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2014 DIGILAW 166 (BOM)

Cipla Limited v. Cipla Industries Pvt. Ltd.

2014-01-23

S.J.KATHAWALLA

body2014
Judgment : P.C. 1. The Plaintiff has in the above Notice of Motion prayed that pending the hearing and final disposal of the Rectification Application No.ORA/243/2013/TM/DEL, the trial of the above Suit be stayed. The present Notice of Motion is taken out by the Plaintiff under Section 124 of the Trade Marks Act, 1999 (“the Act”), seeking stay of the trial of the above Suit in respect of infringement of trade mark pending the hearing and final disposal of the Rectification Application No.ORA/243/2013/TM/DEL. 2. According to the Plaintiff, its mark “CIPLA” and/or other marks derived from “CIPLA” are well known marks within the meaning of Section 11 of the Act. The Defendants are using the impugned mark namely 'CIPLA PLAST' which is identical and/or deceptively similar to the Plaintiff's mark “CIPLA”. According to the Plaintiff, the Defendants have been wrongly granted registration in respect of the mark 'CIPLA PLAST' on 28-01-2006. The impugned mark 'CIPLA PLAST' is therefore, liable to be removed/cancelled. The Plaintiff has already filed proceedings on 23-04-2012, seeking rectification of the Defendant No.2's mark bearing No.846772. Therefore, the trial of the Suit in respect of the infringement is required to be stayed till the final disposal of the rectification proceedings. 3. The learned Advocate for the Defendants has submitted that the only objection of the Defendants in the present matter is that the Plaintiff has not pleaded invalidity of the registration of the Defendants' trade mark 'CIPLA PLAST' in the plaint. 4. In response, the learned Advocate for the Plaintiff has denied and disputed the contention raised on behalf of the Defendants. It is submitted on behalf of the Plaintiff that a specific plea was taken in the plaint that the Plaintiff was aggrieved by the registration of the impugned mark 'CIPLA PLAST', and that the Plaintiff would take appropriate steps for its removal from the Register. In any event, the affidavit in support of the present Notice of Motion, apart from reiterating the contents of the Plaint, also specifically sets out that the impugned registration was wrongfully granted and that the same is liable to be removed/rectified. Relying on the dictionary meaning of the word 'Plead', it is submitted on behalf of the Plaintiff that the word 'Plead' ought to mean and include any contention and/or defense and/or plea raised even by way of a Petition or Affidavit etc., and cannot be given a restrictive meaning. Relying on the dictionary meaning of the word 'Plead', it is submitted on behalf of the Plaintiff that the word 'Plead' ought to mean and include any contention and/or defense and/or plea raised even by way of a Petition or Affidavit etc., and cannot be given a restrictive meaning. It is submitted that, the fact that the word 'plead' cannot mean only the plaint/written statement is also apparent as the word 'plead' is also found in Section 113 of the Act, which relates to criminal offences. The word 'plead' is also used in Articles 124(7) and 220 of the Constitution of India, where it is used in the manner as understood in common parlance and in no way whatsoever relates to a plaint and/or written statement. 5. It is further submitted on behalf of the Plaintiff that in a given case, the Plaintiff may be unaware of the registration of the Defendants' mark and as such the plaint will have no pleading whatsoever in that regard. On being confronted with the Defendants' registration, it would always be open to the Plaintiff to raise the plea of invalidity by way of an Affidavit or otherwise seeking stay of the suit in respect of the infringement, so that appropriate proceeding could be filed before the Intellectual Property Appellate Board (IPAB), despite the Plaint having no pleading in this regard. Any other interpretation will have completely catastrophic implications. In support of the contention that the word 'plead' cannot be confined to averments made in the Plaint and/or written statement, the Plaintiff has relied on the decision of the Hon'ble Calcutta High Court in the case of Formica International Ltd. V/s. Caprihans (India) Pvt. Ltd. ( AIR 1966 (Cal) 247 )which decision is noted by the Hon'ble Andhra Pradesh High Court in the case of Mohd. Zaheeruddin and Ors. V/s. Mhd. Yusufuddin Mansoor and Anr. ( 2004 (3) ALD 534 ).It is further submitted on behalf of the Plaintiff that if a restrictive meaning is given to the word 'plead' in Section 124 of the Act, as canvassed by the Defendants, Section 124(5) of the Act shall be rendered otiose. It is submitted that the head note and the opening words of Section 124 are also supportive of this view. It is submitted that it is also imperative to note that the head note uses the word “questioned” etc. and not “pleaded”. It is submitted that the head note and the opening words of Section 124 are also supportive of this view. It is submitted that it is also imperative to note that the head note uses the word “questioned” etc. and not “pleaded”. This shows that the word 'plead' as used in Section 124(1)(b) cannot be restricted to plaint or written statement alone. It is further submitted on behalf of the Plaintiff that Section 125 of the Act also makes it clear the word 'plead' used in Section 124(1) (b) of the Act must not be construed to mean only plaint/written statement. 