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2016 DIGILAW 1202 (RAJ)

Khandelwal Dhaba v. Khandelwal Dhaba

2016-08-22

VEERENDR SINGH SIRADHANA

body2016
JUDGMENT : Veerender Singh Siradhana, J. 1. Aggrieved of the order dated 8th October, 2012, the petitioner has instituted the instant writ application, praying for the following reliefs: "a. To issue an appropriate writ, order or direction, quashing the impugned order dated 8th October, 2012 (Annexure-13) and directed to the learned trial court to stay the proceedings of the suit till the disposal of the application for registrations of trade mark of both the parties is pending before the Registrar, Trade Mark. b. Any other appropriate order which this Hon'ble Court deems fit in favour of the petitioner, may also be passed in favour of petitioner 2. Briefly, the essential skeletal material facts necessary for appreciation of the controversy are that petitioner-defendant while resisting the claim of the plaintiff-respondent who is allegedly using the trade mark of "M/s. Khandelwal Dhaba" prayed for stay of the proceedings before the court below in suit No. 24/2010, pending before the court of Additional District Judge (Fast Track No. 6), Jaipur City, Jaipur. The petitioner's application instituted under Section 124 of the Trade Marks Act, 1999 (for short, 'the Act of 1999'), has been declined by order dated 8th October, 2012. It is pleaded case of the petitioner that both the partied to the suit proceedings have also preferred applications before the Registrar, Trade Marks, in view of contemplation under Section 27 (2) of the Act of 1999. 3. Learned counsel for the petitioner, reiterating the pleaded facts and grounds of the writ application, vehemently argued that the order made by the court below dated 8th October 2012, declining the application of the petitioner, preferred under Section 124 of the Act of 1999, suffers with gross illegality for the proceeding on the suit instituted by the plaintiff-respondent ought to have been stayed in view of pendency of the proceedings on the same issue for registration of the trade mark "M/s. Khandelwal Dhaba" before the Registrar, Trade Marks. In support of his submissions, he has relied upon the opinion of the Supreme Court in the case of Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. and Ors. (2001) 5 SCC 95 . 4. I have heard the learned counsel for the petitioner and with his assistance perused the materials available on record as well as gave my earnest consideration to the submissions at Bar. 5. (2001) 5 SCC 95 . 4. I have heard the learned counsel for the petitioner and with his assistance perused the materials available on record as well as gave my earnest consideration to the submissions at Bar. 5. Indisputably, the petitioner-defendant is contesting the user of the trade mark "M/s. Khandelwal Dhaba", in a Suit instituted by the plaintiff-respondent on the ground of passing off, as contemplated under Section 27(2) of the Act of 1999. It is also not disputed that both the parties are necessitating for registration of trade mark "M/s. Khandelwal Dhaba" before the Registrar Trade Marks. 6. At this juncture, it will be relevant to consider the text of Section 124 of the Act of 1991, which reads thus: Section 124 in The Trade Marks Act, 1999 124. Stay of Proceedings where the validity of registration of 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 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 register. (2) If the party concerned proves to the court the 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 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 sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not prelude the court from making any interlocutory order (including any order granting an injunction direction account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit." 7. A glance of Section 124 of the Act of 1991, would reflect that the proceedings may be considered for stay where the validity of registration of the trade mark is questioned. Admittedly, in the instant case at hand, there is no registration of the trade Mark "M/s. Khandelwal Dhaba" either in the name of the petitioner-defendant or the plaintiff-respondent for the matter is pending consideration before the Registrar, Trade Marks. Therefore, the application preferred under Section 124 of the Act of 1999, has been rightly declined by the court below. Moreover, in the case of Uniply Industries Ltd. (supra), the Supreme Court taking note of somewhat similar circumstance, held thus: "8. Some courts indicate that even prior small sales of goods with the mark are Sufficient to establish priority. The test being of determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark. Bona fide test of marketing, promotional gifts and experimental sales in small volume may be sufficient to establish a continuous prior use of the mark. But on some other occasions courts have classified small sales volume as so small and inconsequential for priority purposes. Therefore, theses facts will have to be thrashed out at the trial and at the stage of grant of temporary injection a strong Prima facie case will have to be established. But on some other occasions courts have classified small sales volume as so small and inconsequential for priority purposes. Therefore, theses facts will have to be thrashed out at the trial and at the stage of grant of temporary injection a strong Prima facie case will have to be established. It has also to be borne in mind whether the appellant has also honestly and concurrently used the trade marks of there are other special circumstances arising in the matter. The courts below have merely looked at what the prima case is and tried to decide the matter without considering the carious other aspects arising in the matter. Therefore, we think the appropriate order to be made is that injunction either in the favour of the appellant or against them or vice-versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties. 9. The order made by the High Court shall stand set aside and it is made clear that there shall be no order of temporary in junction in favour or either party." 8. A glance of the observations herein above, made by the Supreme Court, would reflect that in such circumstance, an order of injunction either in the favour or against a party, is not appropriate and the proceedings in the suit were directed to be adjudicated/concluded, as expeditiously as possible, or the proceedings pending before the Registrar under the relevant Act, and accordingly, the rights of the parties were to be governed. 9. In the instate case at hand, neither of the parties i.e., the petitioner-defendant or plaintiff-respondent has been determined as the user of the trade mark "M/s. Khandelwal Dhaba", so also there is no determination by the court below as to the use of the trade mark by virtue of Section 27(2) of the Act of 1999. 10. In view of the above, this Court is of the considered opinion that the court below committed no error in declining the application of the petitioner for stay of the proceedings. 10. In view of the above, this Court is of the considered opinion that the court below committed no error in declining the application of the petitioner for stay of the proceedings. However, in view of the observation made by the Supreme Court in the case of Uniply Industries Ltd. (supra), the court below is directed to expedite the adjudication pending, as expeditiously as possible, preferably within 8 months from the date a certified copy of this order is presented. 11. For the reasons and discussions aforesaid, the writ proceedings are closed with direction to the court below to conclude the proceeding within the period as aforesaid. 12. No Costs.