9911796707
TMI Blog1998 (11) TMI 685X X X X Extracts X X X X X X X X Extracts X X X X ..... court by learned Single Judge, inter alia, on the ground that the applications are barred by time and also on the ground that the applicant in each case is not entitled to maintain the applications. The order of learned Single Judge dated 15.4.1998 by which the aforesaid three applications have been rejected is subject matter of appeal in all the three appeals. In the circumstances, we have heard the same together and propose to decide by a common order. 2. The facts necessary for the present purposes briefly stated are that respondent No.1 secured registration of its mark in question vide registration No. 224879, 252071 and 252070 dated 16.10.64, 4.10.68 and 4.10.68 respectively. The present appellants were served with a legal notice dated 23.7.1982, calling upon the appellants to desist from using the trade mark MARSHAL which is being used by them, and forms part of the word forming part of the registered trade mark of respondent FIELD MARSHAL, which was replied to by the appellants. A suit was filed by respondent No.1 being Regular Civil Suit No. 1612 of 1989 in the High Court of Delhi for infringement of respondent's trade mark. The applicants filed their written stateme ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... idity of trade mark when they were served with the suit summons disentitles them to raise this plea now. At the outset, we may state that statement that the applicants-appellants had failed to raise a contention in the written statement about the invalidity of registration of mark in favour of respondent is an incorrect statement of fact. It appears that though the applicant has spoken unequivocally of having filed written statement and made a statement of filing the written statement along with his application has not filed a copy of written statement along with his application and this finding has been recorded by drawing adverse inference about non raising of the plea, without calling upon the applicant to produce the copy of written statement, filed in the suit before Delhi High Court. By making direct reference to the written statement submitted in Suit No.1612 of 1989 in High Court of Delhi and relying on averments made therein, the applicant has sought to incorporate the averments made in his written statement by reference. When he himself was offered to file the proceedings, the written statement filed in those proceedings in order to find out for the purposes of cons ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 56. Subsection (4) of Section 56 empowers the High Court as well as the Registrar to exercise such power Suo Motu after giving notice to the affected parties in the prescribed manner. So far as Section 56, by itself is concerned, it confers concurrent jurisdiction on High Court as well as on Registrar of Trade Marks in the matter of rectifying entries made in the register, whether by way of cancellation or variation under subsection (1) or making, expunging or varying such entry under subsection (2). Section 107 of the Act provides that where in a suit for infringement for its registered trade mark, the validity of 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 subsection (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, subsection (4) of Section 47 or section 56, such application shall be made to the H ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ings 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. (2) If the party concerned proves to be Court that he has made any such application as is referred to in clause (b)(ii) of subsection (1) within the time specified therein or within such extended time as the Court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the Court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in subsection 91) or subsect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vision permitting raising of an issue only on prima facie satisfaction of the court, with further requirement that the party, at whose instance an issue has been framed, is to apply for rectification before the High Court concerned, and failure to make such application within time allowed results in deemed abandonment of plea, leads us to conclude that once a suit has been filed, the rectification proceedings at the instance of either party to the suit against the other, must take the course envisaged under section 111, that is to say, if proceedings for rectification are already pending before raising the plea of an invalidity, that is to say, the attention of an appropriate forum having already been invited to that issue, those proceedings must first be continued, decision thereon to be obtained and then civil suit for infringement can proceed in the light of that decision. In case, no such proceedings for rectification are pending at the time of raising the plea of invalidity, the prosecution of such plea by the person raising it depends on prima facie satisfaction of the court, about the tenability of this plea. If the plea has been found to be prima facie tenable and issue is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... me allowed, entails further stay of proceedings in the suit until rectification application is decided. Secondly failure to avail the opportunity results in abandonment of the issue. If the provision has been confined only to stay, proceedings of the suit at the request of the party concerned, subsection (3) of Section 111 sounds totally out of context. The stay of the proceedings in case rectification applications are already instituted or instituted thereafter as a result of framing of issue is not in the discretion of the court. The proceedings of the trial court must be stayed. It cannot proceed further in the very scheme of things. Where the issue as to invalidity has been raised, as per Section 107 it can only be decided by the High Court having jurisdiction to decide rectification application. Subsection (4) of Section 111 makes the finding of rectification proceedings binding on the court trying the suit for infringement. Without deciding the issue about invalidity, it is well nigh impossible to proceed with the trial of the suit in which plea as to invalidity has been raised, without deciding the fate of it. Either the issue is or is deemed to have been abandoned either by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... filed scheme that is entwined between Section 107 and 111 becomes operative. Firstly, in that event jurisdiction of registrar to entertain such application is barred and application only lies to High Court. That is the effect of filing of suit simpliciter. If right