6. It is therefore, submitted on behalf of the Plaintiff that the plea regarding invalidity of the impugned mark 'CIPLA PLAST' is squarely raised and is prima facie tenable within the meaning of Section 124 of the Act. The present Suit in respect of infringement of the trade mark is therefore, liable to be stayed pending the proceedings for rectification filed by the Plaintiff against the impugned mark. 7. The learned Advocate for the Defendants, has in response to the above submissions made on behalf of the Plaintiff, further submitted that the mere statement that the Plaintiff would take appropriate steps for removal of the Defendants' registration is clearly not good enough. This is because an Application for the rectification of the Register need not only be on account of invalidity of registration. A Register may be required to be rectified also on account of other factors such as a trademark not being in use and/or having otherwise become publicijuris. Hence, pleadings in the plaint do not satisfy the requirement of Section 124(1) (b) of the Act, which requires the Plaintiff to plead invalidity of the Defendants' registration. It is further submitted that the argument that the Affidavit in support of the Notice of Motion filed by the Plaintiff satisfies the requirement of Section 124(1)(b) of the Act, is misconceived. The Affidavit in support of the Notice of Motion does not amount to a pleading, which under Order 6 Rule 1 of Civil Procedure Code, 1908 (“CPC”) can only be the Plaint or the Written Statement. It is reiterated that Section 124 of the Act is a power exercisable in relation to suits and therefore, by the Civil Court. The Affidavit in support of the Notice of Motion does not amount to a pleading, which under Order 6 Rule 1 of Civil Procedure Code, 1908 (“CPC”) can only be the Plaint or the Written Statement. It is reiterated that Section 124 of the Act is a power exercisable in relation to suits and therefore, by the Civil Court. Hence, necessarily the word 'pleads' is liable to be constructed in terms of the CPC which prescribes the procedure to enable the Plaintiff to plead. Hence, the word 'pleads' in Section 124 of the Act necessarily refers to a pleading in terms of the CPC. It is submitted that Section 113 of the Act relates to criminal proceedings under the Act and therefore cannot be a tool for interpreting Section 124 of the Act. It is further submitted that it is a settled cannon of construction and interpretation of statutes that meanings assigned under one Act and/or statute ought not to be applied to another. Further, the meaning under the CPC is more apposite than the Constitution. Hence, on either counts, the Plaintiff's reliance on these provisions is misplaced and misconceived. It is also submitted that if the Plaintiff does not know of the Defendants’ registration and has noticed the same thereafter, only through the Defendants' reply and/or written statement, Section 124 of the Act requires it to amend the Plaint and plead invalidity of the Defendants' registration. 8. As regards the Plaintiff's reliance on the decisions of the Calcutta High Court as well as the Andhra Pradesh High Court, it is submitted on behalf of the Defendants that both the said judgments are distinguishable and are not liable to be followed as judicial precedents. It is submitted that both these judgments do not comment on the provision of Order 19 of CPC, which distinguishes an Affidavit visavis a Pleading under Order 6 Rule 1 of the CPC. It is submitted that therefore, both the decisions are per incuriam and are not liable to be followed as precedents. Again under the Calcutta High Court Rules, the pleadings include Petitions, statements of facts and counter statement of facts. Such a rule is not found in the Bombay High Court Rules. It is submitted that all that the Plaintiff is required to do is to amend the Plaint and plead invalidity of the Defendants' mark. Again under the Calcutta High Court Rules, the pleadings include Petitions, statements of facts and counter statement of facts. Such a rule is not found in the Bombay High Court Rules. It is submitted that all that the Plaintiff is required to do is to amend the Plaint and plead invalidity of the Defendants' mark. It is further submitted that the question of acceptance of the Defendants' interpretation leading to catastrophic implications and/or multiplicity of proceedings does not arise. It is submitted that in any event, the non-existent factors of multiplicity of proceedings or catastrophic results cannot be the basis to dilute the statutory requirement which obliges the Plaintiff to plead its case of invalidity of the Defendants' registration. It is therefore, submitted that the Notice of Motion deserves to be dismissed. 9. I have considered the submissions advanced by the learned Advocates for the Parties and the case laws relied upon by the Advocates for the Plaintiffs. Section 124 of the Act, reads as under: “124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. 