MERCK SHARP AND DOHME LLC v. BIOLOGICAL E. LIMITED & ANR.

8. The Petitioner has adopted its Trade Mark in the year 1977, when it applied for registration of its Trade Mark in India. The Petitioner’s Trade Mark was successfully registered in India on 23.02.1979 and a Registration Certificate bearing No.129462 was issued in favour of the Petitioner. After the registration, the Petitioner’s Trade Mark was duly renewed for a period of seven years on 14.03.1984, for further period of seven years on 14.03.1991, for further period of ten years on 14.03.2005, for a further period of ten years on 14.03.2015 and for further period of ten years on 14.03.2025. Accordingly, the Petitioner’s Trade Mark is duly renewed upto 14.03.2035 and is valid and subsisting on the Trade Marks Register as on date of filing of the present Petitions.

9. In India, the Petitioner’s Trade Mark has been used by the Petitioner at least since the commercial launch of the vaccine in India in the year 2007. Even before the commercial launch of the Petitioner’s vaccine in India, Petitioner’s Trade Mark had garnered immense spillover reputation and goodwill in India on account of its vast international use since 1975.

10. The Petitioner has statutory rights of its Trade Mark in India by virtue of being the registered proprietor thereof. The Petitioner holds trademark registration of its Trade Mark in Class 05. The details of the Petitioner’s Trade Mark along with extract from the Trade Mark Registry is set out below:

11. The aforesaid registration of the Petitioner’s Trade Mark clearly establishes that the Petitioner is the exclusive owner of the Petitioner’s Trade Mark and the exclusive statutory right in this Trade Mark vests with the Petitioner. The Petitioner’s Trade Mark is protected through registration and, therefore, there is a legal presumption of validity and ownership of the mark vested in the Petitioner in connection with the goods listed in the registration.

12. The Petitioner ever since the adoption of its Trade Mark has been using the same extensively and continuously as a brand name for its pneumococcal vaccine. The Petitioner’s Trade Mark due to its long, continuous and extensive use, has acquired distinctiveness and a secondary meaning in relation to the Petitioner’s subject product.

13. The Petitioner has been using its Trade Mark, which it coined itself, for its pneumococcal vaccine since at least the year 2007 in India. Due to its large sale base and immense goodwill nationwide, the Petitioner’s Trade Mark has become a well-known mark under section 2(1)(zg) of the Act. Accordingly, the Petitioner’s Trade Mark has acquired universal acceptance, acclamation, distinctiveness and secondary significance. The Petitioner’s Trade Mark is exclusively and solely associated with the Petitioner and with no one else and, therefore, it is fit to qualify for protection as a well-known Trade Mark within the meaning of the Act.

14. The Petitioner is aggrieved with the Impugned Trade Marks registered in the name of Respondent No. 1. The Petitioner through an independent investigator purchased Respondent No. 1’s products bearing the Impugned Trade Marks from Shahdara, Delhi. The Petitioner has contended that Respondent No. 1 is making sales of the products containing Impugned Trade Marks within the jurisdiction of this Court. Therefore, the dynamic effect of Impugned Trade Marks is well within the jurisdiction of this Court. Accordingly, this Court has jurisdiction to entertain the Rectification Petitions in view of the judgment passed by this Court in Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma & Anr.1.

15. In view of the above, the Petitioner has filed the Rectification Petitions for declaring the registration of the Impugned Trade Marks contrary to Sections 11, 12, 18, 28, 29, 102 and 103 of the Act and to cancel / rectify the registration of the Impugned Trade Marks.

16. The Petitioner has further sought direction against Respondent No. 2 to rectify / remove the Impugned Trade Marks, which comprised of Petitioner’s Trade Mark, from the Register of Trade Marks and remove the 2023 SCC OnLine Del 5409 records with regard to the registration of the Impugned Trade Mark from the Register of Trade Marks.

PRELIMINARY OBJECTIONS ON BEHALF OF RESPONDENT NO. 1

17. Respondent No. 1 has raised Preliminary Objection with regard to issuance of Notice in the Rectification Petitions on the grounds mentioned in Paragraph 3 above. Lack of Territorial Jurisdiction:

18. The learned Counsel for Respondent No.1 had submitted that the Impugned Trade Marks were granted by the Office of the Trade Mark Registry in Mumbai, Maharashtra. The issue concerning “whether rectification petitions would be maintainable only before the High Court within whose jurisdiction the Office of Trade Mark Registry, which granted the Trade Mark is situated?” is currently pending before a Larger Bench of this Court in Hershey Company v. Dlilip Kumar Bacha & Anr.2.

19. It was further submitted that the Supreme Court is also seized of the said issue in Suraj Sharma & Anr. v. Nippon Paint Holdings Company Ltd. & Anr. in SLP(C) No.10454/2024, which placed a stay on judgment dated 21.03.2024 in Nippon Paint Holdings Company Ltd. & Anr. v. Suraj Sharma & Anr. in CS(COMM) No.7/2024 passed by High Court of Judicature at Madras approving the finding of dynamic effect of registrations as held in Dr. Reddy’s Laboratories Ltd. (supra).

20. It was submitted by the learned Counsel for Respondent No. 1 that the jurisdiction of this Court is under review before a Larger Bench of this Court and because the issue of jurisdiction goes to the root, the same must be adjudicated first. The reliance was placed on the decision of the Supreme Court in Satyanath & Anr. v. Sarojamanu CA, Civil Appeal No.3680/2022 holding that if a Court lacks jurisdiction, or there is a statutory bar, the said issue is required to be decided in the first instance.

