Full Text
Date of Decision: 28th November, 2022.
C.O. (COMM.IPD-TM) 243/2022 BENNETT, COLEMAN AND COMPANY
LIMITED ..... Petitioner
Through: Mr.Hemant Singh, Mrs.Mamta Rani Jha and Mr.Amitesh Mishra, Advocates.
Through: Ms.Shwetasree Majumder, Mr.Prithvi Singh and Ms.Devyani Nath, Advocates.
Ms.Anushkaa Arora, Mr.Sahaj Garg, Senior Panel Counsels (UOI) and
Mr.Aditya Sharan, Advocates for R-2
JUDGMENT
1. The present rectification petition has been filed on behalf of the petitioner for rectification of the trademark register qua trademark registration no.1252812, which is registered in class 99 (classes 38 and 41) in favour of the respondent no.1 since 2nd December, 2003.
2. The present application has been filed on behalf of the respondent no.1 seeking dismissal of the aforesaid rectification petition.
3. Notice in this application was issued on 5th March, 2022 and reply has been filed on behalf of the respondent no.1. Rejoinder thereto has also been filed on behalf of the respondent no.1.
4. Counsel for the respondent no.1 submits that the petitioner was aware of the registration in favour of the respondent no.1 as far back as on 6th June, 2018 and despite a suit, being CS(COMM) 253/2019, having been filed by the petitioner against the respondent no.1 on 10th May, 2019, the petitioner took no steps to have a preliminary issue framed on the alleged invalidity of the respondent no.1’s trademark. Therefore, in view of the judgment of the Supreme Court in Patel Field Marshal Agencies and Anr. v. P.M. Diesels Limited and Ors., (2018) 2 SCC 112, followed by a Coordinate Bench of this Court in Resilient Innovations Pvt. Ltd. v. Phonepe Private Limited & Anr., (2021) 88 PTC 610, the present rectification petition filed on behalf of the petitioner is not maintainable.
5. Counsel for the respondent no.1 has placed reliance on the pleadings in the aforesaid suit to submit that the mark in respect of which rectification is sought by the petitioner herein, was subject matter of the aforesaid suit. Therefore, in terms of Section 124 read with Section 30(2)(e) of the Trade Marks Act, 1999, a preliminary issue would be required to be framed in the aforesaid suit before a rectification application can be filed.
6. Per contra, the counsel for the petitioner submits that the impugned trademark registration, which is the subject matter of the rectification petition, is not in issue in CS(COMM) 253/2019. In the said suit, the petitioner has claimed proprietary rights over the trademark “NOW” and “NOW” formative marks including “ENOW”. Reference is this regard has been made to paragraphs 19, 20 and 21 of the plaint in CS(COMM)253/2019. Hence, the petitioner herein has sought injunction BANSAL against the respondent no.1 using the trademarks “E! NOW” and “E! NEWS NOW”. Therefore, it is submitted that the judgments relied upon by the respondent no.1 are not applicable in the facts of the present case.
7. I have heard the counsels for the parties.
8. Section 30(2)(e) and Section 124(1) of the Trade Marks Act, 1999 are set out hereunder: ―30. Limits on effect of registered trade mark. – 2… A registered trade mark is not infringed where— (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.‖ … ―124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.— (1) Where in any suit for infringement of a trade mark— (a) the defendant pleads that registration of the plaintiff‘s trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to the plaintiff‘s or defendant‘s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings 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 Appellate Board for rectification of the register.‖
9. To appreciate the rival submissions, a reference may be made to the BANSAL relevant paragraphs of the plaint in CS(COMM) 253/2019: ―3. That the alleged usage of the marks ‗E! NOW‘ and ‗E News NOW‘ is a spurious and malafide besides being an afterthought done simply to defeat the rights vested by the Plaintiff in using the mark and Logo of ‗NOW‘. 4…
(iv) That on 10.10.2018, the Defendant Company filed the evidence in support of opposition under Rule 45 in Trade mark Application NO. 3679905 and for the first time claimed its right over the mark E! NEWS NOW only and not E Now.‖
10. From a reading of the plaint as a whole it emerges that the cause of action for filing the aforesaid suit by the petitioner herein was on account of respondent no.1 ascertaining rights over the marks “E! NOW” and “E NEWS NOW”. In the prayer clause, a decree of permanent injunction is sought against the respondent no.1 herein from using the channel/domain “E! NOW” and “E! NEWS NOW”, which is deceptively similar to petitioner’s mark “E NOW”. There is no pleading in the plaint with regard to the mark “ /E!” and no injunction has been sought against the said mark. Therefore, the mark “ /E!” is the not the subject matter of the aforesaid suit.
