Research › Search › Judgment

Telangana High Court · body

2020 DIGILAW 455 (TS)

Balaji Santosh Dhaba v. Santosh Dhaba Exclusive

2020-06-09

SHAMEEM AKTHER

body2020
ORDER: 1. This Civil Revision Petition, under Article 227 of the Constitution of India, is filed by the petitioners/defendants, challenging the order, dated 25.03.2019, passed in I.A.No.1219 of 2018 in O.S.No.430 of 2017, by the XI Additional Chief Judge, City Civil Court, Hyderabad, whereby, the subject interlocutory application filed by the revision petitioners/defendants under Section 124 of the Trade Marks Act, 1999, read with Section 151 of the Code of Civil Procedure, 1908, requesting the Court below to stay all further proceedings in the subject suit in O.S.No.430 of 2017 till the final disposal of the rectification proceedings pending before the Registrar of Trademarks at Chennai, was dismissed. 2. Heard the submissions of Ms.Megha Rani Agarwal, learned counsel for the revision petitioners/defendants, Sri S.Niranjan Reddy, learned senior counsel, appearing for Sri Pramod Singh, learned counsel for the respondent/plaintiff and perused the record. 3. 2. Heard the submissions of Ms.Megha Rani Agarwal, learned counsel for the revision petitioners/defendants, Sri S.Niranjan Reddy, learned senior counsel, appearing for Sri Pramod Singh, learned counsel for the respondent/plaintiff and perused the record. 3. The respondent/plaintiff filed the subject suit in O.S.No.430 of 2017 before the Court below under Order VII Rule 1 & Order IV Rule 1 of CPC and Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999, alleging infringement and Passing Off of his registered Trade Mark by the revision petitioners/defendants, seeking the following reliefs: A. To grant permanent injunction restraining the defendants by itself, its servants, agents, licensees, heirs or anyone claiming through them from, advertising or in any manner using in respect of their restaurant, hotel, eatery a deceptively similar Trade mark “SANTOSH” or any other deceptively similar Trade mark in any media and use the same in invoices, letter heads, literature, promotional material and visiting cards, or by using any other trade mark which is in anyway conceptually, visually or deceptively similar to the plaintiff’s trade mark “SANTOSH DHABA” or by using any other trade mark which is in any way conceptually, structurally, visually, or phonetically similar to the plaintiff’s registered Trade mark No.2391012 in Class 43 in respect of services relating to providing food & drink, hotel and restaurant services or in any other manner of services and thereby infringe the plaintiff’s registered Trade Mark referred herein; B. directing the defendants to surrender to the plaintiff all the advertisement materials and hoardings, letterheads, visiting cards, office stationary and all other materials containing/bearing the Trade mark “SANTOSH” or any other deceptively similar Trade Mark in respect of hospitals and colleges; C. Directing the defendant to render an account of profits made by them by the use of the impugned trademark ‘SANTOSH’ on the services referred and decree the suit for the profits found to have been made by the defendants, after the defendants have rendered accounts; D. Directing the defendants to pay to the plaintiff the costs of the suit. 4. 4. In the said suit, the revision petitioners/defendants, apart from filing written statement and additional written statement, filed the subject interlocutory application under Section 124 of the Trade Marks Act, 1999, read with Section 151 of CPC, requesting the Court below to stay all further proceedings in the subject suit in O.S.No.430 of 2017 till the final disposal of the rectification proceedings pending before the Registrar of Trademark, Chennai. On merits, the Court below dismissed the subject interlocutory application. Aggrieved by the same, the revision petitioners/defendants filed this Civil Revision Petition. 5. The learned counsel for the revision petitioners/ defendants would contend that as per the mandate given under Sections 124 and 125 of the Trade Marks Act, 1999, when the rectification/cancellation proceedings are pending before the statutory authority/Registrar or Trade Marks, the proceedings in the subject suit are required to be stayed. The Court below erroneously dismissed the subject interlocutory application. The registration of the trade name of the respondent/plaintiff is invalid. The revision petitioners/defendants are not using the trade mark of the respondent/plaintiff. Various entities are using the word “SANTOSH DHABA” either as prefix or suffix to the name of their entity, prior the registration of the said trade name in favour of the respondent/plaintiff. In fact, the trade name “SANTOSH DHABA” originally belonged to one Mohan Patil, who is doing the trade under the said trade name since 1969. The Copyright Certificate filed as Document No.3 substantiates the same. Therefore, various entities, including the revision petitioners/defendants, raised objection for registration of trade name “SANTOSH DHABA” in favour of the respondent/plaintiff. The online copy of Opposition is filed as Document No.1 and the notice of Opposition served on the respondent/plaintiff is filed as Document No.2. Since the rectification/cancellation proceedings are pending before the statutory authority/Registrar of Trade Marks, Chennai, the revision petitioners/defendants filed the subject