21. The learned Senior Counsel for Respondent No.1 submitted that this Court should refrain from issuing Notice pending the resolution of this issue by the Larger Bench in view of the doctrine of judicial propriety. The reliance was placed on a decision of Sundarjas Kanyalal Bhatija & Ors. v. Collector Thane, Maharashtra & Ors.[3]

22. It was also submitted that the Coordinate Benches of this Court have declined to issue Notice or have kept the proceedings in abeyance where the Notices had been issued prior to the reference of Hershey Company (supra) to Larger Bench of this Court. The learned Senior Counsel for Respondent No. 1 relied upon the following orders:

(i) Orders dated 11.12.2024, 07.04.2025 and 29.07.2024 in C.O.

(ii) Orders dated 15.03.2024, 03.07.2024 and 04.07.2024 in C.O.

(iii) Orders dated 11.10.2023, 21.02.2024, 09.07.2024 and 14.02.2025 in C.O. (COMM. IPD-TM) 227/2023 captioned Vimal Agro Products P. Ltd. v. Capital Foods P. Ltd. & Anr. (2024) 1 HCC (Del) 461

(iv) Orders dated 15.05.2024 and 20.03.2025 in C.O.(COMM. IPD-

23. The learned Counsel for Respondent No. 1 submitted that issuance of Notice in the Rectification Petitions would create procedural inconsistency and cause prejudice to Respondent No.1 as this Court lacks inherent jurisdiction. Lack of jurisdiction in absence of prima facie satisfaction of the plea regarding invalidity of the registration under Section 124 of the Act:

24. The learned Senior Counsel for Respondent No. 1 submitted that a plain reading of Section 124 of the Act clearly indicates that this Court, while trying the Suit, should be satisfied that the plea regarding the invalidity of the Impugned Trade Marks is prima facie tenable. This prima facie satisfaction has to be arrived at by this Court in the Suit prior to a notice can be issued in the Rectification Petitions, irrespective of the Rectification Petitions being filed prior or after the filing of the Suit.

25. The learned Counsel for Respondent No.1 has relied upon the decision of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd. & Anr.4, which held as under:

will have to be read and so read the same would clearly show lack of any legislative intent to limit/confine the operation of the section to what its title may convey.

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 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.

33. The 1958 Act clearly visualises that though in both situations i.e. where no suit for infringement is pending at the time of filing of the application for rectification or such a suit has come to be instituted subsequent to the application for rectification, it is the Registrar or the High Court which constitutes the tribunal to determine the question of invalidity, the procedure contemplated by the statute to govern the exercise of jurisdiction to rectify is, however, different in the two situations enumerated. Such difference has already been noted.

34. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive.”

26. In view of the above, it was submitted that the permission of this Court is required in the Suit prior to the Notice can be issued in the Rectification Petitions. The legislative intent behind Section 124 of the Act is to prevent filing of frivolous rectification petition, which is clarified by the Supreme Court in Patel Field Marshal (supra) that in a situation where Suit is pending, instituted before or after the filing of a rectification petition, the exercise of jurisdiction by this Court is contingent on a finding of the prima facie tenability of the plea of invalidity of the registered trade mark by the Court, where the Suit is pending.

27. It was further submitted by the learned Senior Counsel for Respondent No.1 that the decision in Patel Field Marshal (supra) has not been overruled or held to be per incuriam by any Coordinate Bench of the Supreme Court. Hence, the law declared by the Supreme Court is binding on this Court.

28. The learned Senior Counsel for Respondent No.1 further submitted that a plain reading of the decision in Patel Field Marshal (supra) makes it clear that where the Suit is pending, irrespective of whether it was filed before or after filing of the Rectification Petitions, the prima facie finding of invalidity by this Court in the Suit, has to be arrived prior to entertaining the Rectification Petitions where the issue of validity of the Impugned Trade Mark has been raised by the Petitioner.

29. It was submitted that the issue before the Supreme Court in Patel Field Marshal (supra) related to the scheme of the Act, which is mentioned in para 21 of the said decision as under:

30. In view of the above, the interpretation of Section 124 of the Act provided by the Supreme Court in Patel Field Marshal (supra) is a binding precedent on this Court and is not an obiter dictum.

31. The Supreme Court has examined the applicability of Section 124 of the Act and has categorically held that 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. In case the Civil Court does not find a triable issue on the plea of invalidity of the registered trade mark, the aggrieved party would have a remedy to challenge the order of the Civil Court in Appeal and would not be able to move a rectification application. The Supreme Court has decided this approach to avoid multiple proceedings on the same issue and resultant conflict of decisions.

32. The learned Senior Counsel for Respondent No.1 submitted that the requirement under Section 124 is mandatory as the Defendant in the Suit either (a) pleaded invalidity of the Plaintiff’s trademark or (b) raise a defence under Section 30(2)(e) of the Act, in response thereof, the Plaintiff should have pleaded invalidity of defendant’s trademark. The requirement does not distinguish between circumstances where the rectification application was filed prior to the Suit or the same is filed after filing of the Suit. Once the requirement under Section 124 of the Act is fulfilled by the Court entertaining the Suit, the rectification petitions can be considered by this Court.

33. The learned Senior Counsel for Respondent No.1 submitted that the scheme of Section 124 of the Act as explained in Patel Field Marshal (supra) has been confirmed by the subsequent judgment of this Court in Intercontinental Great Brands LLC v. Parle Product Private Limited, (2023) SCC OnLine Del 7074. It was further submitted that whether statute sets out the manner in which a challenge has to be made, it has to be made in the same manner, or not at all. It was submitted that the Petitioner’s attempt to confine the pre-requisites of Section 124 only to cases where a rectification petition is filed after the filing of the suit is contrary to the text of Section 124 of the Act and settled legal position.

34. It was further submitted by learned Senior Counsel for Respondent No.1 that Section 124 of the Act does not contemplate automatic stay of the suit. The interpretations suggested by the Petitioner that no permission of this Court under Section 124 is required as the Suit was filed subsequent to the filing of the Rectification Petitions, is contrary to judicial precedent and legislative scheme. If the Petitioner’s interpretation is held to be correct, it would have an effect of limiting the applicability of the decision in Patel Field Marshal (supra) to cases where a rectification petition is filed subsequent to filing of the suit, which is not permissible. It would also permit automatic stay of the suit upon mere filing of rectification petition prior to the suit, which is contrary to the scheme and purpose of the Act.

