the suit for infringement in order that conflicting decisions may be eschewed and that the Court must dispose on the suit in conformity with the final order in the rectification proceeding in so far as the suit relates to the validity of the registration. The Calcutta High Court considered that in the eventuality as the legislature has given a mandate to stay the suit for infringement the Court trying the suit must wait for the result of the rectification proceedings before it passes any final order or decree involving the validity of the registration and this would result in a suit requiring to be tried piecemeal. But the Court considered that having regard to the mandatory provisions of sec. 111 of the Act there was no other alternative. But the Court considered that having regard to the mandatory provisions of sec. 111 of the Act there was no other alternative. The argument advanced on behalf of the petitioner in that case that in such a case the whole suit be stayed was not accepted. This was pot accepted op the provisions of sec. 111 of the Act which specifically refer to a suit for the infringement of a trade-mark; In view of the aforesaid decision of the Calcutta High Court it was submitted by Mr. Desai that the trial Court has committed an error in staying the whole suit. It should be noted that the final order passed by the Calcutta High Court is merely of the effect:"in the premises there will be an order that pending the hearing and final disposal of application. . . . . . to the Registrar of Trade Marks. . . the suit and all proceedings therein be stayed so far as the suit relates to the alleged infringement of the plaintiffs trade mark". No further final order has been given pertaining to the proceeding of the suit about passing off though in the body of the judgment in para 9 it has been mentioned that the Legislature does not give to the Court the power to stay a suit for passing off. It seems probably the suit was pending before the High Court itself because that is not an application revision or appeal or any further proceedings and the order seems to have been passed in Suit no. 1283 of 1964 itself. Therefore there was no order before the Calcutta High Court which was attempted to be challenged in revision. But I for myself feel that the passing observations of the Calcutta High Court that the entire suit shall not be stayed is not in consonance with the spirit of sec. 111 of the Act. Though sec. 111 of the Act speaks of the suit for infringement of of a trade mark the wording starts Where in any suit for the infringement of a trade mark. Therefore it clearly mentions that in order to attract the provisions for the stay the suit must necessarily be a suit for infringement of a trade mark and not that it should exclusively be a suit for infringement of trade mark. Therefore it clearly mentions that in order to attract the provisions for the stay the suit must necessarily be a suit for infringement of a trade mark and not that it should exclusively be a suit for infringement of trade mark. If the suit is for infringement of trade mark as well as for passing of then the eventualities mentioned in sec. 111 of the Act are brought to the notice of the Court and the suit is to be stayed under the provisions of that section. ( 47 ) IN Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 Supreme Court 1649 the Supreme Court considered the point of distinction between passing off action and action for infringement of trade-mark. In para 4 the Supreme Court considered the distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In the passing off action the issue is as follows:" Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs goods"? ( 48 ) BUT in an infringement action the issue is as follows:"is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiffs registered trade mark?". But while considering this aspect the Supreme Court considered that in an action for infringement where the defendants trade mark is identical with the plaintiffs mark the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register but something similar to it the test of infringement is the same as in an action for passing off. This I am observing because in a suit which is a combination of action for infringement as well as passing off quite often evidence led will be identical and Court shall have to consider identical questions while coming to the conclusion whether there is passing off on the strength of infringement. This I am observing because in a suit which is a combination of action for infringement as well as passing off quite often evidence led will be identical and Court shall have to consider identical questions while coming to the conclusion whether there is passing off on the strength of infringement. Once the decision of infringement is arrived at in the rectification proceedings the Court will have its task smoothened because it given merely be required to consider whether now there is colourable imitation and passing off and has nothing to do with the registered trade mark but the intention of the defendant was so designed or calculated as to lead the purchasers to believe that they are the plain this goods. In even if the decision in the rectification proceedings is in favour or against the defendant the question of intention to lead the purchasers to believe that they are the plaintiffs goods will remain. But once it is proved that there is infringement it can certainly be said that