Delhi High Court

Infosys Technologies Ltd. vs Data Infosys Ltd. & Ors. on 17 July, 2012

Author: Valmiki J. Mehta

*              IN THE HIGH COURT OF DELHI AT NEW DELHI

+                              CS(OS) No.1376/2003

%                                                          17th July, 2012

         INFOSYS TECHNOLOGIES LTD.               ..... Plaintiff
                      Through: Mr. Prashant Gupta, Adv.

                      versus

         DATA INFOSYS LTD. & ORS.                   ..... Defendants
                      Through: Mr.Pavan Duggal with
                                Mr. Aditya Prasad, Advs.

CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA

    To be referred to the Reporter or not?                 Yes


VALMIKI J. MEHTA, J (ORAL)

IA No.6857/2012(for condonation of delay)

               Delay is condoned. IA stands disposed of.

IA No.6856/2012

1.

This is an application filed by the defendants under Section

124 of the Trade Marks Act, 1999 (hereinafter 'the Act') for stay of the

proceedings initiated against them before the Intellectual Property

Appellate Board (IPAB) by the plaintiff. The proceedings before IPAB

seek rectification of the register qua the mark 'Data Infosys' of which

registration was obtained by the defendants.

2. The present suit is a suit by the company-M/s. Infosys

Technologies Ltd., an Indian multinational, claiming rights in the trade

mark Infosys and seeking restraint etc against the defendants from

infringing/using the same. During the pendency of the suit the defendants

obtained registration of the trade mark 'Data Infosys'. To incorporate this

aspect in their written-statement, the defendants filed an amendment

application. This application for amendment was allowed. Issues were

also re-framed taking notice of the registration obtained by the defendants

for the trade mark 'Data Infosys'.

3. The plaintiff thereafter initiated before IPAB proceedings

under the Trade Marks Act, 1999 for rectification i.e. cancellation of

registration obtained by the defendants with respect to the mark 'Data

Infosys', and these are the proceedings before the IPAB that the defendants

seek stay of by means of the present application under disposal.

4. Learned counsel for the applicants/defendants has placed

reliance upon the judgment of a Single Judge of this Court in the case of

Astrazeneca UK Ltd. & Anr. vs. Orchid Chemicals & Pharmaceuticals

Ltd. 2007 (34) PTC 469 (Del) as also a judgment passed by a Division

Bench of this Court on 13.4.2012 in IA No.18464/2011 in CS(OS)

No.1421/2005 titled as Astrazeneca UK Ltd. & Anr. vs. Orchid Chemicals

& Pharmaceuticals Ltd., to canvass the proposition that since no prior

permission had been obtained from this Court under Section 124 of the Act,

proceedings for rectification with respect to a registered mark cannot be

initiated or contained by the plaintiff. Learned counsel for the

applicants/defendants has invited attention of this Court to the observations

which have been made in the aforesaid two judgments to that effect. It is

accordingly argued that once a Division Bench of this Court has clearly

observed that a party to a suit cannot apply for rectification proceedings

without permission of the Court, and since no prior permission of this

Court was obtained, the proceedings initiated by the plaintiff before the

IPAB ought to be stayed.

5. In my opinion, the arguments urged on behalf of the

defendants are wholly misconceived. This I say so because the provision

of Section 124 of the Trade Marks Act, 1999 relied upon by the

applicants/defendants, and the observations in the aforesaid two judgments

in the case of Astrazeneca UK Ltd.(supra), provide for the situation where

a person seeks to get proceedings in the suit (not IPAB proceedings) stayed

on the ground that he has filed rectification proceedings after filing of the

suit and thus in such situations to avoid bringing to a halt the progress of

the suit, Courts have required that prior permission of the Court would have

to be obtained where the suit is already pending and only thereafter the

rectification proceedings are commenced. It is in that context that the

aforesaid two judgments in the case of Astrazeneca UK Ltd.(supra) hold

that the proceedings in the suits cannot be stayed by invoking Section 124

of the Trade Marks Act, 1999 merely because rectification proceedings

have been filed before the appropriate authority under the Trade Marks

Act, 1999. What the defendants seek to do here is the opposite i.e. seek

stay of the IPAB proceedings, and which is not the scope of Section 124.