35. In view of the above, it was submitted by the learned Senior Counsel for Respondent No.1 that until permission is sought from this Court under Section 124 of the Act in the pending Suit filed by the Petitioner, no notice can be issued in the present Rectification Petitions. Non-est filing of the Rectification Applications:

36. The learned Senior Counsel for Respondent No.1 submitted that the Rectification Petitions as originally filed on 28.05.2025 were procedurally non-est. It was submitted on 29.05.2025, the Registry raised fundamental and substantive defects in the Rectification Petitions including: a. Absence of an affidavit, vakalatnama, statement of truth; b. Non-filing of index and documents under Order XI of CPC; c. No Order XI certificate on Declaration on Oath, authorization letter or proper Court fees.

37. As there were fundamental defects in filing of the Rectification Petitions, the Petitioner cannot be given the benefit of initial filing on 28.05.2025. The learned Senior Counsel for Respondent No.1 relied upon the decisions of this Court in DDA v. Durga Construction Company, (2013) SCC OnLine Del 4451 and Gautam Gambhir v. M/s/ Jai Ambey Traders & Ors., CS(OS) 149/2018.

38. The learned Senior Counsel for Respondent No.1 also relied upon the decisions of this Court in Union of India v. M/s Panacea Biotec Limited in FAO(OS) (COMM) 81/2020 and SKS Power Generation (Chhattisgarh) Ltd. v. ISC Projects Private Limited,[5] to submit that affidavit rendered in absence of authorization and/or invalid, unsigned and unverified pleadings are treated as non-est.

39. It was further submitted mere non-filing of vakalatnama/statement of truth would not individually render a petition to be declared as non-est, however, the presence of more than one of such defects may render the filing liable to be declared as non-est.

40. The learned Senior Counsel for Respondent No.1 relied upon the decision of Pragati Construction Consultants v. Union of India and Another[6] to submit that since there were multiple defects which were fundamental in nature, the Petitioner cannot take benefit of the original/initial filing made on 28.05.2025. Accordingly, the Rectification Petitions were not ‘pending’, when the Suit was instituted on 29.05.2025.

41. It was further submitted that there was a delay in re-filing the Rectification Petitions beyond the seven-day timeline prescribed by Chapter IV, Rule 3 of the Delhi High Court (Original Side) Rules, 2018. The procedural history of filing of the Rectification Petitions and the Suit show that the refilling was done beyond the seven-day timeline from the raising of the objection by the Registry on two occasions as under:

Event Civil Suit Rectification Petitions Original Filing 29.05.2025 28.05.2025 First Objection -- 29.05.2025 Refiling I -- 09.06.2025 Second Objection -- 21.06.2025 Refiling II -- 02.07.2025 Listed before Court 30.05.2025 04.07.2025

42. The learned Senior Counsel for Respondent No.1 submitted that the Petitioner has not filed any Application seeking condonation of delay in re-filing of the Rectification Petitions. Accordingly, the Petitioner cannot take the benefit of the original filing date of 28.05.2025 as each re-filing will have to be treated as fresh filing in view of the violation of seven-day time prescribed for removing the objections raised by the Registry. As the above dates show that the re-filing was done beyond the period of seven days and, in absence of any Application for Condonation of Delay in re-filing, the Rectification Petitions cannot be treated to have been filed prior to the filing of the Suit.

43. In view of the above, the learned Senior Counsel for Respondent No.1 submitted that until the mandatory requirement under Section 124 of the Act is fulfilled, the present Rectification Petitions cannot be entertained by this Court.

RESPONSE TO PRELIMINARY OBJECTIONS ON BEHALF OF THE PETITIONER

44. The learned Counsel for Petitioner submitted that all the Preliminary Objections raised on behalf of Respondent No.1 are not tenable and this Court has territorial jurisdiction to entertain and decide the Rectification Petitions. Hence, the notice should be issued in the Rectification Petitions while rejecting the Preliminary Objections raised on behalf of Respondent No.1. Reply to Lack of Territorial Jurisdiction:

45. The learned Counsel for the Petitioner submitted that this Court has the territorial jurisdiction to entertain and decide the Rectification Petitions despite the Impugned Trade Marks having been granted by the Trade Mark Registry in Mumbai, Maharashtra.

46. The learned Counsel for the Petitioner relied upon paragraph 62 of the Rectification Petitions, which states that this Court has territorial jurisdiction to try and entertain the Rectification Petitions as Respondent No.1 is using, displaying and advertising the Impugned Trade Marks, which are virtually identical to the Plaintiff’s Trade Mark. The products with the Impugned Trade Marks are available on Respondent No.1’s website https://www.biologicale.com/ and online pages such as LinkedIn, which are accessible in India including Delhi. It was further submitted that Respondent No.1 is using the Impugned Trade Marks within the jurisdiction of this Court and the dynamic effect of the registration of the Impugned Trade Marks is felt within the jurisdiction of this Court.

47. It was further submitted that Respondent No.1 is carrying on business within the territorial jurisdiction of this Court through the listings of Respondent No.1’s products containing Impugned Trade Marks on third party e-pharmacy and e-commerce websites, which are accessible from all over India, including within the territory of this Court. It was also submitted that Respondent No.1 has a sales and marketing office in Delhi through which it advertises and uses the Impugned Trade Marks and the same is claimed by Respondent No.1 in its report filed along with the Rectification Petitions.

48. The learned Counsel for the Petitioner submitted that the product bearing the Impugned Trade Marks was purchased from the market in Delhi by the Petitioner’s Investigator on 27.05.2025 within the jurisdiction of this Court, which shows that Respondent No.1 is making sales of the products with the Impugned Trade Marks within the jurisdiction of this Court. In view of the dynamic effect of the registration of the Impugned Trade Marks being felt within the jurisdiction of this Court, this Court has territorial jurisdiction to entertain and decide on the Rectification Petitions.

