Research › Search › Judgment

Rajasthan High Court · body

2024 DIGILAW 802 (RAJ)

Lotus Organic Care v. Aadhar Products Pvt. Ltd.

2024-05-16

VINIT KUMAR MATHUR

body2024
ORDER : Mr. Vinit Kumar Mathur, J. - Heard learned counsel for the parties. 2. The present writ petition has been filed against the order dated 19.10.2023 passed by the learned Additional District and Sessions Judge, Mawli, District Udaipur in Civil Suit No.62/2022 (17/2018), whereby the application preferred by the petitioner under Section 124 of the Trademarks Act, 1999 (hereinafter referred to as the 'Act of 1999') has been rejected. 3. Briefly noted the facts giving rise to the present writ petition are that the respondent-plaintiff filed a suit for infringement and passing off of its registered label trademarks (1961814 & 2551769) before the learned trial court. In the suit filed by the respondent-plaintiff, the summons were issued. The petitioner-defendant filed written statement to the suit preferred by the respondent-plaintiff. The trial court framed the issues on 09.10.2022. Thereafter, on the application moved by the respondent-plaintiff as well as by the petitioner-defendant, an additional issue was framed by the trial court on 23.02.2023. After framing of the issues by the learned trial court, the petitioner preferred an application under Section 124 of the Trademarks Act, 1999 for staying the suit proceedings on the ground that the petitioner proposed to file a rectification application against the Trademarks Nos.1961814 & 2551769 of the respondent-plaintiff. On the application, the learned trial court heard the counsel for the parties and rejected the same vide order dated 19.10.2023. Hence, the present writ petition has been filed. 4. Learned counsel for the petitioner submits that the learned trial court has committed an error in passing the order dated 19.10.2023 as the specific provisions of Section 124 (1) (ii) have not been taken note of while appreciating the facts in the present case. Learned counsel submits that the trial court was under an obligation to prima facie get itself satisfied for tenability of the submissions made in the written statement as well as in the application preferred under Section 124 with respect to the rectification application and proceedings to be undertaken by the petitioner before the appropriate forum. He submits that in paragraph 2 and 2-4 of the written statement, the basic foundation has been laid by the petitioner with respect to the plea of validity of the rectification application to be preferred before the appropriate forum. He submits that in paragraph 2 and 2-4 of the written statement, the basic foundation has been laid by the petitioner with respect to the plea of validity of the rectification application to be preferred before the appropriate forum. He, therefore, submits that the learned trial court has committed an error while not appreciating the contentions raised by the petitioner in the written statement with respect to the prima facie tenability of the plea of invalidity of the Trademark used by the plaintiff-respondent. He, therefore, prays that the writ petition may be allowed and the order dated 19.10.2023 may be quashed and set aside. 5. Per contra, the learned Sr. Counsel for the respondent vehemently opposed the submissions made by the counsel for the petitioner and submits that the learned trial court has dealt with the issue in detail and has rightly come to the conclusion that prima facie tenability of the submissions made before the trial court in the written statement is not made out to bring home the case of the petitioner under the ambit of Section 124 (1) (ii) and, therefore, the contentions raised by the petitioner in the written statement are not sufficient to satisfy the mandate of prima facie tenability of the contentions with respect to the invalidity of the trademark of the plaintiff-respondent to be canvassed in the rectification application to be preferred before the appropriate forum. The learned counsel submits that the learned trial court has taken note of the submissions and has rightly come to the conclusion that the same are not sufficient for prima facie satisfying the trial court regarding the tenability of the rectification application before the appropriate forum. 