2014 (1) TMI 473 - SC - Companies Law

Rectification petition - Trademark infringement - Suit filed in wrong Court - Suit dismissed for bar of limitation - Held that - appellant has been pursuing its remedy with due diligence, without brooking any delay. The appellant claims that he has been using the trade mark KUNDAN/ KUNDAN CAB and the name Kundan Cables India since 1980. In fact he was the supplier of these goods to Respondent No. 2. When the appellant came to know that Respondent No. 1 was using the trade mark Kundan, he immediately filed the suit for injunction against Respondent No. 1 in the District Court of Delhi which shows that in all earnestness, it wanted to protect his interest in the said trade mark. During the pendency of this suit Respondent No. 1 had obtained registration of trade mark KUNDAN in its favour. This happened in the year 1995. The appellant prompltly filed the petition under Section 45 and 46 of the Trade and Merchandise Marks Act for rectification of the said registered trade mark and for cancelling/ expunging the same. This petition was filed on 2.5.1995. Therefore as far as the appellant is concerned, there was not even a slightest delay in challenging the validity of the trade mark obtained by Respondent No. 1. It is a different matter that this petition was returned for want of territorial jurisdiction. However, the moment this petition was returned by the Registrar i.e. on 2.11.2004, it was presented before the IPAB on the same day. Having regard to all these facts we fail to understand as to how the Appellate Board could dismiss the petition on the ground that it was filed after a delay of 10 years. The appellant had pursued his remedy in a bonafide manner and if it was filed in a wrong court and if he has pursued his remedy wrongly by filing it in Delhi High Court, instead of Madras High Court, principles enshrined in Section 14 of the Limitations Act clearly get attracted - impugned order of the IPAB as well as High Court are liable to be set aside - Decided in favour of appellant.

Summary

Issues:
Jurisdiction of the High Court to entertain rectification petition under the Trade and Merchandise Marks Act.
Validity of the dismissal of the rectification petition by the Intellectual Property Appellate Board (IPAB) based on delay in filing.

Jurisdiction of the High Court:
The appellant, engaged in the manufacture of electric accessories under the trademark Kundan, filed a rectification petition in the Delhi High Court against the registration of the trademark 'KUNDAN' by Respondent No. 1. The High Court upheld the objection regarding territorial jurisdiction, directing the petition to be presented before the appropriate court. The appellant then presented the petition before the IPAB after the formation of the board, as it now exclusively deals with such applications. The IPAB dismissed the petition on the grounds of delay and incorrect jurisdiction, stating that the Madras High Court should have been approached. The High Court also dismissed the appellant's writ petition, concurring with the IPAB's decision.

Validity of Dismissal based on Delay:
The IPAB and the High Court dismissed the rectification petition due to a delay of almost 10 years from the registration of the trademark by Respondent No. 1. The appellant argued that there was no delay as the petition was filed promptly after the registration in 1995, and any delay was due to procedural issues like jurisdiction. The court found that the appellant had diligently pursued the remedy, initially filing the petition in Delhi High Court and then promptly presenting it before the IPAB. The dismissal based on delay was deemed erroneous and prejudicial to the appellant's rights. The court held that the dismissal was unwarranted as the appellant had acted promptly and diligently, and the case should be adjudicated on its merits. The matter was remitted back to the IPAB for a decision on the rectification petition.

In conclusion, the Supreme Court allowed the appeals, setting aside the orders of the IPAB and the High Court, and remitted the matter back to the IPAB for a decision on the rectification petition. No costs were awarded in the case.