49. The learned Counsel for the Petitioner submitted that although the issue concerning the maintainability of the Rectification Petitions in a Court other than where the office of Trade Mark Registry, which granted the trademark, is situated, is pending before the Larger Bench of this Court in Hershey Company (supra), there is no bar in proceeding with the rectification petition as there is no order passed till date restraining other Courts from deciding the issues of law involved in reference to the Larger Bench and there is no stay of the operation of the judgment passed in the case of Dr. Reddy’s Laboratories (supra).

50. It was submitted that when the issue is pending before a Larger Bench, the Supreme Court has in the decision of National Insurance Co. Ltd. v. Pranay Seth[7] has held that an earlier decision by a Coordinate Bench remained binding on a later bench of coordinate jurisdiction, even if the later bench considers it incorrect. It was submitted that simply deeming an earlier decision per incuriam is not permissible. It was submitted that the conflict must be resolved either by strictly following the earlier decision or by referring the matter to a Larger Bench for re-examination. However, when two conflicting decisions are placed before a later bench, the earlier decision is followed and not the latter.

51. It was submitted by the learned Counsel for the Petitioner that since the decision in Dr. Reddy’s Laboratories (supra) was prior in time, the same should be followed to determine the territorial jurisdiction of this Court. As regards the orders passed in other matters by the Coordinate Benches which adjourned the matters to await the outcome of the decision of the Larger Bench in Hershey Company (supra), learned Counsel for the Petitioner submitted that those matters were adjourned by the consent of the Parties and the said orders are not binding on this Bench.

52. The learned Counsel for the Petitioner relied upon the decision of Supreme Court in Ashok Sadarangani v. Union of India[8], where it is held that the pendency of a reference to a Larger Bench does not mean that all other proceedings involving the same issue would remain stayed till a decision was rendered in the reference. It was further emphasized by the Supreme Court that existing precedence continue to hold the field until they are modified or altered. It was submitted that a reference to a Larger Bench does not hold the ongoing proceedings.

53. The learned Counsel for the Petitioner also relied upon the decision of Supreme Court in Harbhajan Singh v. State of Punjab[9], which held that the pendency of a reference before a Larger Bench does not require the later Bench to await the decision of the Larger Bench.

54. The learned Counsel for the Petitioner also relied upon the decision of this Court in Neeraj Singhal v. Directorate of Enforcement10, which relied upon the decision of Five-Judge Bench in National Insurance Company (supra) that when faced with conflicting judgements of Bench of equal strength, it is the earlier one which is to be followed.

55. The learned Counsel for the Petitioner relied upon the orders passed by this Court issuing notice in the rectification petitions filed before this Court, when the office of the Trade Mark Registry was not located within the territorial jurisdiction of this Court. The details of the said orders are as under:

S. NO. CASE NO.

INSTITUTED BEFORE APPROPRIATE OFFICE OF IMPUGNED REGISTRATIO DATE OF ISSUANC E OF NOTICE

1. C.O. (COMM.IPD-TM) 155/2025 IPD-DELHI HC AHMEDABAD App. No. Notice issued vide order dt. 10.07.2025.

2. • C.O.(COMM.IPD TM) 143/2025 • C.O.(COMM.IPD TM) 144/2025 TM) 148/2025 TM) 149/2025 IPD-DELHI HC MUMBAI • TM App. No.1427174 • TM App. No.142716 • TM App. No.142714 • TM App. No.1427170 Notice order dt. 04.07.2025.

3. C.O. (COMM.IPD-TM) 150/2025 IPD-DELHI HC CHENNAI TM App. NO. 04.07.2025.

4. C.O. (COMM.IPD- TM) 142/2025 IPD-DELHI HC CHENNAI App. No. 4008689 02.07.2025.

5. C.O.(COMM.IPD- TM) 141/2025 IPD-DELHI HC No. 5010803 02.07.2025.

6. C.O.(COMM.IPD- TM) 138/2025 IPD-DELHI HC No. 3172294 29.05.2025.

7. C.O.(COMM.IPD- TM) 130/2025 IPD-DELHI HC No. 3017399 29.05.2025.

8. C.O.(COMM.IPD- TM) 123/2025 IPD-DELHI HC MUMBAI TM App. NO. 27.05.2025.

9. C.O.(COMM.IPD- TM) 119/2025 IPD-DELHI HC MUMBAI App. No. 3571958 16.05.2025. 10 C.O.(COMM.IPD- TM) 4/2025 IPD-DELHI HC MUMBAI TM App. NO. 16.04.2025.

56. The learned Counsel for the Petitioner also submitted that the territorial jurisdiction has to be determined on a demurrer. It was submitted that when the rectification petitions disclose sufficient facts to establish territorial jurisdiction of this Court, the same has to be decided by way of demurrer and not at the trial. To decide the territorial jurisdiction, which is a matter of law, the averments made in the Rectification Petitions should be taken as correct and this Court must proceed on the basis that the statements made in the Rectification Petitions with regard to the jurisdiction of this Court are true. The learned Counsel for the Petitioner relied upon the decision of Exphar SA & Anr. v. Eupharma Laboratories Ltd. & Anr.11 in support of his submission.

57. Accordingly, it was submitted that this Court should issue notice in the Rectification Petitions and reject the preliminary objections raised by Respondent No.1. Response to the Objection regarding Section 124 of the Act:

58. The learned Counsel for the petitioner submitted that the preliminary objection with regard to lack of jurisdiction in absence of prima facie satisfaction of the invalidity of the registration of the Impugned Trade Marks by this Court in the Suit under Section 124 of the Act is without any merit. It was submitted that when the Suit is filed after filing of the rectification petition, the permission of this Court in the suit under Section 124 of the Act is not necessary to file the Rectification Petitions.