interlocutory application seeking stay of all further proceedings in the subject suit till the disposal of the rectification/cancellation proceedings. The order under challenge is contrary to the mandate given under Section 124 of the Trade Marks Act, 1999, and ultimately prayed to set aside the order under challenge and allow the subject interlocutory application as prayed for. 6. The order under challenge is contrary to the mandate given under Section 124 of the Trade Marks Act, 1999, and ultimately prayed to set aside the order under challenge and allow the subject interlocutory application as prayed for. 6. On the other hand, the learned senior counsel appearing for the respondent/plaintiff would contend that the respondent/plaintiff entered the realm of serving drinks and cooked food of all kinds based on the orders received from people residing in the neighbourhood, in the year 1995. By the year 2001, the respondent/plaintiff set up another kitchen under the name “NEW SANTOSH DHABA” at a rented premises with necessary police permission, dated 27.09.2001, wherein, they have started serving food and drinks in-house to its customers. In 2004, the respondent/plaintiff started a new restaurant at Hanuman Tekdi, Abids, Hyderabad. However, during the first week of May, 2007, the respondent/plaintiff became aware that the others were infringing and passing off his registered intellectual property. In order to safeguard his rights, the respondent/plaintiff issued two caution notices, dated 11.05.2017 and 12.05.2017, in ‘The Hindi Milap’ and ‘Times of India’ newspapers respectively. Two days later, Form TM-O was filed by the third party, namely, “NEW SANTOSH DHABA” before the statutory authority for rectification/cancellation of the respondent’s trade mark. The respondent/plaintiff filed the subject O.S.No.430 of 2017 before the Court below seeking permanent injunction refraining the revision petitioners/defendants from using his trade mark. In the subject suit, the revision petitioners/defendants filed the subject interlocutory application requesting the Court below to stay all further proceedings in the subject suit till the final disposal of the rectification/cancellation proceedings pending before the statutory authority. The revision petitioners/defendants failed to prove that the registration of the respondent’s trade mark as invalid. In a decision of the Hon’ble Apex Court reported in Patel Field Marshall Agencies and another Vs. P.M.Diesels Limited and others, (2018) 2 Supreme Court Cases 112, the Hon’ble Apex Court held that the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil Court as regards the prima facie tenability of the plea of invalidity. The Court below elaborately dealt with the contentions raised by the revision petitioners/defendants and rightly dismissed the subject interlocutory application. There is nothing to interfere with the same and ultimately prayed to sustain the order under challenge and dismiss the Civil Revision Petition. 7. The Court below elaborately dealt with the contentions raised by the revision petitioners/defendants and rightly dismissed the subject interlocutory application. There is nothing to interfere with the same and ultimately prayed to sustain the order under challenge and dismiss the Civil Revision Petition. 7. In view of the above rival contentions of the learned counsel for both sides, the point that arises for determination in this Civil Revision Petition is as follows: “Whether the order, dated 25.03.2019, passed in I.A.No.1219 of 2018 in O.S.No.430 of 2017, by the XI Additional Chief Judge, City Civil Court, Hyderabad, is liable to be set aside and consequently, all further proceedings in the subject suit in O.S.No.430 of 2017 can be stayed?” POINT:- 8. The case of the revision petitioners/defendants is that registration of trade name “SANTOSH DHABA” in favour of the respondent/plaintiff is invalid, as the said trade name originally belonged to one Mohan Patil, who is doing the trade under the said trade name, since 1969. The revision petitioners/defendants filed Copyright Certificate of the said Mohan Patil as Document No.3. The Court below, on perusal of Document No.3, which is an extract from the Register of Copyrights, recorded that said Mohan Patil submitted his application for registration of trade name “SANTOSH DHABA” on 16.01.2014, whereas the copy of trademark, dated 17.04.2017, filed by the respondent/plaintiff along with the plaint in the subject suit at serial No.1 reveals that the trade name “SANTOSH DHABA” was registered in his favour on 06.09.2012 itself under Trademark No.2391012 under Class-43 and the same is valid up to 06.09.2022. The Court below further recorded that the copy of the Partnership Deed, dated 01.07.2010, filed by the respondent/plaintiff shows that the partnership firm under the name and style of “Santosh Dhaba Exclusive A/C (Santosh Castle)’ with its office at H.No.4-1-364/A & B, Hyderabad, came into existence from 01.07.2010 and that these documents show that the respondent/plaintiff is having prior registration of the trade name “SANTOSH DHABA” in the year 2012 and subsequently, Mohan Patil got the same registered in his name in the year 2014 and hence, the contention of the revision petitioners/defendants that Mohan Patil is the original owner of the trade name “SANTOSH DHABA” and he is doing his business/trade under the trade name “SANTOSH DHABA” since 1969 is not supported