Brahmos Aerospace Pvt Ltd vs Fiit Jee Limited & Anr.
2017 Latest Caselaw 937 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                                    Reserved on 22.11.2016
                                                     Decided on: 17.02.2017
+      CS(OS) 2655/2013

       BRAHMOS AEROSPACE PVT LTD                                 ..... Plaintiff

                          Through:     Mr.A.Das, Ms.Rashi Bansal            and
                                       Ms.Anju Agarwal, Advocates

                          Versus

       FIIT JEE LIMITED & ANR.                               ..... Defendants

                          Through:      Mr.Mohan Vidhani and Ms.Geeta,
                                       Advocates
CORAM:
HON'BLE MS. JUSTICE DEEPA SHARMA

                                JUDGMENT

I.A.14418/2015 (by defendants u/S. 124 of Trade Marks Act, 1999 r/w S. 151 CPC)

1. Vide this application, the defendant has sought the stay of the

proceedings before this Court to facilitate him to file an application under

Section 124 of the Trade Marks Act, 1999 before the Registrar of

Trademarks for rectification of the trademark BRAHMOS registered in the

name of the plaintiff, on the plea that the said trademark is not being used by

the plaintiff in the field of education and that it has got the trademark

registered in several classes although he has not been using the same and

CS(OS) No.2655/2013 Page 1 thus he is hoarding the trademarks and depriving the legitimate use of such

trademark by others.

2. In reply to the application, the plaintiff has alleged that the plea of the

defendant of non-use of the trademark by the plaintiff in Class 41 has been

argued vigorously by the defendant at the time of argument on application

under Order 39 Rule 1 and 2 for grant of interim injunction and the Court

vide its order dated 24.02.2014 rejected this plea of the defendant and

restrained the defendant from using the trademark BRAHMOS on three

counts:- (a) BRAHMOS being a well-known trademark; (b) BRAHMOS

being used for educational related activities; (c) defendant's admission of

the plaintiff being in education and research. It is submitted that the

defendant has failed to show as to how the registration of the trademark

BRAHMOS in class 41 is prima facie invalid and, therefore, the application

is not maintainable. It is further submitted that the defendant has not filed

any application for rectification within the prescribed period. It is further

submitted that the application was not filed within three months from the

date when the issues were framed, i.e., 09.12.2014, but has filed it after eight

months. Hence the application is highly belated with no explanation. It is

submitted that the Court's order dated 24.02.2014 in which the Court has

CS(OS) No.2655/2013 Page 2 found a prima facie case in favour of the plaintiff has not been challenged

by the defendant. It is further submitted that the requirement of Section 47

of Trademarks Act, 1999 is to prima facie show that the proprietor has got

the trademark registered without any bona fide intention to use it in addition

to the goods and services and the defendant has failed to show that that the

plaintiff had any such intention. Reliance is placed on the finding in the case

American Home Products Corporation vs. Mac Laboratories Private

Limited (1986) 1 SCC 465. It is submitted that the burden of proving the

same is upon the defendant because it is he who has come before the Court

for removal of the trademark from the register. It is submitted that trial has

just commenced and the evidences are yet to be recorded and, therefore, no

conclusion as to the validation of the registration of the trademark of the

plaintiff can be challenged at this stage.

3. I have heard the arguments and given the thoughtful consideration.

4. The present suit has been filed by the plaintiff for infringement of his

trademark BRAHMOS by the defendant. Defendant took the plea that the

plaintiff is not using the trademark BRAHMOS in educational field, and,

therefore, registration of its trademark in that field is invalid.

CS(OS) No.2655/2013 Page 3

5. On the basis of the contention of the parties, the Court found the plea

of the defendant tenable and framed the following issue on 09.12.2014:-

(v) Whether the plaintiff's registrations for the mark "BRAHMOS" are invalid/liable to be cancelled/removed from the Register of Trademarks? OPD"

6. The only point to consider by this Court is whether under Section 124

of Trademarks Act, 1999, the Court during the pendency of the proceedings

of the case should give the defendant permission to move appropriate

applications before Intellectual Property Appellate Board (IPAB) for

rectification of the trademark and for that purpose stay the proceedings for a

period of three months. Section 124 of Trademarks Act is reproduced as

under:-

"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) XXX              XXX          XXX
     (b)XXX               XXX          XXX

the Court trying the suit (hereinafter referred to as the Court,) shall--

(i) XXX XXX XXX

(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

CS(OS) No.2655/2013 Page 4 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.

     (2)       XXX        XXX                 XXX
     (3)       XX         XXX                 XXX
     (4)       XXX        XXX                 XXX

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit."

7. It is apparent that the case of the defendant falls within the ambit of

clause 1(b) (ii) of Section 124 of Trade Marks Act, 1999 and the Court has

also found the plea of the defendant regarding the invalidity of the

registration of the plaintiff's trademark, prima facie tenable and that is why

the relevant issue as reproduced above, was framed. Since there were

contradictory judgments of this Court on the matter of stay of proceedings

and proceedings of this Court and giving the opportunity to move the IPAB

for rectification of the trade mark , the matter was referred to the Full Bench

and the Full Bench of this Court in Data Infosys Ltd. v. Infosys

Technologies Ltd. 2016 SCC OnLine Del 677 considered this plea and

passed the following order:-

51.This full Bench therefore, in its unanimous opinion, holds that:-

CS(OS) No.2655/2013 Page 5

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 Pharmaceuticals 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."

CS(OS) No.2655/2013 Page 6

8. The Full Court has clearly held that where the invalidity plea is found

prima facie tenable then alone, it should stay the suit to enable the party to

approach the IPAB within a time period. In this case, the Court had found

the plea of the defendant relating to the validity of the trademark of the

plaintiff tenable and accordingly framed the issue to this effect on

09.12.2014. In view of the findings of the Full Court in the case Data

Infosys Ltd. (supra), I hereby give an opportunity to the defendant to enable

him to apply to the Appellate Board as prayed by him within a period of

three months.

9. With these directions, the application stands disposed of.

                                                          DEEPA SHARMA
                                                             (JUDGE)
FEBRUARY 17, 2017
BG




CS(OS) No.2655/2013                                                      Page 7