59. It was further submitted that the reliance placed by Respondent No.1 on Patel Field Marshal (supra) to argue that this Court will come into sciscin upon a prima facie finding of tenability of the plea of invalidity of the Impugned Trade Marks, is without any merit. It was submitted that the law laid down in Patel Field Marshal (supra) is not applicable in the facts of the present case because: a. The Rectification Petitions were filed prior to institution of the Suit. The Rectification Petitions were filed on 28.05.2025, whereas the Suit was filed on 29.05.2025.

b. The Rectification Petitions are governed by Section 124 (1)(b)(i) of the Act and, therefore, the decision of Patel Field Marshal (supra) is not applicable as held by this Court vide judgment dated 01.09.2022 in CS(Comm.) 363/2017 in the matter of Perfetti Van Melle S.P.A. & Anr. v. Suresh Nanik Lilaram Hingorani & Ors. c. Section 124 of the Act is not invoked and, therefore, the decision in Patel Field Marshal (supra) is not applicable since the defence under Section 30(2)(e) of the Act has not been taken in the Suit as held in Nadeem Maij Oomerbhoy v. Gautam Tank & Ors.12

60. It was submitted by the learned Counsel for the Petitioner that the emails from the Registry of this Court as well as the screenshot of the filing portal of this Court clearly shows that the Rectification Petitions were filed prior to the filing of the Suit. The case history of this Court clearly shows that the Rectification Petitions were filed on 28.05.2025 and the dairy numbers were provided on the e-filing management system of this Court, the screenshots providing the dairy numbers state that a confirmation email message has been sent and the e-filing is subject to scrutiny. The copy of the emails received by the learned Counsel for the Petitioner show that emails were sent on 28.05.2025 confirming the e-filing and providing the dairy numbers and time of filing. This shows that the Rectification Petitions were filed on 28.05.2025 prior to filing of the Suit. As the Rectification Petitions were prior in time, the decision in Patel Field Marshal (supra) is not applicable in the facts of the present case as the issue before the Supreme Court was in relation to the rectification petition filed after the filing of the suit.

61. It was submitted by the learned Counsel for the Petitioner that Rectification Petitions are governed by Section 124(1)(b)(i) of the Act which provide as under:

62. The learned Counsel for the Petitioner relied upon the decision of this Court in Perfetti Van Melle (supra), which held as under:

Marshal Agencies (supra) was specifically confined to a case where such rectification petition is not pending as on the date of the institution of the suit and the effect of the Court not finding the challenge to the registration of the mark of the plaintiff or defendant, as the case may, to be prima facie tenable or where the Court finds the same to be prima facie tenable but the plaintiff or the defendant, as the case may be, does not approach the Tribunal (now High Court) within the time granted by the Trial Court to challenge the registration of the mark. This is evident from a reading of not only the issue framed by the Supreme Court for consideration but also from the judgment quoted hereinabove.

19. In BGS SGS Soma JV v. NHPC Limited, (2020) 4 SCC 234, the Supreme Court has reiterated that the judgments of the Court are not to be construed as statues, neither are they to be read as Euclid's theorems. All observations made must be read in the context in which they appear. The judgment must be read as a whole to reveal the true ratio of the judgment. In this regard, this Court may quote from the judgment, as under: Observations of courts are neither to be read as Euclid’s theorems nor as provisions of the statue and that too taken out of their context. These observations must be read in the context in which they appear to have been stated. Judgments of courts are not to be construed as statutes. To interpret words, phrases and provisions of a statute, it may become necessary for Judges to embark into lengthy discussions but the discussion is meant to explain and not to define. Judges interpret statutes, they do not interpret judgments. They interpret words of statutes; their words are not to be interpreted as statutes.” [emphasis supplied]

63. In view of the above decision, it was submitted by the learned Counsel for the Petitioner that this Court has in Perfetti Van Melle (supra) has examined the decision of the Supreme Court in Patel Field Marshal (supra) and has explained that the said decision would not be applicable in the cases where a rectification petition had been filed prior to the institution of the suit. Since, the issue considered by the Supreme Court in Patel Field Marshal (supra) was specifically confined to a case where rectification petition was not pending as on the date of the institution of the suit and the effect of the Court not finding the challenge to the registration of the mark challenged in the suit to be prima facie tenable. In view of the same, it was submitted that all observations made in a judgement must be read in context in which they appear and the judgement must be read as a hold to reveal the true ratio of the judgment. As the issue before the Supreme Court did not relate to a case in which the rectification petition was filed prior to the institution of the suit, the decision in Patel Field Marshal (supra) will not be applicable to the facts of the present case.

64. It was further submitted by the learned Counsel for the Petitioner that the question of applicability of Section 30(2)(e) of the Act never arose for consideration as the Petitioner has straightaway challenged the validity of the Impugned Trade Marks. Hence, there was no occasion for seeking permission under Section 124 of the Act before this Court in the Suit.

65. The learned Counsel for the Petitioner relied upon the Nadeem Maij (supra) which hold that:

31. The learned amici are ad idem that the court cannot shut its eyes to the fact that the defendants have registration of the impugned SUPER POSTMAN trade mark, in the face of Sections 28(3), 29 and 30(2)(e). They also agree that Section 124 would not apply as there is no specific defence taken by the defendants under Section 30(2)(e).

32. Learned amici have suggested that one way forward would be for this Court to exercise the jurisdiction vested in it by Section 57(4) [57.Power to cancel or vary registration and to rectify the register.— ∗∗∗ (4) The after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).] of the Trade Marks Act.