to move rectification thereafter could be exercised independent of raising the plea, there could be no necessity to enact Section 107 for confining proceedings after filing of suit to a forum which is a civil court and whose decision operates as final. The issue of invalidity of mark, which is subject matter of suit cannot be tried by the court trying the suit for infringement, but can only be tried through independent rectification application and that too not by making a reference by the court but on an application by the person aggrieved. That is to say if plea as to invalidity is not raised, no question of filing the application arise, and operation of Section 111 remains dormant. As soon as plea of invalidity is raised Section 111 would spring into operation. If the plea has been raised after approaching the rectification forum, clause (i) of subsection (1) may apply to such plea. If the plea is raised in the suit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oned the same. On this principle, rule of constructive res judicata is founded. A suit for infringement is not excepted from the rule as far as parties to the suit are concerned. Like in any suit, parties are not precluded from raising new plea on grounds which come into existence later on and was not in existence at earlier. This supports the plank that if plea of invalidity is not raised in the suit, it amounts to admitting the validity of registration of trade mark by the defendant. Then too that party is precluded from challenging the registration on grounds existing at the time of filing written statement or at the time when the defendant had opportunity to raise such plea in the suit in any other manner, but had failed to do so. With these premises, we examine the question whether the applicant was entitled to file this rectification application, pending suit before the Delhi High Court. We have perused the material placed before us, namely, the plaint, written statement, and issues framed by the Delhi High Court, the correctness of which is not in doubt and the application and written statement filed in Delhi High Court as part of pleadings referred in the rectification a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eeds no elucidation that a plea which is raised in written statement but trial of which is not insisted upon by not insisting to frame an issue to that effect, such plea must be deemed to have been abandoned by the party raising the same in his pleadings. It becomes a case of overt abandonment. Once a person has abandoned the plea as to invalidity of the mark, he cannot raise fresh plea de hors the suit by filing a rectification application and resume such plea. If for any reason the defendant in the suit felt that he does not have sufficient material or sufficient grounds to challenge the validity of the mark of the plaintiff when the issues were framed, but later on as a result of discovery of fresh material giving fresh grounds to challenge the validity of the mark, the procedure open for the defendant was to have raised that issue before the trial court, invite its attention to that plea, for consideration whether prima facie the same is tenable and asked for framing of issues to that effect, so as to enable him to approach the rectification forum for getting a decision on that issue. But, he cannot independent of the suit, raise the issue in a rectification application at any ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the trial of the suit for three months. It is left to the person raising plea of invalidity to utilise period of three months to approach the appropriate forum. We find from the order framing issue that the order has been made on 19.4.1994 and suit has been ordered to be listed for trial for 25th and 26th October 1995, that is to say, more than 18 months from the date of the order. The defendant did not file any rectification application within three months from the date of order of framing of issues on the assumption that the issue NO. 7 is issue about validity of mark, nor even up to the date fixed for the next adjourned date for trial, namely, 25th and 26th October, 1995. In that event also, the present appellant fails to extricate himself from his own conduct of abandoning the plea during the trial of suit. Thus viewed from any angle, the appellant must be deemed to have abandoned the plea after raising the same in the suit when the suit is pending trial before the Delhi High Court. As we have reached the conclusion that once suit for infringement has been filed and plea as to invalidity of mark in question has been raised, the issue can be decided only within the preci ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be barred by any law. However that entails looking at what constitute cause of action and the statement made in the plaint invite attraction of which law as to bar its maintainability. The bar to the maintainability is not necessarily confined to law of limitation. It is founded on any other law which may have effect on the maintainability. Where the statement in the plaint clearly indicate applicability of any such law relating to bar as to its maintainability and the material on the basis of which that issue can be decided are contained in a document referred to by the plaintiff and has been made foundation of his claim for his relief such document and statement made thereon as much form part of the plaint, the court is though not to question at that stage, the validity or correctness of the statement contained in the plaint or document attached to it which has been made foundation of the plaint, but is not precluded from looking at the document. Where the plaintiff instead of making full assertions in the pleadings refers to a document by stating that he relies on statement made therein as part of his claim it would be apt to say that plaint/application coupled with document con ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e whether it disclose necessary ingredient on which rectification application could be maintained at all, in other words the cause of action for maintaining the rectification application. That being so, the plea of the learned counsel for the appellant that the court ought not to take into consideration the written statement to find out whether the plea has been raised or not, cannot be accepted. As a consequence, if on reading of the statement in totality, it goes to disclose that plea as to invalidity of mark has been raised, the next question which calls for consideration is whether issue has been raised or not. As we have noticed above, raising of issue is not dependent merely on the raising of pleas but on application