by any documentary evidence. The Court below further recorded that the revision petitioners/defendants have filed rectification/cancellation proceedings against the registration of respondent’s trade mark subsequent to the filing of the subject suit by the respondent/plaintiff and hence, they are not entitled to stall the proceedings of the suit merely on the ground of filing of rectification/cancellation proceedings before the statutory authority. The findings recorded by the Court below on this aspect are based on the documents on record and as such, this Court is in agreement with the findings recorded by the Court below and there is nothing to take a different view. 9. The other contention of the revision petitioners/defendants is that the order under challenge is contrary to the mandate given under Section 124 of the Trade Marks Act, 1999, and that since the rectification/cancellation proceedings against the registration of the respondent’s trade mark is pending adjudication before the statutory authority/Registrar of Trade Marks, Chennai, all further proceedings in the subject suit are required to be stalled. 10. Similar situation came up for an authoritative pronouncement on this issue by the Apex Court in Patel Field Marshal Agencies cited supra and the Hon’ble Apex Court, having elaborately discussed the issue, held as follows:- 31. Rather, from the resume of the provisions of the 1958 Act made above it becomes clear that all questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, infact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the Civil Court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. (Emphasis supplied) 34. However, in the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark, such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive. (Emphasis supplied) 11. Thus, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application), the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. Further, the statutory authority will come into seisin of the matter, only if the civil Court is satisfied that an issue with regard to the invalidity ought to be framed in the suit. In the instant case, admittedly, the plea of invalidity was not framed as an issue by the Court below in the subject suit. Had there been prima facie tenability of plea of invalidity/an issue is framed by the Court below, there would have been justification in staying the proceedings. That stage has not been reached yet. In the instant case, admittedly, the plea of invalidity was not framed as an issue by the Court below in the subject suit. Had there been prima facie tenability of plea of invalidity/an issue is framed by the Court below, there would have been justification in staying the proceedings. That stage has not been reached yet. Further, the respondent/plaintiff had contended that the provisions under Section 124 of the Trade Marks Act, 1999, do not curtail the power of the District Court to penalise the infringers and imitators of the registered trademark. Moreover, the Court below recorded a categorical finding that the revision petitioners/defendants failed to prove that the registration of the respondent/plaintiff’s trademark is invalid and that the revision petitioners/defendants are the prior registrants or users of the trade name “SANTOSH DHABA” and therefore, the revision petitioners/defendants are not entitled for stay of all further proceedings in the suit on the grounds pleaded by them. Considering the totality of the circumstances and in view of the legal preposition laid down by the Hon’ble Apex Court in the decision cited supra, this Court is of the view that as of now, there is no prima facie case to grant the relief claimed by the revision petitioners/defendants in the subject interlocutory application. 12. Here it is apt to mention that the scope of the High Court under Article 227 of the Constitution of India is very narrow. The High Court, in exercise of its power under Article 227 of the Constitution of India, should interfere with an order, only to keep the Tribunals and Courts subordinate to it within the bounds of their authority and to ensure that law is followed by such Tribunals and Courts by exercising jurisdiction which is vested in them and by not declining to exercise the jurisdiction which is vested in them. Apart from the above, High Court can interfere in exercise of its power of superintendence, when there has been a patent perversity in the orders of the Tribunals and Courts subordinate to it or where there has been a gross and manifest failure of justice or the basic principles of natural justice have been flouted. 13. In the instant case, neither there is patent perversity in the order under challenge nor the Court below travelled beyond its jurisdiction in passing the impugned order. 13. In the instant case, neither there is patent perversity in the order under challenge nor the Court below travelled beyond its jurisdiction in passing the impugned order. The Court below discussed the material on record at length and ultimately negated the relief claimed by the revision petitioners/defendants, assigning reasons. There is nothing to take a different view. The Civil Revision Petition is devoid of merit and is liable to be dismissed. 14. In the result, the Civil Revision Petition is dismissed. There shall be no order as to costs. Miscellaneous petitions, if any, pending in this Civil Revision Petition, shall stand closed.