33. The plaintiff has already manifested its intention to question the validity of the registration of the defendants' SUPER POSTMAN trade mark. That challenge, however, was raised under Section 124, which is not applicable in the facts of the present case. Inasmuch as such a challenge has specifically been raised, and Sections 29(1) and 30(2)(e) proscribe the court from returning any finding of infringement without in the first instance invalidating the defendants' registration, the court is inclined to accept the suggestion of learned amici and to examine the validity of the defendants' trade mark in exercise of the suo motu powers conferred on it by Section 57(4), which is vested in it independent of Section 124. I may refer, in this context, to para 26 of the judgment in Jagatjit Industries Ltd. v. IPAB [Jagatjit Industries Ltd. v. IPAB, (2016) 4 SCC 381: (2016) 2 SCC (Civ) 606]: (SCC p. 401, para 26) “26. Secondly, the Division Bench of the High Court is also correct in reasoning that Section 125(1) would only apply to applications for rectification of the register, and not to the exercise of suo motu powers of the Registrar under Section 57(4). The reason is not hard to seek. If the Registrar is barred from undertaking a suo motu exercise under Section 57(4) to maintain the purity of the register, there could conceivably be cases where a defendant, after raising the plea of invalidity in a suit for infringement, chooses not to proceed with the filing of a rectification petition before the Appellate Board. This may happen in a variety of circumstances: for example, take the case where, after raising the plea of invalidity in a suit for infringement, the matter is compromised and the defendant therefore does not file a rectification petition before the Appellate Board. The Registrar's power to maintain the purity of the register of trade marks would still remain intact even in such cases, as has been held by the judgment in Hardie case [Refer Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92].”

34. In that view of the matter, list this matter on 31-10-2023 to hear both sides on the aspect of validity of the registration granted to the defendants' SUPER POSTMAN trade mark on 13-2-2023. As Mr Bansal, learned counsel for the defendants is present, this order shall be treated as notice to him, as envisaged by Section 57(4).” [emphasis supplied]

66. It was, accordingly, submitted that Section 124 of the Act is not applicable to the Rectification Petitions and the decision of Patel Field Marshal (supra) cannot be applied to the facts of the present case.

67. It was further submitted by the learned Counsel of the Petitioner that it is a settled position of law that a decision is available as a precedent only if it decides a question of law. A judgment should be understood in the light of the facts of that case and no more should be read into it than what is actually says. It is neither desirable nor permissible to pick out a word or a sentence from the judgement of the Court divorce from the context of the question under consideration and treated to be complete law decided by the Court as held by the Supreme Court in case of Mehboob Dawood Sheikh v. State of Maharahstra.13

68. It was further submitted that it is a settled position of law that a decision not expressed, not accompanied by reasons and not proceeding on a conscious consideration of an issue cannot be deemed to be a law declared to have a binding effect as is contemplated by Article 141 of the Constitution of India, 1950. A decision is passed sub silentio in the technical sense that has come to be attached to that phrase, when the particular point of law involved in the decision is not perceived by the Court or present to its mind. Reliance was placed on Municipal Corporation of Delhi v. Gurnam Kaur14, State of U.P. and Ors. v. Synthetics and Chemicals Ltd. And Ors.15, Delhi Transport Corporation v. Mrs. Vidyawati & Ors.16 and NBCC (India) Limited v. State of West Bengal & Ors.17

69. In view of the above, it was submitted that this Court has jurisdiction to issue notice in the Rectification Petitions even while the issue regarding dynamic effect of the registration is pending before the Larger Bench of this Court. Reply to non-est filing of Rectification Petitions:

70. The learned Counsel for the Petitioner submitted that the Rectification Petitions were filed on 28.05.2025 and the defects were raised on 29.05.2025. The Petitioner cleared the defects and refiled the Rectification Petitions on 09.06.2025 although in view of Section 4 of the Limitation Act,

WP(C) No.1641/1999, Relevant Paras 10, 11, 12. 1963 and Rule 10.[1] of the Delhi High Court (Original Side) Rules, 2018, the time to cure defects stood suspended during the Court Vacation.

71. The learned Counsel for the Petitioner submitted that after curing the defects, the Rectification Petitions were served on the Respondents on 09.06.2025. As per the Court records the defects were removed on 21.06.2025. On 30.06.2025, the second set of defects were raised and after curing the defects, the Rectification Petitions were served on the Respondent on 01.07.2025 and refiled on 02.07.2025. The Rectification Petitions were listed for first time before this Court on 04.07.2025.

72. Accordingly, it was submitted that there was no delay in curing the defects. In fact, the date of listing given in the urgent application of the Rectification Petitions filed on 28.05.2025 was 30.05.2025 and not 01.07.2025 as wrongly submitted by Respondent No. 1.

73. It was further submitted that the defects raised by the Registry of this Court were remediable irregularities, which were indeed cured and cleared prior to the listing of the Rectification Petitions. Hence, the filing of the Rectification Petitions was not non-est.

74. It is settled law that the procedural law is subservient to and is in aid to justice and cannot defeat the ends of justice. Reliance was placed on Shaikh Salim Haji Abdul Khayumsab v. Kumar and Ors.18 It was further submitted that non-est filing is a consideration where there is a factor of limitation. As the defects notified were mere irregularities that were curable and capable of being rectified, the filing cannot be held to be a non-est. In (2025) 3 SCC 440, Relevant Paras 53, 54, 55.

support of this submission, reliance was placed on Prafulla Chandra Bidwai v. All India Institute of Medical Sciences and Anr.19

75. It was submitted that the term non-est conveys the meaning of something treated to be non-existent because of the legal lacuna in the process of creation of the subject instrument and goes beyond remediable irregularities. Reliance was placed on Sunny Abraham v. Union of India and Anr.20

76. The learned Counsel for the Petitioner submitted that the conduct of the Petitioner in curing the defects is also a relevant factor while determining whether a filing is non-est. Reliance in this regard was placed on Raj Kumar Gupta v. Narang Constructions & Financiers Pvt. Ltd.21 As the Petitioner promptly cured the defects notified by the Registry in the Rectification Petitions, the conduct of the Petitioner shows bona fide intent of the Petitioner and, accordingly, the filing of the Rectification Petition cannot termed as non-est.

