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TMI Blog2012 (4) TMI 775X X X X Extracts X X X X X X X X Extracts X X X X ..... llenged the validity of the defendant's trade mark MEROMER by filing similar application before IPAB against the defendant's registered trade mark and thus, the suit is liable to be stayed by this Court under Section 124 of the Act. 2. On the other hand, the plaintiffs have filed the reply taking the following objections: (a) The present application is not maintainable as the same is filed in violation of the provisions of Section 124 of the Act. (b) The present application is not maintainable as the defendants have filed the rectification without taking the leave of the Court and thus the same may not attract Section 124 of the Act. (c) The said application is time barred as the rectification is filed by the defendant against the plaintiffs trade mark in the year 2005 and the said application is thus not maintainable after the lapse of 5 years. (d) It is also stated by the plaintiffs that the plaintiffs had filed the application earlier on the similar facts which was dismissed by this Court. The defendant has filed the similar application for the rectification filed during the same period. Thus, the said application should be dismissed on the same basis. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ity of the defendant's mark MEROMER. The learned Single Judge of this Court after discussing the applicability of the Section 124 of the Act and eventualities prescribed therein observed that the plaintiffs ought to have taken the leave of this Court prior to filing of rectification petition in order to invoke the provisions of Section 124 of the Act. The learned Single Judge observed thus: The said provision envisages two eventualities in case the defendant has raised a defense under Section 30 of the Act and the plaintiff has pleaded invalidity of the registration of the defendant's trade mark, one where the application seeking rectification is already pending and the other where the application is to be filed seeking rectification. In the present case the application for rectification is filed after the institution of the suit which fact has not been denied. 7. Under Section 124(b) CPC, if the application for rectification is already pending the suit can be stayed pending final disposal of such proceedings. In case the application for rectification or any such proceeding is not pending, then a party seeking rectification can apply for rectification subject to prima ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... h of the Gujarat High Court had held: As we notice, under Section 107, it has been provided that on such plea being raised, the plea can be decided only in appropriate rectification proceedings. In conformity with that provision, Section 111 envisages that if proceedings for rectification of the register in relation to plaintiff or defendant's trademark, as the case may be, are pending before the registrar or the High Court, further proceedings in the suit shall be stayed, until final disposal of rectification proceedings. If proceeding are not pending, and the plea regarding invalidity of registration of concerned mark is raised, the Court trying the suit is to be prima-facie satisfied about tenability of the issue, and if it is so satisfied, it shall frame an issue to that effect and adjourn the case for three months, from the date of framing of the issue, in order to enable the party concerned to apply to the High Court for rectification of register. The consequences of the raising of issue are twofold. In case, the party concerned, makes an application for rectification within the time allowed, under sub Clause (ii) of sub Clause (b) of sub Section (1), whether originall ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or rectification could not be filed prior to the institution of the suit. The plea of the plaintiffs therefore, is that their application for rectification filed before the Appellate Board is maintainable without prima-facie satisfaction of the tenability of their plea by the Court. If the application for rectification of the defendant's trade mark is maintainable without prima-facie satisfaction of this Court, then this suit is also liable to be stayed as claimed by the plaintiffs under Section 124(b) of the Act, though under Section of 124(5) of the Act, the application for injunction and for vacation or modification of an ex parte order can be considered and decided by this Court. The distinction between Sections 124(b)(i) and 124(b)(ii) is on the basis of pendency of the proceedings for rectification of the register and not on the basis of whether the party initiating the proceedings for rectification could initiate such proceedings before the institution of the suit or not. There can be other eventualities under which a party may not be able to initiate the proceedings for rectification before the institution of the suit, but, that will not give them a right to circumvent ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rder to enable the party to invoke the provisions of Section 124 of the Act. The learned Division Bench observed thus: It was however submitted on behalf of the appellants/plaintiffs that in view of provisions of Section 124 of the Act there should have been a stay of the proceedings when the validity of the registration of trade mark is in question. However, in the present case, the provisions of Section 124(i)(b)(ii) would not be applicable. The said provisions are applicable only to an application for rectification which is already pending, in view of which, the suit could be stayed, pending final disposal of such proceedings. The provisions which would be applicable to the facts and circumstances of the present case are those which envisage that where the application for rectification of the order in such proceeding is not pending, then a party seeking rectification applies for rectification, subject to a prima-facie satisfaction of the Court regarding invalidity of the registration of the mark of the opposite party. The appellants/plaintiffs therefore could not have filed an application for rectification without showing, establishing and obtaining prima-facie satisfaction o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... asis of the rectification petition which was filed by the defendant against the plaintiffs trade mark more or less during the same period in the year 2005, when the suit was pending and with the similar facts. 16. Once, it is clear that the defendant has accepted the findings of the learned Division Bench and the facts and circumstances in which the present rectification is filed are the same as that of the plaintiffs rectification, then the findings of the Division Bench will continue to bind the defendant as well and thus, no differential treatment can be given to the defendant's rectification application which was filed in the year 2005, once the defendant accepted the finding that the leave of the Court is a condition precedent for invocation of Section 124 of the Act. 17. In the case of Barkat Ali Another v. Badrinarain reported in 2008 (4) SCC 615, the Hon'ble Supreme Court has held as under: 8. The principles of res judicata not only apply in respect of separate proceedings but the general principles also apply at the subsequent stage of the same proceedings also and the same Court is precluded to go into that question again which has been decided or deem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s preferred by the defendant against the plaintiffs mark just like the plaintiffs preferred the same against the defendant's mark during the same time in the year 2005. That however by itself does not mean that the party may be allowed to take contradictory pleas and seek re-adjudication of the same issue. 24. Furthermore, allowing the present application would be abuse of the process of the law as the same may lead to recalling the order of the learned Single Judge of co-ordinate bench which had been affirmed in the appeal by the Division Bench. Thus, going in to the enquiry on the aspect of leave of the Court which has been decided by the Division Bench and finding variance would be an exercise against judicial discipline. Thus, the present application cannot be entertained in view of the decision of Division Bench and reasons stated above. 25. The application is thus, a clear abuse of the process of the law. The distinctions which the learned counsel for the applicant/ defendant has drawn in order to distinguish the previous decisions are miniscule in nature and do not change the case of the defendant at all. It is immaterial if the name of the plaintiff was not recor ..... X X X X Extracts X X X X X X X X Extracts X X X X
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