6. Learned Sr. Counsel further submits that Section 124 is applicable only in the cases where the suit for infringement of the trademark is under consideration. In the present case, since the plaintiff has preferred a suit for infringement as well as passing of, therefore, learned Sr. Counsel alternatively prays that the learned trial court may be allowed to proceed with the suit proceedings on the issue framed with respect to the prayer for passing is concerned. 7. I have considered the submissions made at the Bar and have gone through the relevant record of the case. 8. Counsel alternatively prays that the learned trial court may be allowed to proceed with the suit proceedings on the issue framed with respect to the prayer for passing is concerned. 7. I have considered the submissions made at the Bar and have gone through the relevant record of the case. 8. For better appreciation of the facts and issue, it is worthwhile to reproduce Section 124 (1) (ii) of the Act of 1999, which 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)...... (b)...... (i)...... (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 High Court for rectification of the register." 9. As per the mandate of law, particularly Section 124 (1) (ii), it is incumbent upon the trial court that in a pending suit, if an application under Section 124 is filed, then prima facie it has to satisfy with respect to the invalidity of the registration of the plaintiff's/defendant's trademark. The trial court has to take into account the pleadings made on behalf of the applicant for reaching its prima facie satisfaction for tenability of the same. 10. In the present case, the learned trial court has taken note of the pleadings made in the written statement of the petitioner and has come to the conclusion that the same are not prima facie tenable to bring home the satisfaction of the trial court for framing the issues with respect to the invalidity of the registration of the plaintiffs trademark and thus, the learned trial court has rejected the application. It is worthwhile to reproduce the pleadings made by the petitioner-defendant in the written statement, particularly paragraph 2 and 2-4, which reads as under: ^^2- ;g gS fd] oknh dEiuh us vius okn&i= dks nsjh ls izLrqr fd, tkus dk dksbZ dkj.k Li"V ugha fd;k gS] tcfd izfroknh o"kZ 2007 ls gh vius O;olk; dj jgk gS vkSj oknh dEiuh dh tkudkjh esa o"kZ 2012 ls gh vk pqdk gSA izfroknhx.k }kjk Delite uke ls o‚f'kax ikmMj dk O;olk; fd;k tk jgk gSA izLrqr okn egRoiw.kZ rF;ksa dk nksgjko fNik dj diViw.kZ mís'; ls izLrqr fd;k x;k gSA oknh }kjk okn esa izLrqr VªsMekdZ dk iath;u Hkh VªsMekdZ vfèkfu;e ds izkoèkkuksa ds fo:) vly fLFkfr dk fNiko djrs gq, izkIr fd;k gSA oknh ds VªsMekdZ dk iath;u gh izFke n`"V;k voSèk izrhr gksrk gSA izLrqr okn ekuuh; U;k;ky; ds le{k LoPN gkFkksa ls is'k ugha fd;k x;k gSA ekuuh; lokZsPp U;k;ky; }kjk ikfjr fu.kZ;ksa ds izdk'k esa fofèk dk ;g fu;e lqLFkkfir gS fd] A litigant who attempts to pollute the stream of justice or who touches the pure fountain of justice with tainted hands] is not entitle to any relief whether interim or final." ^^2&4- ;g gS fd] okn ds in la[;k 2] 3 o 4 esa of.kZr rF; ftl rjg ls ?kqek&fQjkdj vafdr fd;s gS] vLohdkj gSA oknh dEiuh fMlkbZM uked o‚f'kax ikmMj dk mRiknu o foi.ku 2006 ls dj jgh gks] vLohdkj gSA oknh dEiuh }kjk fMlkbZM o‚f'kax ikmMj dk ftl iSdsftax esa foi.ku fd;k tkrk gS] ml iSdsftax dk dyj d‚fEcus'ku] fMtkbZu bR;kfn Hkh viuk fo'ks"k egRo j[krs gS] ijarq oknh dEiuh ds izksMDV dh iSdsftax] dyj d‚fEcus'ku] fMtkbZu bR;kfn miHkksDrkvksa ds eu&efLr"d esa ,d fo'ks"k Nfo o lk[k cuk pqds gks] iw.kZr;k vLohdkj gSA VªsMekdZ jftLVªh ds bUVjusV ij miyCèk MkVk csl ds voyksdu ls izFke n`"V;k ;g Li"V gS fd oknh o"kZ 2006 esa izFker% tks yscy VªsMekdZ dk vaxhdj.k fd;k gS] og okn esa izLrqr VªsMekdZ ls fHkUu gSA oknh }kjk o"kZ 2006 esa tks yscy VªsMekdZ fMlkbZM ds iathdj.k ds vkosnu] izkFkZuk&i= izLrqr fd;s gS] og "Proposed to be used category" esa fd;s gSA o"kZ 2013 esa Hkh oknh dEiuh }kjk tks