FINDINGS AND ANALYSIS:

77. Having considered the rival submissions of the Parties with regard to the Preliminary Objections raised by Respondent No. 1 to oppose the issuance of Notice in these Rectification Petition, the finding on each of the Preliminary Objections is as under: (2003) (71) DRJ (DB), Relevant Para 14.

78. Admittedly, the Impugned Trade Marks are registered at Trade Mark Registry, Mumbai. However, the Rectification Petitions have been filed before this Court. The Parties have submitted that the issue concerning “whether rectification petitions would be maintainable only before the High Court within whose jurisdiction the Office of Trade Mark Registry, which granted the Trade Mark is situated?” is currently pending before a Larger Bench of this Court in Hershey Company (supra). It was also submitted that the Supreme Court is also seized of the said issue in Suraj Sharma (supra) on the issue of dynamic effect of registrations as held in Dr. Reddy’s Laboratories Ltd. (supra).

79. Respondent No. 1 has taken a stand that pending consideration of the issue of jurisdiction by the Larger Bench and the Supreme Court, these Rectification Petitions should be adjourned without issuing the Notice.

80. The Petitioner has submitted that this Court has territorial jurisdiction to entertain and decide the Rectification Petitions despite the Impugned Trade Marks having been granted by the Trade Mark Registry in Mumbai due to dynamic effect being felt of the registration within the jurisdiction of this Court given that Respondent No. 1 is using, displaying and advertising the Impugned Trade Marks and the products with the Impugned Trade Marks are available is Delhi and, additionally, Respondent No.1 is carrying on business within the territorial jurisdiction of this Court. It was further submitted that pendency of Hershey Company (supra) is not a bar to proceed with the Rectification Petition as there is no stay of the operation of the judgment passed in the case of Dr. Reddy’s Laboratories (supra). It was also submitted that when the issue is pending before a Larger Bench, the Supreme Court has in the decision of National Insurance (supra) has held that an earlier decision by a Coordinate Bench remained binding on a later bench of coordinate jurisdiction, even if the later bench considers it incorrect.

81. As there is no stay of the operation of the decision in Dr. Reddy’s Laboratories (supra), which is prior in time, and given the averments made in the Rectification Petitions regarding the existence of dynamic effect of registration of the Impugned Trade Marks within territorial jurisdiction of this Court, the preliminary objection with regard to lack of jurisdiction on the ground of pendency of the issue before the Larger Bench is not tenable at this stage in view of the decisions in Ashok Sadarangani (supra), Harbhajan Singh (supra) and Neeraj Singhal (supra).

82. If during the pendency of the Rectification Petitions, if there is change in legal position regarding the dynamic effect of registration, the same will be applicable to these Rectification Petitions as well depending on outcome of the matters pending before the Larger Bench of this Court and the Supreme Court.

83. Accordingly, the Rectification Petitions cannot be adjourned without issuance of Notice. The Parties have referred to several orders passed by this Coordinate Benches of this Court wherein the rectification petitions have been adjourned to await the outcome of the decision of the Larger Bench on the jurisdiction where the parties have agreed by mutual consent to adjourn the rectification petition. Equally, there are number of orders passed in other rectification petitions where this Court has issued Notice irrespective of the pendency of the issue before the Larger Bench.

84. When there is no mutual agreement to adjourn the Rectification Petitions, there is no impediment for issuing Notice in the present Rectification Petitions without prejudice to the objection of Respondent NO. 1 with regard to territorial jurisdiction to entertain and decide the Rectification Petitions as the Impugned Trade Marks were granted by the Trade Mark Registry in Mumbai, which issue is pending consideration before the Full Bench of this Court.

85. In view of the above, this Court has jurisdiction to issue Notice in the Rectification Petitions even while the issue regarding dynamic effect of the registration is pending before the Larger Bench of this Court. Requirement of Permission under Section 124 of the Act:

86. Second preliminary objection raised by Respondent No. 1 is with regard to the requirement of permission by this Court in the Suit filed by the Petitioner and that this Court can exercise the jurisdiction in the Rectification Petitions only upon this Court finding that the plea of invalidity of the Impugned Trade Marks are prima facie tenable under Section 124 of the Act in the Suit irrespective of whether the Suit was instituted prior to or after the filing of the Rectification Petitions.

87. Respondent No.1 has primarily relied upon the decision of the Supreme Court in Patel Field Marshal (supra) to submit that the permission of this Court is required in the Suit prior to the Notice can be issued in the Rectification Petitions. It was contended that in a situation where Suit is pending, instituted before or after the filing of a rectification petition, the exercise of jurisdiction by this Court is contingent on a finding of the prima facie tenability of the plea of invalidity of the registered trade mark by the Court in the pending Suit. It was also submitted that the interpretation of Section 124 of the Act provided by the Supreme Court in Patel Field Marshal (supra) is a binding precedent on this Court and is not an obiter dictum as the requirement of prima facie finding of invalidity of Impugned Trade Marks under Section 124 of the Act does not distinguish between the rectification petition having been filed prior to or after filing of the Suit. It was also submitted that Section 124 of the Act does not contemplate automatic stay of the Suit. If the interpretation of law laid down in Patel Field Marshal (supra) is limited to cases where a rectification petition is filed subsequent to filing of the suit it would result in automatic stay of the suit upon mere filing of rectification petition prior to the filing of the suit, which is contrary to the scheme and purpose of the Act.

88. The Petitioner submitted that the reliance placed by Respondent No.1 on Patel Field Marshal (supra) to argue that this Court will come into sciscin upon a prima facie finding of tenability of the plea of invalidity of the Impugned Trade Marks is without any merit as the law laid down in Patel Field Marshal (supra) is not applicable in the facts of the present case because the Rectification Petitions were filed prior to institution of the Suit and as per Section 124(1)(b)(i) of the Act, the defence under Section 30(2)(e) of the Act has not been taken in the Suit.

