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TMI Blog2017 (12) TMI 96X X X X Extracts X X X X X X X X Extracts X X X X ..... en dealt within detail and would not require any further discussion or enumeration. The requirement of satisfaction of the civil Court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in the statutory authority to deal with the issue of invalidity by no means, tantamount to permission or leave of the civil court, as has been contended. It is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit. While Section 32 of the 1958 Act, undoubtedly, provides a defence with regard to the finality of a registration by efflux of time, we do not see how the provisions of aforesaid section can be construed to understand that the proceedings under Sections 46 and 56 on the one hand and those under Sections 107 and 111 on the other of the 1958 Act and the pari materia provisions of the 1999 Act would run parallelly. As already held by us, the jurisdiction of rectification conferred by Sections 46 and 56 of the 1958 Act is the very same jurisdiction that is to be exercised under Sections 107 and 1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Marshal (Registration No. 252071-B). The first registration certificate is dated 16.10.1964 and the second and third registration certificates are dated 4.10.1968. 4. It appears that some time in the year 1982 the appellants-Patel Field Marshal Anr. applied for registration of the trade mark Marshal for their use. Having come to know of the said application and perceiving a similarity between the mark in respect of which registration was sought by the appellants and the mark(s) registered in favour of the respondent, the respondent served a legal Notice dated 23.07.1982 asking the appellants to desist from using the mark in question, i.e., Marshal . 5. In the year 1989, the respondent instituted a suit before the High Court of Delhi (Suit No. 1612 of 1989) for infringement of trade mark, rendition of accounts of profit earned by the appellants from use of the mark Marshal and for perpetual injunction to restrain the appellants from using the trading styles Patel Field Marshal Agencies and Patel Field Marshal Industries . An Interlocutory Application for temporary injunction was also filed. 6. The defendants in the suit, i.e., the appellants herein, contested ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e appellants herein initiated parallel proceedings before the High Court of Gujarat (in the year 1997) seeking rectification of the registration of the trade mark(s) granted to the respondent. Specifically, the appellants had filed three rectification applications bearing RA Nos. 1, 2 and 3 of 1997 under Sections 46/56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the 1958 Act ) for removal and cancellation of the three trade marks registered in favour of the petitioner bearing Nos. 224879, 252070 and 252071. The learned single Judge of the High Court of Gujarat dismissed the three applications in question by Order dated 15.04.1998. The said order has been affirmed in appeal by the Division Bench of the Gujarat High Court by its Order dated 25.11.1998. This order has been subjected to challenge in Civil Appeal Nos.4767-4769 of 2001 presently under consideration. 9. While the reasoning of the Division Bench of the High Court in dismissing the applications in question will be noticed in due course, the question calling for an answer by this Court would need a formulation at this stage. An attempt at such formulation is being made hereunder. In a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eved by the order of the learned Single Judge. The aforesaid proceeding i.e. arising out of S.L.P. (C) No.1851/2009, in the circumstances set out above, is accordingly closed. Two appeals, therefore, survive for consideration i.e. Civil Appeal Nos.4767-4769/2001 and Civil Appeal arising out of S.L.P. (C) No.27309/2012. 12. We have heard Mr. Shailen Bhatia, learned counsel for the appellants and Mr. Harin P. Raval, learned senior counsel for the respondents in Civil Appeal Nos.4767-4769 of 2001. We have also heard Mr. J. Sai Deepak, learned counsel for the appellant and Mr. Gladys Daniels, learned counsel for the respondent in Civil Appeal arising out of S.L.P. (C) No. 27309 of 2012. 13. The arguments advanced on behalf of the appellants in the appeals proceed on the basis that Section 107 and 111 of the 1958 Act contemplates grant of permission by the learned Trial Court for filing of a rectification application, which requirement, it is urged, does not seem to follow from a reading of the aforesaid two provisions of the 1958 Act. It is submitted that under the 1958 Act, there are two categories of right vested; the first in the owner of a registered trade mark (Sections 28 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that may be raised before it by any party to an infringement suit, the said question has to be decided in a rectification proceeding and not in the suit. The suit will remain stayed and the final decision of the statutory authority in the rectification proceeding will govern the parties to the suit. It is contended on behalf of the respondents that rectification proceedings under Sections 46 and 56 of the 1958 Act govern a situation where no suit for infringement is pending. In a situation where a suit for infringement has been filed and the question of validity of registration arises therein and the Civil Court is satisfied as to the prima facie tenability of the issue of invalidity of the registration of the trade mark, the provisions of Section 111 would take over and govern the proceedings in the suit including the issue of invalidity. It is further contended that there is a deemed abandonment of the rights conveyed under Sections 46 and 56 of the 1958 Act in the event a suit for infringement is pending wherein the question of invalidity has been raised and found to be prima facie tenable. It is urged that the rights under Sections 46 and 56 on the one hand and those contain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) Where in relation to any goods in respect of which a trade mark is registered- (a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly. (6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register. Xxx 107. Application for rectification of register to be made to High Court in certain cases. (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (d) of sub-section (1) of