Delhi High Court
Vinod Kumar Proprietor Of Kunal ... vs State (Nct Of Delhi) & Ors. on 22 September, 2020
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Judgment: 22nd September, 2020
+ W.P.(CRL) 1506/2020
VINOD KUMAR PROPRIETOR OF KUNAL
TRADING CORPORATION ..... Petitioner
Through: Mr Suwarn Rajan Chauhan,
Advocate.
versus
STATE (NCT OF DELHI) & ORS. ..... Respondents
Through: Ms Nandita Rao, ASC for State.
CORAM:
HON'BLE MR. JUSTICE VIBHU BAKHRU
VIBHU BAKHRU, J. (ORAL)
1. The petitioner has filed the present petition, inter alia,
impugning the FIR No.154/2020 under Sections 103 and 104 of the
Trade Marks Act, 1999 (hereafter 'the Trade Marks Act') registered
with PS Kamla Market.
2. The said FIR was registered at the instance of respondent no.4.
The controversy in the preset petition relates to use of the Trademark -
(hereafter 'the Trademark') in relation to manufacture and
trade of bearing, bearing brackets, ball rings for bearing, parts and
fittings for use in motor vehicle and automobiles. The petitioner
claims that the petitioner has been using the Trademark since 2009.
The petitioner applied vide application no.1989336 for registration of
the said the Trademark in Class 7 in relation to bearing, bearing
brackets, ball rings for bearing on 06.07.2010. Subsequently, the
petitioner also filed another application (application bearing
no.3318333) for registration of the Trademark in class 12 in relation to
parts and fittings for use in motor land vehicles and automobiles. The
petitioner claims that, thereafter on 10.12.2019, he also secured the
Copyright Registration of artistic work of the Trademark.
3. On 14.03.2020, the petitioner filed a rectification petition
(petition no.268248 in application no.1329050) seeking rectification
of the registration of the Trademark in favour of respondent no.4.
Respondent no.4 is contesting the said rectification application and the
said matter is pending. Thereafter, on 03.07.2020, respondent no.4
also filed a rectification petitions (ORA/108/2020/TM/DEL and
ORA/117/2020/TM/DEL) along with miscellaneous application (MP
78/2020 in ORA/108/2020/TM/DEL and MP 79/2020 in
ORA/117/2020/TM/DEL) for stay of operation of the registration of
the Trademark granted in favour of the petitioner.
4. By an order dated 10.07.2020, the Intellectual Property
Appellate Board has stayed the operation of the registration of the
Trademark under application no.1989336 in class 7 and 3318333 in
class 12 in favour of petitioner.
5. In the context of the aforesaid disputes, respondent no.4 lodged
a FIR, which was registered on 23.07.2020.
6. Mr Chauhan, the learned counsel appearing for the petitioner
states that the petitioner is the proprietor of the Trademark in question,
therefore, a complaint under Sections 103 and 104 of the Trade Marks
Act is not maintainable. He submits that the said complaint can be
made only in case of falsification of the Trademark and in cases where
any person uses the Trademark without permission and consent of
proprietor. He submits that in the present case, the petitioner is
claiming to be the proprietor of the Trademark in question and,
therefore, the provision of Sections 103 and 104 of the Trade Marks
Act are wholly inapplicable.
7. Next, he submits that since, the petitioner has filed a
rectification application regarding the registration of the Trademark in
favour of respondent no.4, a complaint under Section 103 and 104 of
the Act cannot be maintained unless the said rectification application
is disposed of. He also relies on the provision of Sections 113 of the
Trade Marks Act, 1999, in support of his contention.
8. Insofar as the petitioner's claim that he is a proprietor of the
Trademark is concerned, the petitioner cannot claim himself to be the
registered proprietor of the Trademark in view of the order passed by
the Intellectual Property Promotion Board staying the registration of
the Trademark in his favour.
9. It is well settled that a FIR cannot be quashed except in very
limited cases where it is established that the complaint is even
malafide or the allegations made in the complaint do not disclose
commission of any offence. Considering the restricted grounds on
which a FIR can be quashed, the relief prayed by the petitioner cannot
be acceded to.
10. The contention that the FIR is not maintainable in view of
Section 113 of the Trade Marks Act is also unpersuasive. Section 113
of the Trade Marks Act reads as under:-
"113. Procedure where invalidity of registration is
pleaded by the accused--
(1) Where the offence charged under section 103 or
section 104 or section 105 is in relation to a registered
trade mark and the accused pleads that the registration of
the trade mark is invalid, the following procedure shall
be followed:--
(a) If the court is satisfied that such defence is
prima facie tenable, it shall not proceed with
the charge but shall adjourn the proceeding
for three months from the date on which the
plea of the accused is recorded to enable the
accused to file an application before the
Appellate Board under this Act, for the
rectification of the register on the ground that
the registration is invalid.
(b) If the accused proves to the court that he has
made such application within the time so
limited or within such further time as the
court may for sufficient cause allow, the
further proceedings in the prosecution shall
stand stayed till the disposal of such
application for rectification.
(c) If within a period of three months or within
such extended time as may be allowed by the
court the accused fails to apply to the
Appellate Board for rectification of the
register, the court shall proceed with the case
as if the registration were valid.
(2) Where before the institution of a complaint of an
offence referred to in sub-section (1), any application
for the rectification of the register concerning the trade
mark in question on the ground of invalidity of the
registration thereof has already been properly made to
and is pending before the tribunal, the court shall stay
the further proceedings in the prosecution pending the
disposal of the application aforesaid and shall
determine the charge against the accused in conformity
with the result of the application for rectification in so
far as the complainant relies upon the registration of his
mark."
11. In terms of sub Section (2) of Section 113 of the Trade Marks
Act, the court required to stay the further proceedings in the
prosecution pending the disposal of the application for rectification, if
such an application has been filed prior to institution of the complaint
alleging offence under Sections 103 and 104 of the Trade Marks Act.
12. Since, the petitioner claims that he has filed an application for
rectification of the Trademark registered in favour of respondent no.4
prior to institution of the complaint, it would be open for the petitioner
to apply to the concerned court and seek appropriate orders regarding
stay of further proceedings. Needless to state that if any such
application is made, the concerned court shall consider the same on its
merits in accordance with law.
13. Insofar as the present petition seeking quashing of the FIR is
concerned, the same is not maintainable and required to be dismissed.
14. The petition is, accordingly, dismissed. The pending
applications are also disposed of.
VIBHU BAKHRU, J
SEPTEMBER 22, 2020
MK
