Delhi High Court
Apex Shoe Company Pvt Ltd vs Baldev Singh on 22 June, 2020
SINDHU KRISHNAKUMAR
23.06.2020 21:06
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 22nd June, 2020
+ C.R.P. 52/2020 & CM APPLs. 12994-95/2020
APEX SHOE COMPANY PVT LTD ..... Petitioner
Through: Mr. Abhishek Malhotra, Mr.
Himanshu Deora and Mr. Shashwat
Rakshit, Advocates.
versus
BALDEV SINGH ..... Respondent
Through: Mr. Mahir Malhotra, Advocate.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been held through video conferencing.
2. The present petition has been filed challenging the impugned order
dated 4th February, 2020 by which the application under Order VI Rule 17
CPC filed by the Petitioner/Defendant (hereinafter, "Defendant") has been
dismissed by the Commercial Court.
3. The brief background is that the Respondent/Plaintiff - Mr. Baldev
Singh (hereinafter, "Plaintiff") filed a suit for infringement and passing off
in respect of his trademark in numerical number '687' against the Defendant
- Apex Shoe Company Pvt. Ltd. The said suit was first listed on 18th
January, 2016 when an ex parte ad interim injunction was granted against
the Defendant. In the written statement, the Defendant claimed that the
Plaintiff's claim of user from 1998 was incorrect, however, no pleadings in
respect of the invalidity of the Plaintiff's registration was taken. The
Signature Not Verified
Digitally Signed
Signing Date:23.06.2020 19:45
following issues were framed on 15th December, 2016:
"1. Whether this suit of the plaintiff deserves to be
dismissed on account of delay and latches in so far
as the defendant is using Trademark "6087" since
July 2014 to the knowledge of the plaintiff? OPD.
2. Whether plaintiff is entitled to decree of
injunction restraining the defendants and their
subjects from dealing with or disposing of the
merchandise containing Trade Mark '687'? OPP.
3. Whether plaintiff is entitled to decree of delivery
up of impugned goods containing Trade Mark
'687'? OPP.
4. Whether plaintiff is entitled to Rendition of
accounts and damages on account of profits made
by the defendant by sale of goods containing Trade
Mark '687'? OPP.
5. Relief."
4. Thereafter, the Plaintiff led evidence which concluded on 9th March
2017. The Defendant, first filed an a petition before the IPAB seeking
cancellation of the Plaintiff's trade mark. It thereafter filed an application
under Section 124 of the Trademarks Act, 1999, and sought stay of the suit
proceedings on the ground that it has sought rectification of the Plaintiff's
mark. The application was heard on 9th July, 2018 and vide the said order,
inter alia, due to the the fact that the Defendant never pleaded invalidity of
the Plaintiff's registration in its pleadings, the Trial Court dismissed the
application. The rectification petition which was filed by the Defendant was
thereafter withdrawn in view of the law laid down in Patel Field Marshal
Agencies and Ors. v. PM Diesels Ltd. & Ors., 2017 (13) SCALE 783. The
trial of the suit was completed on 28th October, 2017.
Signature Not Verified
Digitally Signed
Signing Date:23.06.2020 19:45
5. The Defendant thereafter filed another application under Order XIV,
Rule 5 CPC r /w Section 124 of the Trademarks Act, 1999 seeking framing
of an additional issue of invalidity of the mark in view of the prevalent legal
position. The said application was rejected on 8 th January, 2019 and the
revision against the said order was also dismissed on 22nd August, 2019.
6. The Defendant did not stop there. It then filed an application under
Order 6 Rule 17 CPC r/w Section 151 CPC seeking to add a plea in the
written statement in respect of invalidity of the mark, which was rejected by
the Trial Court.
7. A perusal of the Commercial Court's order shows that due to the
dismissal of the revision petition challenging the rejection of the Section 124
application and also in view of the fact that the trial in the case had already
concluded, the amendment application was dismissed.
8. Mr. Abhishek Malhotra contends that the Defendant has not had an
opportunity to raise the issue of invalidity as, admittedly due to the
fluctuating legal position on Section 124, the Defendant had to withdraw the
petition for cancellation filed before the IPAB. Thus, the invalidity plea
which was raised by the Defendant much prior to conclusion of evidence has
not been adjudicated at all. On the other hand, Mr. Mahir Malhotra submits
that there is no plea in the written statement. Without a plea, the Defendant
cannot be allowed to raise it at this stage.
9. Heard Ld. Counsels for the parties. The suit is one for infringement of
trade mark and passing off. The Plaintiff is suing on the strength of its trade
mark registration. The Defendant, if it intended to challenge the validity of
the mark, ought to have raised the plea of invalidity in the written statement
and having not done so, it cannot wait for all these years to move an
Signature Not Verified
Digitally Signed
Signing Date:23.06.2020 19:45
amendment. The order of the Ld. Single Judge dated 22nd August 2019 in
CRP 80/2019, does not give any permission to the Defendant to amend the
written statement. It categorically records that in the absence of a plea
questioning validity, no issue in respect thereof can be struck.
10. This Court does not find any infirmity in the order passed by the Trial
Court to the extent that too much water has flown under the bridge since the
inception of the suit. The evidence of both the parties already stands
concluded. The Court has perused the written statement, the Defendant has
only pleaded that the user of the Plaintiff has not been established and
denied the same. The invalidity of the trade mark has not been pleaded.
Permitting an amendment at this stage would completely put the clock back
and would be contrary to the mandate of Order 6 Rule 17 CPC.
11. Though the impugned order does not call for any interference it is
reiterated that while adjudicating issues which have been settled in the
matter, especially Issue No.2, the Trial Court would definitely bear in mind
the settled legal principle that the Plaintiff has to establish user of the mark
as pleaded and mere registration of the trademark would does not itself
constitute evidence of use.
12. No further orders are called for in this matter. A prayer is made for
reduction of costs considering the nature of the dispute. This Court is not
inclined to set aside the costs.
13. With these observations, the petition and all pending applications are
disposed of.
PRATHIBA M. SINGH
JUDGE
JUNE 22, 2020/dj/T
Signature Not Verified
Digitally Signed
Signing Date:23.06.2020 19:45