9. I have considered the submissions advanced by the learned Advocates for the Parties and the case laws relied upon by the Advocates for the Plaintiffs. Section 124 of the Act, reads as under: “124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. : (1) Where in any suit for infringement of a trade mark – (a) the defendant pleads that registration of the Plaintiff's trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the Plaintiff pleads the invalidity of registration of the defendant's 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 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 no 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; (2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings; (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case; (4) The final order made in any rectification proceedings referred to in sub-section (1) or subsection (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark; (5) The stay of a suit for the infringement of a trade mark under this Section shall not preclude the Court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.” 10. The present Suit is filed by the Plaintiff urging that the Defendants are infringing the Plaintiff's registered trade mark. The Defendants have raised their defense under clause (e) of sub-section (2) of Section 30 of the Act. The Plaintiff has urged in the Plaint that the impugned registration of 'CIPLA PLAST' used by the Defendants is of no consequence in so far as the Plaintiffs present action is concerned. This is so because the mark 'CIPLA' and/or other marks derived therefrom are 'well known marks' within the meaning of the Act and as such a case for infringement is made out under Section 29(4) of the Act. Without prejudice thereto, the Plaintiff has further averred in the Plaint that the Defendants are not entitled to rely upon the infringed registration, as the same was not being used in relation to goods for which the same was granted. Though, it is true that the Plaintiff has in the Plaint not used the word 'invalid' qua the impugned registration of the Defendants, the Plaintiff has further specifically averred that in any event, the Plaintiff was going to take appropriate steps with regard to the removal of the impugned registration before the appropriate forum. Thus a specific plea was taken in the Plaint that the Plaintiff was aggrieved with the registration of the impugned mark and that the Plaintiff would take appropriate steps for its removal from the Register. The Plaintiff has specifically averred in the Plaint that the impugned mark is in use. Again from the facts of the case, it is clear that the question of the Plaintiff contending that the Defendants' impugned mark has become publicijuris, would not arise. It is therefore, clear from the averments in the Plaint that the Plaintiff was desirous of taking appropriate steps for removal of the Defendants' impugned mark from the Register on the ground that the registration of the impugned mark was invalid. In fact, prior to the present Application, the Plaintiff has already filed a rectification application before the IPAB challenging the validity of the registration of the Defendants' impugned mark. The Defendants have not objected to the filing of the same before filing of the present application, but has seriously contended that the Plaintiff should amend the Plaint and categorically aver therein that the registration of the Defendants' impugned mark is not valid or is invalid. The Defendants have not objected to the filing of the same before filing of the present application, but has seriously contended that the Plaintiff should amend the Plaint and categorically aver therein that the registration of the Defendants' impugned mark is not valid or is invalid. In the circumstances, in my view, it would not be appropriate to direct the Plaintiff to first amend the Plaint and aver therein that the registration of the Defendants' impugned mark is not valid or is invalid and thereafter, proceed with the present Application. 11. In any event, the Plaintiff has filed the Affidavit in support of the above Notice of Motion, wherein the Plaintiff has apart from reiterating the contents of the Plaint, also specifically set out in paragraph 5 of the same as follows : (i) the impugned registration has been wrongfully granted as the use of the same is likely to cause confusion and/or deception. (ii) the impugned registration was wrongfully obtained by making an untrue statement of proprietorship in respect of the impugned mark. (iii) the impugned mark is wrongfully remaining on the Register. (iv) the Plaintiff seeks to rectify the Register and challenge the validity of the impugned mark also on various other grounds including on account of lack of distinctiveness and/or lack of bona fide. (v) that the registration and the consequent use of the impugned mark has already caused confusion and/or deception. I am therefore, in agreement with the Plaintiff that there is ample and more pleading in the Plaint and/or Affidavit in support of the Notice of Motion in respect of the invalidity of the impugned mark and as such the same is required to be considered on merits. 