QkStnkjh izdj.k nk;j fd;k Fkk mlesa oknh dEiuh us vius fdlh vU; VªsMekdZ dk mYya?ku gksuk ugha crk;k gSA bl izdj.k ds ,d ekg i'pkr- oknh dEiuh us izLrqr okn dh fo"k;oLrq VªsMekdZ la[;k vkosnu izkFkZuk&i= izLrqr fd;k] ,slh fLFkfr esa oknh }kjk bl VªsMekdZ fMtkbZu] dyj d‚fEcus'ku bR;kfn 03-03-2006 ls gh mi;ksx djuk iw.kZr;k vLohdkj gSA oknh dk ;g dFku fd o"kZ 2006 ls fMlkbZM ekdZ Uninterrupted and Continuous Use ds dkj.k ?kj&?kj igpkuk tk jgk gS] vLohdkj gSA fofèk ds lqLFkkfir fu;eksa ds vuqlkj fdlh Hkh lkekU; O;fDr ds fy, VªsMekdZ dh [;kfr o izflf) mls yxkrkj] [kqys oa foLr`r :i ls dke ysus ij gh izkIr gksrh gSA oknh }kjk le;&Lke ij vius ysoy VªsMekdZ fMlkbZM dks cnyk x;k gS ,oa jftLVªkj }kjk oknh ds VªsMekdZ ds lEcUèk esa tks fu;e o izfrcUèk yxk;s gS] og oknh dks iznku iathdj.k dh ifjlhek r; djrs gSA oknh }kjk mDr VªsMekdksZa ds mi;ksx ds lEcUèk esa dksbZ lk{; 'kiFk&i= Hkh is'k ugha fd;k gSA oknh ds yscy VªsMekdZ fMlkbZM la[;k 1961814 ,oa 2551769 dk iath;u voSèk gS o vly rF;ksa dks fNikdj izkIr fd;k x;k gSA izLrqr okn esa tks Artistic Work d‚ihjkbZV uEcj ,&112252@2014 dk vkosnu Hkh mDr QkStnkjh izdj.k ds i'pkr- fd;k x;k gSA oknh }kjk izLrqr okn O;kikfjd bZ";kZ ds pyrs o vly mi;ksx ds rF;ksa dks fNikdj izLrqr fd;k gSA mijksDr rF;ksa ls ;g Hkyh&Hkkafr izekf.kr gS fd] oknh dk dFku fd] fMlkbZM ekdZ ds leku fdlh Hkh ekdZ dks oknh dEiuh ds fMlkbZM ls tksMdj ns[kk tk ldrk gS o orZeku esa ns[kk tk jgk gS] iw.kZr;k xyr ,oa feF;k gSA^^ 11. A bare perusal of the aforequoted paragraphs clearly show that the petitioner has made pleadings to satisfy the factum of prima facie showing before the trial court that the registration made in favour of the respondent-plaintiff is invalid. The learned trial court was only required to prima facie satisfy itself with respect to the pleadings taken in the written statement to the effect that the trademark of the plaintiff is invalid. If such pleadings are taken, then the petitioner-defendant was well within its right to get the benefit of Section 124 taking leave of the trial court for taking recourse of filing the application for rectification against the trademark of the petitioner. The learned trial court was not required to measure the sufficiency or insufficiency of the evidence or other factors for adjudicating the factum of the success or failure of the rectification application. Since the rectification proceedings are required to be undertaken at a different forum and the parameters for the same will stand on different footings, therefore, the learned trial court was only required to record prima face satisfaction with respect to the pleadings made in support of the invalidity of the trademark of the plaintiff. 12. This Court is further of the view that while deciding the application under Section 124, the trial court is not required to appreciate, evaluate and discuss in detail the evidence in support or against the rectification application. It just has to prima facie record its satisfaction with respect to the invalidity of the trademark of the plaintiff/defendant and prima facie tenability of the same. 13. In the present case, this Court is satisfied that the pleadings taken in the above mentioned paragraphs are sufficient to show that the application preferred under Section 124 was required to be accepted. 14. In view of the discussion made above, the writ petition merits acceptance and the same is allowed. The order dated 19.10.2023 is quashed and set aside and further proceedings in Suit No.62/2022 pending before Additional District and Sessions Judge, Mawli, District Udaipur qua the prayer for infringement are stayed and the petitioner is allowed to undertake the process for filing the rectification application as per law. 15. It is also made clear that the suit proceedings with respect to the passing off preferred by the respondent-plaintiff shall continue on the issues framed thereunder. 16. 15. It is also made clear that the suit proceedings with respect to the passing off preferred by the respondent-plaintiff shall continue on the issues framed thereunder. 16. Stay petition as well as other pending applications, if any, shall stand disposed of.