By observing, that the High Court will ordinarily not exercise the extraordinary writ jurisdiction, if there is an alternative remedy, more particularly statutory remedy available, the Delhi High dismissed the present writ petition filed by the petitioner to assail the registration of a trademark.
A Single Bench of Justice Jyoti Singh opined that since the petitioner in the instant case had the statutory remedy under Section 57 in Chapter VII of the Trade Marks Act , 1999 available in order to seek cancellation of the trade mark and rectification of the Register still he chose to remain silent and took no steps to seek cancellation of the mark and rectification of the Register, even in the year 2006 when he was apprised of the registration of trademark in question, cannot let him to seek remedy by way of writ petition before the present Court.
Through present writ petition, the petitioner was seeking writ of Certiorari for quashing the advertisement in pursuance of an application filed by Midas Hygiene Pvt. Ltd, the third respondent for registration of trademark Laxman Rekha and a further direction to the concerned Registrar of Trademarks to re- advertise the application.
Factual matrix of the case was such that the third respondent instituted an application dated January 29, 1997, for registration of trademark Laxman Rekha. It also filed a suit for perpetual injunction, infringement of copyright, passing off, delivery etc. against the petitioner herein, in respect of trademark Laxman Rekha.
The Single Judge of this Court granted injunction against the petitioner thorough order dated July 31, 2002. However, by way of an appeal before the Division Bench , the injunction order was vacated through an order dated September 20, 2001. The same was assailed in the form of an appeal before the Apex Court, the Apex Court through an order dated January 22, 2004 set aside the order passed by the Division Bench and restored the order of injunction. Thereafter, the suit was transferred to District Court on account of pecuniary jurisdiction.
In respect of the same, the third respondent preferred an application before the Trial Court under Order 6 Rule 17 CPC in the year 2006, seeking amendment of the plaint and along with the application filed copy of the registration certificate, whereby the third respondent trademark/label Laxman Rekha was registered in Class 5.
Eventually, a legal notice dated June 10, 2008 was sent to the second respondent seeking redressal of the grievance relating to the illegible advertisement. Receiving no response, petitioner approached this Court by way of the present writ petition.
After hearing the counter submissions of both the parties at length, the question that was posed before this Court was whether this Court lacks the territorial jurisdiction to entertain the present petition. In view of the same the Court opined that the it cannot neglect the fact that writ petition was filed in the year 2008 and notice to show cause was issued by the Court on August 13, 2008. Thereafter on March 1, 2011, ‘Rule’ was issued and the petition was admitted to hearing.
The writ petition remained pending since then and at this distant point of time, when a long period of almost 14 years has lapsed, the Court noted. Thus, taking note of the same, the Court observed that it would be inequitable to dismiss the writ petition on the ground of lack of territorial jurisdiction. It was further observed that the aforesaid observation was relevant in the instant case, as the Court was not deciding the writ petition on merits and is relegating the Petitioner to avail the alternative statutory remedy available under the Act.
Further reliance was place on the judgment of this Court in the case of Azra Poultry Equipments v. Union of India and Ors, wherein the Division Bench of this Court held that though the writ petition was liable to be summarily dismissed on the ground of lack of territorial jurisdiction alone, however, since the petition had remained pending for over 20 years, Petitioner could not be ousted on that ground.
The Court however, further analyzed the prayer made in the writ petition by the petitioner before dealing with issue of delay and latches. With respect to the prayer; the Court observed that after the registration of the trademark, statutory rights accrue under Section 28(1) of the Act, in favor of the registered proprietor of the trademark for its exclusive use as well as for protection against infringement. It was further stated that post-registration of a trademark the remedy available to any person aggrieved is to seek cancellation of the mark and rectification of the Register, under Section 57 in Chapter VII of the Act. It is evident that petitioner was completely aware of the said remedy way-back in the year 2006, but chose to remain silent and took no steps to seek cancellation of the mark and rectification of the Register, with respect to the trademark in question, the Court noted.
Thus, taking note of the above findings, the Court stated when there is a statutory remedy available under the Act, and then the same relief cannot be granted to the petitioner by way of writ petition. In words of the Court “ entertaining the petition at this stage and quashing the advertisement, assuming the same is illegible, would amount to entertaining the petition against the settled principles of law that the High Court will ordinarily not exercise the extraordinary writ jurisdiction if there exists an alternative remedy, more particularly, a statutory remedy. Additionally, this would amount to rendering the statutory remedy redundant and otiose”
Thus, in light of the aforesaid observations, the petition was dismissed, however liberty was granted to the petitioner to approach the appropriate forum and seek remedies accordingly.
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