section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in section 46, sub-section (4) of section 47 or section 56, such application shall be made to the High Court and not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit. 16. The aforesaid provisions of the 1958 Act have been replicated in the 1999 Act. As the judicial precedents that would require elaboration are in the context of the 1999 Act, for purpose of clarity, it would suffice to indicate that Sections 46, 56, 111 and 107 of the 1958 Act (extracted above) c orrespond to Sections 47, 57, 124 and 125 of the 1999 Act. 17. What is the scheme of the Act? The question does not seem to have received/engaged the attention of this Court at any earlier point of time and therefore will have to be answered by us. The pronouncements of the High Court of Delhi and Madras in Astrazeneca UK Ltd. and Anr. Vs. Orchid Chemicals and Pharmaceuticals Ltd. 2006 (32) PTC 733 and B. Mohamed Yousuff (supra) and that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on of a trade mark is questioned after initiation of a suit for infringement it is open for the party setting up the plea of invalidity to apply to the IPAB under Sections 47 and 57 of the 1999 Act for rectification. The High Court went on to hold that the effect of the prima facie evaluation of the tenability of the plea of invalidity does not impinge on the right of the party raising such a plea to apply to the IPAB for rectification. In other words, the right to seek rectification under Sections 47 and 57 of the 1999 Act does not stand extinguished in a situation where in a suit for infringement the plea of invalidity is found to be prima facie not tenable. The only difference according to the High Court is that while under Sections 47 and 57 of the 1999 Act, the aggrieved party can move the Registrar for rectification, in the latter situation i.e. where a suit is pending it is the IPAB which alone acquires jurisdiction to the exclusion of the Registrar. 21. In Data Infosys, the Full Bench of the Delhi High Court further took the view that the provisions of Section 124(3) of the 1999 Act should be interpreted to mean that if rectification proceedings are not filed within th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pect of which the mark has been registered. This is, however, subject to such conditions and limitations as may be incorporated in the registration itself. It also grants to the registered owner a right to seek and obtain relief in case of infringement of the mark. Section 46 in Chapter VI of the 1958 Act contemplates removal from the register of any registered trade mark, inter alia , on the ground that the same was registered without any bona fide intention of use and, in fact, such mark has not been used up to one month prior to the date of the application for removal or that for a continuous period of five years there has been no bona fide use of the mark. Chapter VII of the 1958 Act deals with rectification and correction of the register of trade marks. Under Section 56, the Tribunal, (Registrar or, as the case may be, the High Court), on application, may cancel or vary the registration of a trade mark on the ground of any contravention, or failure to observe a condition subject to which registration was granted. 24. In cases where in a suit for infringement of a registered trade mark the validity of the registration of the trade mark is questioned either by the pl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ll accepted principles of interpretation of statutes, which would hardly require a reiteration, the heading of Section 111 of the 1958 Act i.e. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. , cannot be understood to be determinative of the true purport, intent and effect of the provisions contained therein so as to understand the said section to be contemplating only stay of proceedings of the suit where validity of the registration of the trade mark is questioned. Naturally, the whole of the provisions of the section will have to be read and so read the same would clearly show lack of any legislative intent to limit/confine the operation of the section to what its title may convey. 27. 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 b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. 31. The legislature while providing consequences for non-compliance with timelines for doing of any act must be understood to have intended such consequences to be mandatory in nature, thereby, also affecting the substantive rights of the parties. This is how Section 111(3) of the 1958 Act has to be understood. That apart, it is very much within the legislative domain to create legal fictions by incorporating a deeming clause and the court will have to understand such statutory fictions as bringing about a real state of affairs between the parties and ushering in legal consequences affecting the parties unless, of course, there is any other contrary provision in the statue. None exists in the 1958 Act to understand the provisions of Section 111(3) in any other manner except that the right to raise the issue of invalidity is lost forever if the requisit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ct to exist even in a situation where the abandonment of the same right under Section 111(3) has taken effect in law. The mandate of the 1958 Act, particularly, Section 111 thereof, appears to be that if an aggrieved party does not approach the Tribunal for a decision on the issue of invalidity of registration as provided for under Section 111(2) and (3), the right to raise the issue (of invalidity) would no longer survive between the parties to enable the concerned party to seek enforcement of the same by recourse to or by a separate action under the provisions of Section 46/56 of the 1958 Act. 33. Having dealt with the matter in the above manner, certain subsidiary and incidental questions, urged and argued by the parties, would also need an answer. 34. The first question posed is how an approach to the superior Court i.e. the High Court, under Section 111 of the 1958 Act, can be contingent on a permission or grant of leave by a court of subordinate jurisdiction. The above is also contended to be plainly contrary to the provisions of Section 41 (b) of Specific Relief Act, 1963. It is also urged that Section 32 of the 1958 Act provides a defence to a claim of infringement wh ..... X X X X Extracts X X X X X X X X Extracts X X X X
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