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2012 DIGILAW 1576 (PNJ)

P. Ram Chand and Company v. Prem Sagar

2012-11-05

A.N.JINDAL

body2012
JUDGMENT A.N. JINDAL, J. When Civil Suit No. 30 dated 13.11.2006 for permanent injunction was nearing culmination, the petitioner/plaintiff—M/s P. Ram Chand & Company (hereinafter referred as 'the petitioner') filed an application under Section 124 of the Trades Mark Act, 1999 (for brevity 'the Act') on 20.5.2010 for staying proceedings in the civil suit to enable the petitioner to file rectification application before the Intellectual Property Appellate Board at Chennai, so as to challenge the validity of trade mark “Spartan Sports and Wears” registered in favour of the respondent. The factual background of the case is that the petitioner had filed a suit for permanent injunction restraining the respondent from infringing the registered trade mark “SPARTAN” registered in its favour in any context on the sporting goods manufactured by the respondent and on the stationery being used by the respondent in connection with his business and from using the word “SPARTAN” in any manner. The suit was contested by the defendant. When the case was fixed for defendant's evidence for 3.6.2008, an application was filed by the defendant under Section 124 of the Act. He had also filed an application under Section 8 of the Arbitration and Conciliation Act, 1996, which was dismissed as withdrawn on 12.6.2008. However, on the application under Section 124 of the Act, the trial court stayed the proceedings in order to enable the parties to go for rectification. Both the applications filed by the defendant (i.e. on 24.8.2007 and 25.9.2007) were dismissed by the Board on 29.3.2009. Then in a petition filed by the` plaintiff/petitioner,` this Court ordered that the trial court could proceed to decide the case finally. The order dated 29.10.2009 reads as under:- “The counsel for the appellant has submitted that the trial court stayed the` suit` on` the` ground` that` an` application` for rectification was pending before the Intellectual Property Appellate Board, Chennai. He has further submitted that the application for rectification has already been dismissed and now the case is to be finally decided by the trial court. He has further submitted that he does not press this petition. He has further submitted that the petition be disposed of accordingly. The petition is accordingly disposed of with the direction that the suit shall stand revived. The court of District Judge, is directed to proceed further, in accordance with the provisions of law. He has further submitted that he does not press this petition. He has further submitted that the petition be disposed of accordingly. The petition is accordingly disposed of with the direction that the suit shall stand revived. The court of District Judge, is directed to proceed further, in accordance with the provisions of law. The parties are directed to appear in the trial court on 19.11.2009.” After undergoing the aforesaid exercise, the petitioner without disclosing before the High Court that he still wanted to go to the Appellate Board for Rectification, again moved this application under Section 124 of the Act on 20.5.2010 for staying the proceedings pending rectification of the registration of the trade mark “Spartan Sport and Wears” got registered by the plaintiff under application No. 1555083 dated 3.5.2007 i.e. during the pendency of the suit. Reply to the application was filed, wherein it was submitted that the application was not maintainable because the respondent/defendant had neither pleaded in his written statement that the registration of the defendant's trade mark is invalid nor he had raised such defence in his plaint that the use of said trade mark, being one of the two or more trade marks registered under the Act, which are identical or nearby resemble each other in exercise of the right to the use of that trade mark given by the registration authority under this Act, was infringed. The petitioner has not pleaded in his plaint or replication about the invalidity of the registration of the defendant's trade mark, therefore, the application was bound to be dismissed. The application has been filed malafidely simply to wriggle out from the statement of the plaintiff during his cross-examination. The said application was dismissed. Heard. While going through the provisions of the Act, it transpires that as per Section 32 (2) (a), the plaintiff has to plead invalidity of the registration of the trade mark before filling such application and the court tying suit shall:- i. if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings; ii. if any such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's 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 Appellate Board for rectification of the register. In the case in hand, the petitioner did not raise any plea with regard to the invalidity of the registration of the defendant's trade mark. The plaintiff has not got amended his plaint to challenge the validity of the trade mark, as set up by the defendant. The pleadings set up by the petitioners are not in consonance with the provisions of Section 124 of the Act, therefore, such application is not maintainable. It is also pertinent to mention here that no such application for rectification has been filed prior to 25.5.2010.i.e. prior to the filing of the application and even thereafter. It is also noteworthy that the petitioner did not contest before the Appellate Board, for a pretty long time and failed to establish, if the trade mark as used by the defendant was invalid. The plaintiff appears to have filed the present application just to prolong the proceedings. The petitioner's trade mark 'SPARTAN' is quite distinctive from the trade mark used by the defendant as 'Spartan Sports and Wears”, got registered vide application No. 1555083 dated 3.5.2007. The Appellate Board has already left the parties to get the matter decided from the civil court. The observations made by the Appellate Board are as under:- “...However, the trial court-District Judge, Jalandhar has granted injunction order restraining the defendant (the applicant herein) from infringing the registered trade mark “Spartan” with the view that the defendant is left with no right or title or interest as per the dissolution deed as well as the agreement deed. The Hon'ble High Court of Punjab & Haryana while staying the suit until disposal of the rectification application, has observed that the order of injunction granted by the trial court shall continue. In such case, it would be necessary to look into the validity of the agreement and the dissolution deed. The Hon'ble High Court of Punjab & Haryana while staying the suit until disposal of the rectification application, has observed that the order of injunction granted by the trial court shall continue. In such case, it would be necessary to look into the validity of the agreement and the dissolution deed. When that be so, we are of the opinion that this Appellate Board has no jurisdiction to interpret and determine whether the terms were acted upon or not as such jurisdiction lies only with the civil court.” Thus, on account of the aforesaid discussion, nothing is left unambiguous and the order passed by the trial court is quite clear and well reasoned. I have also been apprised that the case is fixed for final argument. Thus, the present application being devoid of any merit is dismissed.