The judgments relied upon by the applicants/defendants do not hold that

Section 124 of the Trade Marks Act, 1999 provides that proceedings before

the IPAB have to be stayed unless permission of this Court is obtained

under Section 124 of the Trade Marks Act, 1999 for continuing with the

proceedings before IPAB. Once there is no issue of stay of the suit,

inasmuch as the plaintiff who has initiated proceedings for rectification is

not seeking stay of this suit, the ratio of Astrazeneca UK Ltd.(supra) does

not come into play. In my opinion, the defendants want to unnecessarily

bring issues which have no relevance or bearing so far as the disposal of

the present suit is concerned, and, the object of this application is to

unnecessarily delay the progress of the suit i.e. the very object which the

ratio of the judgments in Astrazeneca UK Ltd.(supra) cases seek to

prevent.

6. I am fortified in the observations that Section 124 of the Trade

Marks Act, 1999 does not in any manner require any prior permission of

the Court where the suit claiming infringement of the trade mark is pending

for initiating proceedings for cancellation of the registered trade mark, by

the observations of a Division Bench Judgment of the Madras High Court

in the case reported as B.Mohamed Yousuff vs Prabha Singh Jaswant

Singh, Rep. by its Power of Attorney Mr. C.Raghu & Ors., 2008 (38) PTC

576(Mad). The relevant observations of the Division Bench of the Madras

High Court are contained at page 605 of the PTC report and where it is

clearly held that no prior permission of the Court is required to initiate

rectification proceedings.

7. In view of the above, there is no merit in the application. I

hold that it is not the law that before initiating proceedings for cancellation

of the registered trade mark, prior permission of the Court, (where

proceedings alleging infringement of the trade mark are pending), has to be

taken under Section 124 of the Trade Marks, 1999.

The application is therefore dismissed.

IA No.17961/2011(u/O.XXII R.10 CPC)

8. This application has been wrongly titled under Order XXII

Rule 10 CPC, because really the application is either under Order 6 Rule 17

CPC; or Section 151 CPC; read with Section 23 of the Companies Act,

1956, and more particularly Section 23 sub-Section 3 seeking to bring on

record the changed name of the plaintiff-company from Infosys

Technologies Ltd. to Infosys Ltd. The application is opposed on behalf of

the defendants by placing reliance upon a judgment in FAO No.400/2006

titled as Vishwa Ahimsa Sangh vs. Panchsheel Marketing (P) Ltd. and

FAO No.401/2006 titled as Vishwa Ahimsa Sangh vs. State Bank of

Bikaner & Jaipur Ors. decided on 5.7.2011. Reliance is placed upon this

judgment to argue that provision of Order XXII Rule 10 CPC has no

application to the facts of the present case.

9. Section 23 of the Companies Act, 1956 reads as under:-

"23. Registration of change of name and effect thereof.-

(1) Where a company changes its name in pursuance of section 21 or 22, the Registrar shall enter the new name on the register in the place of the former name, and shall issue a fresh certificate of incorporation with the necessary alterations embodied therein; and the change of name shall be complete and effective only on the issue of such a certificate.

(2) The Registrar shall also make the necessary alteration in the memorandum of association of the company.

(3) The change of name shall not affect any rights or obligations of the company, or render defective any legal

proceedings by or against it; and any legal proceedings which might have been continued or commenced by or against the company by its former name may be continued by or against the company by its new name."

10. Sub-Section 3 of Section 23 therefore makes it more than

abundantly clear that mere change of name does not affect the rights or

obligations of the company, or render defective any legal proceedings by or

against it. This sub-Section further provides that the legal proceedings

which might have been continued or commenced by or against the

company by its former name may be continued by or against the company

by its new name. Sub-Section 3 of Section 23 is a complete answer to the

opposition by the defendants to this application, which obviously is nothing

but a frivolous defence. It is well settled law that quoting of a wrong

provision cannot defeat an application and therefore wrongly stating that

the application is filed under Order 22(10) cannot mean that the application

has to be dismissed.