Delhi High Court
Visakha Chemicals vs The Central Government Of India ... on 16 February, 2016
Author: Manmohan
#36
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ W.P.(C) 8028/2010
VISAKHA CHEMICALS ..... Petitioner
Through Mr. Amit Jain with Ms. Priti,
Advocates
versus
THE CENTRAL GOVERNMENT OF INDIA
AND ANOTHER ..... Respondents
Through Mr. Rahul Sharma with Mr. Ankit
Roy, Advocate for R-1.
% Date of Decision: 16th February, 2016.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J: (Oral)
1. Present writ petition has been filed under Articles 226/277 of the
Constitution challenging the order dated 19th March, 2010 passed by
Intellectual Property Appellate Board in ORA/59/04/TM/DEL holding that
Section 124 of the Trade Marks Act, 1999 is not applicable even though a
prior suit for infringement was pending inter se between the parties.
2. In the present petition, it has been averred that the impugned order is
contrary to the judgment of this Court in Astrazeneca UK Ltd. and Anr. Vs.
Orchid Chemicals and Pharmaceuticals Ltd., 2007 (34) PTC 469 (DB).
3. Present case was repeatedly adjourned to await judgment of the Full
Bench in FAO (OS) 403/2012.
4. On 5th February, 2016, the Full Bench has disposed of the FO(OS)
403/2012 by holding as under:-
"ORDER OF COURT
This Full Bench therefore, in its unanimous opinion, holds that:
1. (a) IPAB has exclusive jurisdiction to consider and decide
upon the merits of a plea of trademark registration invalidity -
applying Section 47 and 57 of the Act- in the context of an
infringement suit based on such registered trademark. Access to
IPAB is not dependent on the civil court's prima facie assessment
of tenability of a plea of invalidity of trademark registration. In
other words, Section 124 of the Trademarks Act does not control
the choice of a litigant to seek rectification of a registered
trademark.
(b) The decision in Astrazeneca UK Ltd. and Anr. v. Orchid
Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB)
(Del) and all other judgments which hold that the plea of
rectification can be raised by a party to an infringement suit,
only if the court trying the suit, rules it to be prima facie tenable
and that if such finding is not recorded, the party cannot avail
the remedy of rectification of a registered trademark, is
accordingly overruled.
2. This Court holds, by its majority judgment (Vipin Sanghi, J
dissenting on this point) that the two situations whereby the
infringement action is stayed, are when the rectification
proceedings are instituted before the filing of the suit (Section
124 (1) (i)) and after the plea of invalidity is held to be prima
facie tenable under Section 124 (1) (ii). In the first situation, if
such plea exists, before the filing of the suit, the Court has to stay
the suit to await the decision of the IPAB. In the second situation,
if there is no application for rectification before the IPAB when
the suit is filed and a party to the infringement suit, wishes to
challenge it after the filing of the suit, it may do so, but the court
has to assesses the tenability of the invalidity plea- if it finds it
prima facie tenable, then and then alone, would it stay the suit to
enable the party to approach the IPAB within a time period. If
the party does not avail of this, or approaches the IPAB after the
period given, the court would proceed with the suit; the plea of
invalidity is deemed abandoned in the infringement suit.
3. The appeal is, accordingly remitted for consideration of the
merits by the concerned roster Division Bench on 11.02.2016,
subject to the orders of Hon'ble the Chief Justice.
(emphasis supplied)
5. In view of aforesaid Full Bench judgment, present writ petition is
dismissed.
MANMOHAN, J
FEBRUARY 16, 2016
rn