12. Even otherwise, I am not in agreement with the contention of the Defendants' that the word “pleads” in Section 124 of the Act, necessarily refers to a pleading in terms of the CPC. The word used in Section 124(1) (b) is 'pleads' and not 'pleading' and cannot relate only to pleading under Order 6 Rule 1 of the Code of Civil Procedure. The word 'pleads' is required to be given its normal meaning. Black's Law Dictionary defines the word 'plead' as “to make a specific plea, esp. in response to a criminal charge” or “to assert or allege in a pleading” or “to file or deliver a pleading” (BlacksLaw Dictionary, Ninth Edition, Bryan A Garner). The word 'pleads' is required to be given its normal meaning. Black's Law Dictionary defines the word 'plead' as “to make a specific plea, esp. in response to a criminal charge” or “to assert or allege in a pleading” or “to file or deliver a pleading” (BlacksLaw Dictionary, Ninth Edition, Bryan A Garner). According to the Oxford English Dictionary, the expression 'plead' means “make an earnest appeal to” or “address court as Advocate or party” or “declare oneself to be guilty or not guilty of a charge” or “make appeal or entreaty” (Oxford Dictionary & Thesaurus, Julia Elliott). Therefore, 'pleads' ought to mean and include any contention and/or defense and/or plea raised even by way of a petition or affidavit etc., and cannot be given a restrictive meaning. 13. On a bare reading of the Section it is clear that “pleads” as used in 124 (1) (b) cannot mean plaint/written statement. Firstly, 124(1) (b) of the Act uses the words “the Defendant raises a defence under......” and not “the Defendant pleads as defence.....”. The defence/plea by the Defendants can thus be raised by way of an Affidavit and/or other application and does not have to be by way of a written statement alone. Secondly, 124(1) (b) of the Act contemplates a situation where, “the Defendant raises a defence under clause (e) of Sub-section (2) of Section 30 and the Plaintiff pleads the invalidity of the registration of the Defendant's trade mark”. As correctly submitted on behalf of the Plaintiff that the acts of raising a defence by the Defendants and subsequent challenge to the validity of the Defendants' mark by the Plaintiff are sequential i.e. the challenge contemplated is one which is raised after the filing of the Plaint and as such 'plead' as used can never mean the plaint at all since it contemplates the plea being raised subsequent to the filing of the plaint. In a given case, the Plaintiff may be unaware of the registration of the Defendants' mark and as such the plaint will have no pleading whatsoever in that regard. In a given case, the Plaintiff may be unaware of the registration of the Defendants' mark and as such the plaint will have no pleading whatsoever in that regard. On being confronted with the Defendants’ registration, it would always be open to the Plaintiff to raise the plea of invalidity by way of an Affidavit or otherwise seeking stay of the Suit in respect of infringement so that appropriate proceedings may be filed before the IPAB, despite the plaint having no pleading in this regard. 14. If a restricted meaning is given to the word 'plead' in Section 124 of the Act, as canvassed by the Defendants, Section 124(5) of the Act, shall be rendered otiose. The orders contemplated by sub-section 5 of Section 124 of the Act are usually made before the trial of an action in interlocutory proceedings. The head note and the opening words of Section 124 of the Act are also supportive of this view. Accordingly, the interlocutory application for stay of the Suit is not premature and the question of the Defendants filing a written statement does not arise. Therefore, 'pleads' in Section 124 (1) (b) of the Act cannot mean only the plaint/written statement. It is also imperative to note that the head notes use the word “questioned, etc.” and not “pleaded”. This gives an insight into the fact that plead as used in Section 124(1) (b) of the Act cannot be restricted to plaint or written statement alone. 15. Section 125 of the Act also makes it clear that the word 'plead' used in Section 124(1) (b) of the Act must not be construed to mean only plaint/written statement. Section 125 of the Act, reads as under: “125. 15. Section 125 of the Act also makes it clear that the word 'plead' used in Section 124(1) (b) of the Act must not be construed to mean only plaint/written statement. Section 125 of the Act, reads as under: “125. Application for rectification of register to be made to Appellate Board in certain cases : (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the Plaintiff's trade mark is questioned by the Defendant where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the Plaintiff questions the validity of the registration of the Defendant's 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 Section 47 or Section 57, such application shall be made to the Appellate Board and not to the Registrar. (2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under Section 47 or Section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings of the Appellate Board.” (Emphasis supplied) Section 125, inter alia, states that where in a suit for infringement of a registered trade mark, the Defendants raise a defense under clause (e) of sub-section 2 of Section 30 and the plaintiff 'questions' the validity of the registration of the Defendants’ trade mark, the issue as to the validity of the registration shall be determined only on the Application for rectification made to the Appellate Board and not the Registrar. The language of Section 125 is identical to Section 124, save and except that instead of the word 'pleads' as used in Section 124, Section 125 uses the words 'questions' which also shows that “pleads” in 124(1) (b) of the Act cannot be given a restricted meaning. 