89. It was further submitted by the Petitioner that in Patel Field Marshal (supra) the issue before the Supreme Court was in relation to the rectification petition filed after the filing of the suit as held by this Court in the decision of this Court in Perfetti Van Melle (supra), which examined the decision of the Supreme Court in Patel Field Marshal (supra) and explained that the said decision would not be applicable in the cases where a rectification petition had been filed prior to the institution of the suit.

90. In view of the above submissions, the decision of Patel Field Marshal (supra) is not applicable to the facts of the present case as the Rectification Petitions were filed prior to filing of the Suit and the decision Patel Field Marshal (supra) was confined to a case where rectification petition was not pending as on the date of the institution of the suit and the effect of the Court not finding the challenge to the registration of the mark challenged in the suit to be prima facie tenable as held in Perfetti Van Melle (supra) and, accordingly, there is no requirement of prima facie tenability under Section 124 of the Act in situations where the rectification petition is filed prior to the institution of the suit.

91. Additionally, the defence under Section 30(2)(e) of the Act has not been taken in the Suit and, therefore, Section 124(1)(b)(i) of the Act is not applicable in the facts of the present case as the Petitioner has filed the Rectification Petitions prior to the defence under Section 30(2)(e) of the Act being taken in the Suit. Therefore, permission under Section 124 of the Act of this Court in the Suit prior to filing of the present Rectification Petition was not required.

92. A Coordinate Bench of this Court in Burger King Corpn. v. Ranjan Gupta, 2023 SCC OnLine Del 1383 has held that the legislature has placed the safeguard of prima facie tenability in cases where the rectification proceedings are filed after a suit for infringement has been filed, whereas no such safeguard is there in cases where rectification proceedings have been filed before the suit while relying on Patel Field Marshal (supra) that the requirement of prima facie tenability is to avoid false, frivolous and untenable claims of invalidity.

93. In Amrish Aggarwal Trading v. Venus Home Appliances (P) Ltd., 2023 SCC OnLine Del 6133, the Coordinate Bench of this Court held that the stay of infringement suit due to a rectification petition being filed under Section 124(1)(ii) does not require any judicial order and that it is an inexorable statutory consequence of the filing of the rectification petition.

94. However, the Division Bench of this Court in Amrish Aggarwal Trading v. Venus Home Appliances (P) Ltd., 2024 SCC OnLine Del 3652 held that in both sub-clauses (i) and (ii) of Section 124(1), the legislature does not provide for an automatic stay and that stay in either case is contingent upon establishing a prima facie case for rectification of the mark.

95. Accordingly, the objection of Respondent No. 1 with regard to automatic stay of the Suit if the notice is issued in the Rectification Petition does not arise in view of the decision of the Division Bench of this Court in Amrish Aggarwal (supra). In case, the Petitioner seeks stay of the Suit in view of the pendency of the present Rectification Petitions, there will be no automatic stay of the Suit and a prima facie case for rectification of the mark will be required to be made prior to granting the stay of the Suit by this Court.

96. Accordingly, no case is made out by Respondent No. 1 for not issuing the Notice in these Rectification Petition as Section of the Act is not applicable in the facts of the present case. Non-est filing of the Rectification Petition:

97. The last preliminary objection taken by Respondent No. 1 is regarding non-est filing of the Rectification Petitions. Respondent No.1 submitted that the Rectification Petitions as originally filed on 28.05.2025 were procedurally non-est as on 29.05.2025, the Registry had raised fundamental and substantive defects in the Rectification Petitions including absence of an affidavit, vakalatnama, statement of truth, non-filing of index and documents, certificate on Declaration on Oath, authorization letter and proper Court fees. Therefore, no benefit of initial filing on 28.05.2025 can be given to the Petitioner in view of Pragati Construction (supra) since there were multiple defects which were fundamental in nature. It was also submitted that there were delays in re-filing the Rectification Petitions beyond the seven-day timeline prescribed by Chapter IV, Rule 3 of the Delhi High Court (Original Side) Rules, 2018.

98. The Petitioner submitted that the Rectification Petitions were filed on 28.05.2025 and the defects raised on 29.05.2025 were remediable irregularities, which were indeed cured and cleared prior to the listing of the Rectification Petitions. Even the defects were cured, and the Rectification Petitions were refiled during the Court vacation period despite the time to cure defects being suspended during that period. Accordingly, it was submitted that there was no delay in curing the defects and the filing of the Rectification Petition cannot be termed as non-est. Considering the nature of the defects and timing of curing the said defects, does not make the filing of the Rectification Petition non-est in eyes of law. The non-est filing would be one in which a party makes a filing only to save the limitation without filing the essential pleadings or documents in support at the time of filing. Further, the nature of the defects and time taken to cure such defects also play an important aspect in deciding whether the filing is non-est. In the present case, the defects notified by the Registry were curable defects and the same were promptly cured by the Petitioner despite there being vacation in the Court. Accordingly, the filing of Rectification Petitions was not non-est. Conclusion:

99. Accordingly, the Rectification Petitions filed on 28.05.2025, prior to the Suit, which was filed on 29.05.2025 were not non est and the jurisdiction of this Court to entertain the Rectification Petitions is not contingent upon this Court prima facie finding the plea of invalidity of the Impugned Trade Marks under Section 124 of the Act in the Suit pending before this Court.

100. In view of the above, the Notice is issued in these Rectification Petitions without prejudice to the objection of Respondent No. 1 with regard to territorial jurisdiction to entertain and decide the Rectification Petitions as the Impugned Trade Marks were granted by the Trade Mark Registry in Mumbai, Maharashtra, which issue is pending consideration before the Full Bench of this Court.

101. Let the Reply to the Rectification be filed within a period of four weeks. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.

102. List on 19.01.2026.

TEJAS KARIA, J SEPTEMBER 26, 2025