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TMI Blog2013 (4) TMI 890X X X X Extracts X X X X X X X X Extracts X X X X ..... ndian market since its incorporation in India in 1994 and manufactures well-known products such as Complan, Glucon-D, Heinz Tomato Ketchup, Sampriti Ghee etc and markets the prickly heat powder NYCIL. 4. The plaintiff has contends that the word mark NYCIL has been registered in India since the year 1951 in favour of British Drug Houses Ltd. under the trade mark registration number 147987 in class 5 in respect of medicinal and pharmaceutical preparations. And that pursuant to a request Form TM 24 dated September 18, 1968 and an order thereon dated January 18, 1969, Glaxo Laboratories (India) Ltd was registered as the subsequent proprietor of this mark with effect from July 1, 1968. Thereafter, the name of Glaxo Laboratories (India) Ltd. was changed to Glaxo India Ltd. who assigned the mark along with the goodwill of the mark to the plaintiff‟s group company Heinz Italia vide a Deed of Assignment dated September 30, 1994. Heinz Italia, on September 17, 1997 applied for and obtained registration for the trade mark NYCIL (Label) under No. 774599 in class 5 in respect of medicinal and pharmaceutical preparations. Both these marks were assigned to the plaintiff vide a Deed of A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Ahmedabad on July 19, 2010 against the usage of the impugned mark by the defendant. However, the plaintiff submits that, the said complaint was erroneously dismissed by the Magistrate on the ground that the impugned packaging NEHACIL was not similar to the plaintiff‟s packaging NYCIL. 8. The plaintiff submits that in order to mitigate the chances of confusion in the minds of the purchasing public, it changed its trade dress and get-up of the NYCIL container. The plaintiff also continued to try and get the defendant to amicably settle the matter, by adopting a trademark which was different from that of the plaintiff‟s. The plaintiff submits, that efforts to settle with the defendant continued till as late as March-April, 2012 as evidenced from the plaintiff‟s email dated April 10, 2012. The defendant however, failed to respond to the plaintiff and proceeded to file a suit for groundless threats before the District Judge, Ahmedabad. On receipt of the Suit Papers in the aforesaid suit, the plaintiff submits that, it became aware of the fact, that the defendant had obtained registration of a label mark containing the mark NEHACIL under the No. 946122 in Class 5 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the said trademarks vide a Deed of Assignment dated February 1, 2005. 12. The defendant submits that it has adopted and used the said trademark openly, extensively and continuously in the market since March 1, 1998. And it is the registered proprietors of the trade mark NEHACIL vide Registration No. 946122 in Class 5 on August 8, 2000, and hence the instant suit is barred under Section 28 of the Act. Regarding the Rectification Application filed by the plaintiff against the registration of the defendant‟s trade mark NEHACIL, the defendant submits that the said application is barred under Section 125 of the Act, and that the defendant shall file the necessary counter statement before the appropriate authority. Lastly, the defendant submits that the controversy between the parties is subject matter of another suit filed by the defendant before the City Civil Court, Ahmedabad, which is pending adjudication. 13. I have heard the ld. Counsels for both the parties and perused through the documents placed on record. It would be suitable to first consider the application filed by the defendant for rejection of plaint under Order VII Rule 11 before proceeding with considering ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it for infringement, etc., to be instituted before District Court.- (1) No suit- (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff' s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of clauses (a) and (b) of sub- section (1), a District Court having jurisdiction'' shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court w thin the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.- For the purposes of sub- section (2), person'' includes the registered proprietor and the re ..... X X X X Extracts X X X X X X X X Extracts X X X X
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