IA No. 10775 of 2018 in CS (Comm) No. 363 of 2017
Date of Decision: 1st September, 2022
- Plaintiff was the registered proprietor of the mark CHUPA CHUPS. Defendant was using the mark HARNIK CHUPA CHUP and had registration for the same.
- On 13th May, 2011 the Plaintiff had filed an application for rectification of Defendant’s mark.
- On 7th December, 2012, Plaintiff filed the present suit.
- Since, the Plaintiff had filed a petition for rectification of Defendant’s mark, Plaintiff filed an application under Section 124 of the Trade Marks Act, 1999 praying for: a) allowing of the application under Section 124; (b) framing of the issue of invalidity of Defendant’s registration; and c) Stay of the proceedings so far as it relates to infringement of trade mark.
- The present case summary is on the order passed by the Hon’ble High Court of Delhi as regards the application under Section 124 of the Trade Marks Act, 1999
- In view of the judgment of Supreme Court in Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors., (2018) 2 SCC 112, the rectification petition can be decided only when an issue relating to the validity of the registration of the Defendants’ mark is framed by this Court.
- As the rectification application had been filed prior to filing of the present suit, in terms of Section 124(1)(b)(i) of the Act, there is an automatic stay of the suit pending disposal of such proceedings and there is no requirement of this Court to even consider whether the plea regarding the invalidity of the registration of the Defendants’ trade mark is prima facie tenable and there is also no requirement to frame an issue in that regard.
- Patel Field Marshal Agencies (supra) and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Ors., 2017 SCC Online Del 9889 were not considering a case where the rectification petition had been filed prior to the filing of the suit and therefore, are not applicable to the facts of the present case.
- As per Nippon Soda Co. Ltd. v. V.P.Goyal & Ors, (2014) 58 PTC 386 proceedings in the suit, even with respect to the relief of passing off, have to be as the grounds of infringement as well as passing off cannot be split and cannot be decided at different points of time.
Questions Framed by the Court for decision on the concerned application:
- Whether this Court has to consider the prima facie tenability of the challenge to the registration of the Defendants’ trade mark ‘HARNIK CHUPA CHUP’ and frame an issue in that regard before a stay of further proceedings in the suit can be granted or the suit is liable to be stayed automatically without framing such an issue.
- Whether the suit of the Plaintiff is also to be stayed qua the relief of passing off?
Court’s Decision and Reasoning:
On Question No. 1
First part answered in Negative and Consequently alternative answered in Positive
- Section 124(1)(b)(i) is a situation, where the rectification proceedings are already pending in relation to the Plaintiff’s or the Defendant’s trade mark as on the date of the institution of the suit, and in such a situation the stay of the suit till the final disposal of such proceedings is automatic and the Court is not required to consider prima facie tenability or merits of such rectification proceedings and/or frame an issue in this regard. This is unlike a situation, where rectification proceedings are not pending as on the date of institution of the suit.
- The reliance placed by the Plaintiff on Paragraph 31 of the decisions in Patel Field Marshal Agencies (supra) which reads as follows:
“31. ….. 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…..”
is ill founded. This is for the reason that the Supreme Court was not considering the issue as to where in a case where a rectification petition had been filed prior to the institution of the suit, the Court trying the suit must still consider prima facie tenability of the challenge to the registration of the trade mark of the Plaintiff or the Defendant as the case may be, and to frame an issue in that regard. The issue considered by the Supreme Court in Patel Field Marshal Agencies (supra) was specifically confined to a case where such rectification petition is not pending as on the date of the institution of the suit and the effect of the Court not finding the challenge to the registration of the mark of the Plaintiff or Defendant, as the case may, to be prima facie tenable or where the Court finds the same to be prima facie tenable but the Plaintiff or the Defendant, as the case may be, does not approach the Tribunal (now High Court) within the time granted by the Trial Court to challenge the registration of the mark
- In BGS SGS Soma JV v. NHPC Limited, (2020) 4 SCC 234, Supreme Court has reiterated that judgments are not to be construed as statues, neither are they to be read as Euclid’s theorems. All observations made must be read in the context in which they appear. The judgment must be read as a whole to reveal the true ratio of the judgment.
- In Abbott Healthcare Pvt. Ltd. (supra) the Court had no occasion to consider the issue herein and the same is of no consequence.
On Question No. 2
Answered in Negative
- The Hon’ble Court placed reliance on J.K. Oil Industries v. Adani Wilmar Limited, (2018) 75 PTC 44 which had considered Nippon (supra) and the judgment of Division Bench in Puma Stationer P. Ltd. v. Hindustan Pencils Ltd., (2010) 43 PTC 479 that suit for the relief of passing off will not be stayed.
- The Hon’ble Court also placed reliance on Parveen Kumar Gupta v. Ravi Chadha and Others, AIR 2021 Del 151 in coming to the aforesaid finding.
Thus, the application was disposed directing stay of suit for relief of infringement.