of mind by the court and rejection of plea results in closure of objector's to raise the dispute by way of a separate rectification application to indirectly set at naught the order referring to raise the issue or on raising of issue within three months thereof or within further extended time the defendant has to file an application. Failure to do so results in abandonment of plea. Prima facie it is for the plaintiff to disclose in his plaint that his applica ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... free to resort to frivolous litigation by resorting to successive proceedings on failing in proceeding and results in multiplicity of proceedings. Refusal to frame issue amounts to finding that even prima facie a triable issue does not arise. For failure to file application within time results in abandoning the issue, for maintainability of application in such cases the plaint must disclose that the trial court had on raising of such plea of invalidity has raised an issue to that effect and date on what such issue has been raised. In view of provision of Section 107 read with Section 111 of the Act of 1958, these assertions become necessary part of cause of action itself. Mere filing of written statement awaiting framing of issue also cannot make the rectification application maintainable. It is for the court trying the suit to decide whether the issue is to be tried or not during the pendency of suit. In the absence of any averment as to framing of issue by the trial court before whom plea as to invalidity of mark has been raised, the rectification application will still be not maintainable because in that event the application does not disclose the prima facie satisfaction about ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion de hors Section 111 of the Act of 1958. 17. It has been urged by the learned counsel for the appellant that High Court exercising jurisdiction under Trade Merchandise Marks Act is not a civil court but is a Tribunal as defined under Section 2(1)(x): tribunal means the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending. 18. This contention cannot be accepted. Merely because the term `Tribunal' has been used to denote conjointly the two adjudicatory forums referred to in the Act. In the context of applicability of Limitation Act, which applies to all applications made to a court, what is relevant is the character resulting from the formation of adjudicatory body and not the provisions under which the adjudicatory functions are assigned to it. If a body has been constituted as a court and has been assigned functions to discharge in additions to its ordinary functions under different enactments, it does not cease to be a court for the purpose of Limitation Act. It only means that the Tribunals which have not been constituted as courts but are constituted under the provision of statute to discharge function assigned un ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es function under the Act as a functionary constituted under the Act. The law is otherwise well settled that all applications made to a court under special law are also subject to law of limitation. If that be so, it only denotes that application which are required to be made to a named court under the Special Act, the court does not become an authority or Tribunal constituted under that Act, but remains a court to which application under the Act are to be made. It may derive its jurisdiction to deal with matter as per the provision of Special enactment but for that reason it does not cease to be a court and become a Tribunal constituted under the Act as distinct from a court. 19. We therefore are of the opinion that the application made under the Special Act, namely, the Act of 1958 when it is made to the High Court it is an application under a Special Act made to the Court and unless excluded by express provision or by necessary implication of provisions of such special law, the provisions of Limitation Act would be attracted. 20. Here we may notice one of the dichotomy which learned counsel for the appellant has pointed out in this instance, under the Act the Registrar is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... limitation as such. However, scheme of Section 111 makes it different. It not only envisages a positive separate action and also the manner and circumstance in which such action can be taken by way of defence. Once we come to this conclusion that law of limitation is applicable, the next question that calls for consideration is what shall be limitation in the present case? It is not in dispute that there is no specific article in the schedule which governs the period of limitation for making an application under Trade Marks Act. Hence residuary article 137 shall ordinarily govern the limitation. Whether the wrong is continuing or completed depends upon the facts pleaded. Say for example if the rectification is sought on the ground that registration has been obtained by fraud. Section 17 of the Limitation Act comes into play and period of limitation is to be reckoned from the date fraud is discovered. If the rectification is sought on the ground that it has been granted wrongfully. The date of registration becomes starting point of limitation. On the other hand if it is alleged that continuing of entry on register has become erroneous because it has ceased to be distinctive, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... starting point of limitation for filing a rectification application arising under the plea. No other point can be substituted for it. Whether we take the view, as discussed above, that such application must be filed in accordance with provisions of Section 111 and within time prescribed therein, or by recourse to Art. 137, independent of provision of Section 111, period of 3 years from the date of raising plea in the suit or at best from the date when issues were framed, and assuming that the court refused to frame issues, have elapsed on the date when present application was filed. However, at this juncture, it has been pointed out by learned counsel for the appellant that the appellant had moved an application for amendment of written statement in the trial court which is pending consideration and the rectification application is founded on grounds some of which have come into existence subsequently, and are part of pleadings sought by amendment application, expression of any opinion at this stage on the question as to what shall be the period of limitation applicable in the present case may prejudicially affect the consideration of application for amendment on merit inasmuch ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