11. In the written statement filed on behalf of the respondent no.1 herein in the aforesaid suit, the respondent no.1 has pleaded the registration of the mark “ /E!”, which is the subject matter of the present rectification petition. However, the aforesaid pleading in the written statement has not been raised as a defence to the cause of action pleaded in the plaint in the BANSAL aforesaid suit. In view of the aforesaid pleading made in the written statement filed on behalf of the respondent no.1 herein, the petitioner herein has rebutted the same in its replication. Merely because the respondent no.1 herein has pleaded in its written statement the fact of registration being granted in its favour in respect of the mark “ /E!”, would not expand the scope of the aforesaid suit. Admittedly, the respondent no.1 has not filed any suit seeking to restrain the petitioner herein from using the said mark.
12. A reading of the written statement filed on behalf of the respondent no.1 herein in the aforesaid suit shows that no defence has been raised by the respondent no.1 herein in terms of Section 30(2)(e) of the Trade Marks Act,
1999. The respondent no.1 has not pleaded that the registered marks of the plaintiff are identical to the mark “ /E!” or nearly resemble each other. Therefore, Section 124 (1) (b) of the Trade Marks Act, 1999 is not attracted in the present case. It is not the case of the respondent no.1 that the provision of Section 124 (1) (a) is attracted in the present case.
13. Counsel for the respondent no.1 has relied upon paragraphs 31 and 32 of the judgment in Patel Field Marshal Agencies (supra). The same are set out below: ―31. Rather, from the résumé 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, in fact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory BANSAL authority [Registrar/High Court (now IPAB)] will bind the civil court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil court as regards the prima facie tenability of the plea of invalidity.
32. Conversely, in a situation where the civil court does not find a triable issue on the plea of invalidity the remedy of an aggrieved party would not be to move under Sections 46/56 of the 1958 Act but to challenge the order of the civil court in appeal. This would be necessary to avoid multiple proceedings on the same issue and resultant conflict of decisions.‖
14. In the aforesaid judgment, relied upon by the respondent no.1, the defendants had contested the validity of the plaintiffs’ trade mark “Field Marshal” in their written statement and claimed that the same was liable to be rectified by the Trademark Registry. Similarly, in Resilient Innovations Pvt. Ltd. (supra), in the written statement filed on behalf of the petitioner therein (the defendant in the suit between the parties), it was pleaded that the registration in favour of the plaintiff therein was invalid. Therefore, the aforesaid cases were covered under Section 124 (1) (a) of the Trade Marks Act, 1999, which is not the case of the respondent no.1 here. Hence, the aforesaid judgments would not come to the aid of the respondent no.1.
15. In my considered view, the mark “ /E!”, which is the subject matter of the present rectification petition, is not the subject matter of BANSAL CS(COMM)253/2019. In fact, the cause of action for filing the present rectification petition was on account of the petitioner coming to know that the respondent no.1 has claimed exclusive proprietary rights over the mark “ /E!”, when the respondent no.1 issued notices of opposition on 11th April, 2018 against the petitioner’s applications for registration of its trademarks.
16. In view of the aforesaid discussion, Section 124 of the Trademarks Act, 1999 would not apply in the present case. There is no merit in the present application and the same is dismissed. I.A. 4832/2022 (of the respondent no.1 seeking extension of time to file counter statement/reply)
17. The present application has been filed on behalf of the respondent no.1 seeking permission to file counter statement/reply after the issue of non-admissibility of the present rectification petition as pleaded in I.A. 4831/2022 is decided.
18. Counsel for the respondent no.1 submits that the present application has been filed bonafide before 60 days period for filing the counter statement/reply had expired.
19. Counsel for the petitioner opposes the present application. He submits that the present application has been filed in a malafide manner, only to delay the proceedings in the present rectification petition.
20. I have heard the counsels for the parties.
21. In the facts and circumstances of the case, the respondent no.1 is permitted to file its counter statement/reply within four weeks from today BANSAL subject to payment of costs of Rs.50,000/- to the petitioner.
22. In view of the directions above, counter statement/reply be filed by the respondent no.1 within four weeks from today.
23. Rejoinder thereto, if any, be filed within four weeks thereafter.
24. List before the Joint Registrar for completion of pleadings on 02nd February, 2023.
25. List before Court on 15th March, 2023. AMIT BANSAL, J NOVEMBER 28, 2022 BANSAL