16. The contention of the Defendants is also otherwise contrary to the scheme of the Act. Section 124 of the Act is enacted to avoid multiplicity of proceedings. It is specifically averred in the Written Statement that the Plaintiff must approach the IPAB seeking rectification of the impugned mark. 16. The contention of the Defendants is also otherwise contrary to the scheme of the Act. Section 124 of the Act is enacted to avoid multiplicity of proceedings. It is specifically averred in the Written Statement that the Plaintiff must approach the IPAB seeking rectification of the impugned mark. Having specifically pleaded the same, the Defendants cannot now oppose the stay of the Suit in respect of infringement. If the contentions of the Defendants were accepted, it would only mean that there is multiplicity of proceedings. Moreover, this Court does not have the power to finally adjudicate upon the validity and /or invalidity of a registered trade mark. S. 124(4) of the Act expressly states that the final order made in any rectification proceedings referred to in sub section (1) (or) sub-section (2) shall be binding upon the parties and the court shall dispose of the suit in conformity with such order, in so far as it relates to the issues as to the validity of the registration of the trade mark. It would run against the scheme of the Act to continue with the trial of the suit in respect of infringement as no final finding can be rendered by this Court in this regard, in the absence of adjudication by the IPAB of the Plaintiff's Application seeking rectification of the impugned mark. Further, an anomalous situation would arise if this Court were to dismiss the Plaintiff's Suit in respect of infringement by relying upon the impugned registration, and shortly thereafter the impugned registration should be cancelled and / or removed by the IPAB on the Plaintiff's Application for rectification. 17. The interpretation of the word 'pleads' in Section 111 of the Trade Marks Act, 1958, which is analogous to Section 124 of the Act squarely fell for determination in the case of Formica International Ltd. with Caprihans (India) Pvt. Ltd. In the said case, the Hon'ble Calcutta Court, inter alia observed: “4. The first contention of Mr. Sankar Banerji, learned counsel for the respondent is that this application is premature. It is urged that only “the Court trying the suit” shall stay the suit pending the final disposal of the proceedings before the Registrar. In other words, a suit cannot be stayed on an interlocutory application under Section 111 of the Trade and Merchandise Marks Act, 1958. I am unable to accept this contention. It is urged that only “the Court trying the suit” shall stay the suit pending the final disposal of the proceedings before the Registrar. In other words, a suit cannot be stayed on an interlocutory application under Section 111 of the Trade and Merchandise Marks Act, 1958. I am unable to accept this contention. The section says that where in a suit for the infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark is invalid, the Court trying the suit shall stay the suit if any proceedings for rectification of the register are pending. Now, Order 6 Rule 1 of the Code of Civil Procedure defines “pleadings”. It means a plaint or written statement; but the word “pleads” has not been defined in this rule. In section 111 unless the word “pleads” means “pleads” in any document the defendant has to wait till his written statement has been filed; discovery and inspection are completed; and the actual trial of the suit begins. The section seeks to prevent parallel enquires in the same matter and as such in my view 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 plaintiff's 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 dictionary meaning of the word “plead” is “address Court as Advocate or party, maintain (cause) in Court; allege as plea or excuse, give as answer to charge, make earnest appeal or entreaty”. In Chapter VII Rule 8 of the Criminal Side Rules of this Court which deals with verification by a person other than the party pleading it is, inter alia, stated : “Pleadings shall include plaints, written statements, petitions, statement of facts and counterstatement of facts.” These are only indications that the word “pleads” can be and is given an extended meaning and is not necessarily confined to averments made in plaints and written statements”. 18. 18. In the circumstances, the contention of the Defendants that since action under Section 124 of the Act, applies to civil proceedings arising under the Act and as such application/proceedings therein, are procedurally governed by the Code of Civil Procedure, 1908, the Plaintiff is obliged to plead invalidity of the Defendants' registration in terms of the CPC, cannot be accepted. In view thereof, the submissions made on behalf of the Defendants that the decision of the Calcutta High Court in the case of Formica (Supra), as well as the decision of the Andhra Pradesh High Court, which notes the decision of the Calcutta High Court, are per incurim, and not liable to be followed as precedents, also cannot be accepted. In the circumstances, the above Notice of Motion is allowed in terms of prayer clause (a). The Notice of Motion is accordingly disposed of.