the proprietary right of the plaintiff to use the trade mark is infringed and that will be an added ground to come to the conclusion that the plaintiff had the trade mark and if any colourable imitation with the said trade mark is done with a view to passing off then the defendant shall be answerable and therefore when a suit is filed for both the actions proper course will be to stay the whole suit so that there may not be a cause for repeating the evidence which was led on the point of passing off. ( 49 ) IN Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 Supreme Court 980 the Supreme Court had an occasion to consider the action for passing off and action for infringement under sec. 21 of the Trade Marks Act 1940 The Supreme Court observed:"an action for passing off is a Common Law remedy being in substance an action for deceit that is a passing off by a person of his own goods as those of another. But that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. But that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off but is the sine qua non in the case of an action for infringement. No doubt where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark". Therefore the Supreme Court considered two different actions for infrinegement of trade mark and passing off and appreciated as to what would be the requirements to prove that case. In para 29 it has been observed:"when once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be in the course of trade the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise: for then the infringement is made out. When the two marks are identical the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered". Therefore an Inquiry will have to be made by the Court into the identity of the trade mark and also about passing off by colourable imitation and therefore if evidence is led till now and completed by the plaintiff can it be said that at this stage this Court should exercise its jurisdiction under sec. 115 of the Code of Civil Procedure to due the order of the learned trial Judge as having jurisdictional error? ( 50 ) IN M. L. Sethi v. R. P. Kapur AIR 1972 Supreme Court 2379 the Supreme Court bad an occasion to consider the provisions of sec. 115 of the Code of Civil Procedure to due the order of the learned trial Judge as having jurisdictional error? ( 50 ) IN M. L. Sethi v. R. P. Kapur AIR 1972 Supreme Court 2379 the Supreme Court bad an occasion to consider the provisions of sec. 115 of the Code of Civil Procedure in exercise of revisional powers of the High Court. It has been observed:"sec. 115 empowers the High Court to satisfy itself on three matters: (a) that the order of the subordinate Court is within its jurisdiction ; (b)that the case is one in which the Court ought to exercise jurisdiction); and (c) that in exercising jurisdiction the Court has not acted illegally that is in breach of some provisions of law or with material irregularity by committing some error of procedure in the course of the trial which is material in that it may have affected the ultimate decision. "it is further observed therein:". . . A distinction must be drawn between the errors committed by subordinate courts in deciding questions of law which have relation to or are concerned with questions of jurisdiction of law of the said Court and errors of law which have no such relation or connection. An erroneous decision on a question of law reached by the subordinate Court which has no relation to questions of jurisdictions of that Court. cannot be corrected by the High Court under sec. 115". It cannot be said that the trial Court had no jurisdiction to stay the suit. The trial Court has exercised jurisdiction. Question is only whether the trial Court has properly exercised the jurisdiction in staying the entire suit. In order to show that this is not correct exercise of jurisdiction reliance is placed on the decision of the Calcutta High Court referred to earlier. But it should be noted that before the Calcutta High Court itself the matter was pending while here the question of exercise of jurisdiction of this Court under sec. 115 and even though it can be said that it will be an error of law it would not be tagged with absence of jurisdiction to pass such an order and therefore I do not think that on that count also the order of the trial Court requires to be interfered with. 115 and even though it can be said that it will be an error of law it would not be tagged with absence of jurisdiction to pass such an order and therefore I do not think that on that count also the order of the trial Court requires to be interfered with. ( 51 ) I am conscious of the fact that while considering the question of tenability of revision I have considered that the points raised in the revision petition are the points concerning jurisdiction of the District Court. But after having examined the points and contentions raised before me I think that though points raised in the revision petition were arguable under sec. 115 of the Code of Civil Procedure ultimate relief claimed to interfere in the discretion exercised by the trial Court would not be available to his Court while exercising powers under sec. 115. ( 52 ) IN view of all the discussions made above I think that the revision petition must fail It is therefore dismissed. Rule is discharged. Looking to the contentions raised and the nature of the dispute involved there shall be no order as to costs. Application dismissed .