Trademarks Act] HC propounds: Section 124 cannot be read in a manner as to defeat the right of the party to defend his independent right to invoke Section 57,

 

The Single Bench of the Delhi High Court in the case of Anubhav Jain vs Satish Kumar Jain & Anr. consisting of Justice C. Hari Shankar held that the right conferred on the Defendant in an infringement suit, to move the Court for rectification of the register of marks is a right independent of other rights available under the Act for the same purpose. It has, therefore, to be treated as available in addition to the right available and conferred by Section 57 of the Trademarks Act, 1999 (hereinafter referred to as “the Act”). It could not be read as the only right available, in abrogation of Section 57 of the Act.

Brief Facts:

This petition was filed by Anubhav Jain, one of the Directors of M/s. Jain Shikanji Private Limited (“JSPL”) u/s 57 (Power to cancel or vary registration and to rectify the register) and 125 (Application for rectification of register to be made to Appellate Board in certain cases) of the Trademarks Act, 1999 seeking cancellation of a Certificate whereby the device mark was permitted to be registered in favour of Respondent 1. Consequently, the rectification of the register of the trademarks, by removing, therefrom, the said registered trademark of Respondent 1 had also been sought. Respondent 1 raised a preliminary objection to the maintainability of this suit, predicated on Section 124 of the Act.

Procedural History:

On September 2021, Respondent 1 filed CS (Comm) 171/2021 against the Petitioner before the Learned Commercial Court (“the learned Trial Court”), alleging that how the Petitioner was using the mark “JAIN SHIKANJI” was the same as Plaintiff’s registered mark “JAIN SHIKANJI”. An application under O₃₉ Rules 1 and 2 of the Code of Civil Procedure, 1908 (“CPC”), seeking an interlocutory injunction was also filed by Respondent 1 in the said suit. By order in November 2022, the learned Trial Court allowed Respondent 1’s application and passed an interlocutory order of injunction against the Petitioner. The Petitioner challenged the said decision by way of FAO (Comm)185/2022, which is pending before a Division Bench of this Court. Admittedly, no interlocutory orders have been passed in the said appeal to date.

 

While proceedings emanating from CS (Comm) 171/2022 stood thus, the Petitioner instituted this petition before this Court u/s 57 of the Act.

Observations of the Court:

The Bench noted that Section 124 of the Act set out a specific scheme. It applies only where there is a suit, alleging infringement of trademark, pending before a Civil Court. Section 124(1)(a) applies where, in a suit for infringement of a trademark, Defendant pleads that registration of the Plaintiff’s trademark is invalid. For Section 124(1)(a) to apply, therefore, it would be necessary for JSPL, as the defendant in CS (Comm) 171/2021, to have pleaded, in that suit, that the registration of Respondent 1’s trademark was invalid. But this requirement, was itself not satisfied as JSPL never pleaded as a defence to CS(Comm) 171/2021, the invalidity of Respondent 1’s trademark. Even on this sole ground, therefore, it would be apparent that Section 124 would not apply in this case at all.

 

The provision goes on to deal again, with two situations, in Clause (i) and (ii) which follow in the second part of the section. Between these clauses, too, it was acknowledged that clause (i) would not apply, as no proceedings for rectification of the register, instituted by the Petitioner, were pending at the time when CS (Comm) 171/2022 was filed or was being taken up by the learned Trial Court. However, service clause (ii) was pressed upon. But the same also prima facie did not apply as no plea of invalidity of the registration of Respondent 1’s mark was urged by the Petitioner, as the Defendant in CS Comm) 171/2021.

Accordingly, it concluded that Section 124, therefore, applies in certain specific circumstances, envisaged in that provision and none else. 

Reliance was placed on Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018 2 SCC 112) which underscored the position that the right conferred on the Defendant in an infringement suit to move the Court for rectification of the register of marks is independent. It is a right independent of other rights available under the Act for the same purpose. It has, therefore, to be treated as available in addition to the right available and conferred by Section 57. It could not be read as the only right available, in abrogation of Section 57 of the Act.4

 

Judgment:

The preliminary objection of maintainability was, therefore, rejected. This suit was to be re-notified on 8^th February 2023 for disposal.

Case Title: Anubhav Jain vs Satish Kumar Jain & Anr.

 

Case No: C.O. (COMM.IPD-TM) 55/2021

Coram: Hon’ble Justice C. Hari Shankar

Advocates for Petitioner: Advs. Ms. Kangan Roda and Mr. Nitesh Jain.

 

Advocates for Defendants: Advs. Mr. Gaurav Barathi, Ms. Muskan Arora and Mr. Vishal Shrivastava.

 

 

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