Karnataka High Court
Therelek Machines Private Limited vs Therelek Engineers Private Limited on 28 February, 2024
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WP No. 28029 of 2023
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 28TH DAY OF FEBRUARY, 2024
BEFORE
THE HON'BLE MR JUSTICE ANANT RAMANATH HEGDE
WRIT PETITION NO. 28029 OF 2023 (IPR)
BETWEEN:
THERELEK MACHINES PRIVATE LIMITED
A COMPANY INCORPORATED UNDER THE
PROVISIONS OF THE COMPANIES ACT, 1956,
HAVING ITS REGISTERED OFFICE AT NO 137,
JESSAI HOUSE, 3RD FLOOR, FORT MUMBAI -400001
REPRESENTED BY ITS AUTHORIZED
REPRESENTATIVE MR THOMAS SEBASTIAN.
...PETITIONER
(BY SRI. KASHYAP N NAIK.,ADVOCATE)
AND:
1. THERELEK ENGINEERS PRIVATE LIMITED
A COMPANY INCORPORATED UNDER THE
PROVISIONS OF THE COMPANIES ACT, 1956,
HAVING ITS REGISTERED OFFICE AT NO 70- 71,
III PHASE, PEENYA INDUSTRIAL AREA,
Digitally BANGALORE - 560057.
signed by
PRAMILA G V 2. JAMES V ALUKKA
Location: SON OF VARGHESE ALUKKA,
HIGH COURT
OF AGED ABOUT 78 YEARS,
KARNATAKA RESIDING AT NO 577, 12TH MAIN ROAD,
4TH BLOCK, KORAMANGALA BANGALORE - 560034.
3. MR ANTHONY JAMES
SON OF SRI JAMES V ALUKKA
AGED ABOUT 42 YEARS,
RESIDING AT NO 577, 12TH MAIN ROAD,
4TH BLOCK, KORAMANGALA BANGALORE - 560034.
...RESPONDENTS
(BY SRI. KESHAVA BHAT S N., ADVOCATE)
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WP No. 28029 of 2023
THIS WP IS FILED UNDER ARTICLES 226 AND 227 OF
THE CONSTITUTION OF INDIA PRAYING TO QUASHING THE
IMPUGNED ORDER DTD 11.08.2023 PASSED BY THE LEARNED
XVIII ADDL. CITY CIVIL AND SESSION JUDGE BANGALORE
(CCH-10) REJECTING I.A.NO.10 IN O.S.NO.5497/2020 (ANNX-
A) AND ETC.,
THIS PETITION, COMING ON FOR FINAL HEARING, THIS
DAY, THE COURT MADE THE FOLLOWING:
ORDER
1. Heard the learned counsel appearing for the
petitioner as well as learned counsel appearing for the
respondents.
2. The petitioner is before this Court assailing the
order dated 11.08.2023 passed by the XVIII Additional City
Civil and Sessions Judge, Bangalore, rejecting I.A.No.10 in
O.S.No.5497/2020.
3. I.A.No.10 is filed under Section 124(1) of the Trade
Marks Act, 1999 (for short 'the Act of 1999'). The applicant in
I.A.No.10 is defendant No.1 in the said suit. The present
respondent No.1 is the plaintiff in the said suit. The suit is for
permanent injunction, wherein the plaintiff is seeking
protection of the registered trade mark and the plaintiff has
also sought the restraint order to pass off services of the
defendants as services of the plaintiff.
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4. The application filed by defendant No.1 is opposed
by the plaintiff on the premise that the ingredients of Section
124 of the Act of 1999 are not forthcoming in the case. The
Trial Court has rejected the application.
5. Being aggrieved by the said order, defendant No.1
is before this Court.
6. Learned counsel for the petitioner would submit
that admittedly an application is pending before the Competent
Authority for rectification of the disputed trade mark. Thus, he
would contend that Section 124 of the Act of 1999 would come
to operation and defendant No.1 is entitled to make an
application under Section 124 of the Act of 1999 to stay the
further proceedings till the disposal of rectification application
pending before the Competent Authority.
7. Learned counsel for the respondent No.1 would
submit that the rectification application is not filed by
defendant No.1/petitioner, it is filed by third party. Unless the
party to the proceeding files a rectification application, the suit
cannot be stayed.
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8. This Court has considered the contention raised at
Bar.
9. Section 124 of the Trade Marks Act, 1999 reads 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) the defendant pleads that registration of the
plaintiff's trade mark is invalid ; or
(b) the defendant raises a defence under clause (e) of
sub-section (2) of section 30 and the plaintiff pleads
the invalidity of registration of the defendant's trade
mark,
the court trying the suit (hereinafter referred to as the
court), shall,-
(i) if any proceedings for rectification of the register
in relation to the plaintiff's or defendant's trade mark are
pending before the Registrar or the [High Court], stay the
suit pending the final disposal of such proceedings;
(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 three months
from the date of the framing of the issue in order to
enable the party concerned to apply to the [High Court]
for rectification of the register.
(2) If the party concerned proves to the court that he
has made any such application as is referred to in clause
(b) (ii) of sub-section (1) within the time specified therein
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or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand
stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been made
within the time so specified or within such extended time
as the court may allow, the issue as to the validity of the
registration of the trade mark concerned shall be deemed
to have been abandoned and the court shall proceed with
the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings
referred to in sub-section (1) or sub-section (2) shall be
binding upon the parties and the court shall dispose of
the suit conformably to such order in so far as it relates
to the issue as to the validity of the registration of the
trade mark.
(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."
10. On a perusal of Section 124 of the Act of 1999, it is
apparent that, if there is a dispute relating to the trade mark
and if an application is pending for rectification of plaintiff's
trade mark or defendant's trade mark, then an application for
staying the proceeding can be filed.
11. Though, the learned counsel for respondent No.1
would urge that the application for rectification has to be filed by
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the party to the proceeding, the language employed in Section
124 of the Act of 1999 does not lead to such a conclusion. It is
also urged by the learned counsel for respondent No.1, referring
to Section 57 of the Act of 1999, that the application for
rectification can be filed by an aggrieved person, and Section 57
of the Act of 1999 has to be read along with Section 124 of the
Act of 1999, and it is his submission that the conjoint reading of
Sections 57 and 124 of the Act of 1999 leads to the conclusion
that only the party to the proceeding under Section 57 of the
Act of 1999 can file an application under Section 124 of the Act
of 1999 for the stay of the proceedings.
12. This Court is unable to accept the said contention.
13. Section 57 of the Act of 1999 provides for filing an
application for rectification by any person, who is aggrieved by
the registration of a trade mark. Section 124 of the Act of 1999
provides for stay of the proceeding under certain circumstances.
The words used in Section 124 of the Act of 1999 do not
indicate that application for rectification under Section 57 of the
Act of 1999 and application under Section 124 of the Act of
1999 ought to be filed by the same person. What is
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contemplated under Section 124 of the Act of 1999 is, 'an
application for rectification of either plaintiff's trade mark or the
defendant's trade mark'. The provision does not say that party
to the suit must have filed an application.
14. Admittedly, an application for rectification of
plaintiff's trade mark is pending consideration and plaintiff's
trade mark is disputed. Under these circumstances, the
requirement of Section 124(1)(a) of the Act of 1999 is complied.
15. In addition to that, it is also relevant to note that
defendant No.1 has raised a defence under Section 30(2) of the
Act of 1999. Thus, the requirement of Section 124(1)(b) of the
Act of 1999, is also complied.
16. This being the position, the Trial Court could not
have rejected the application to stay the further proceedings,
which is prayed in I.A.No.10.
17. It is also relevant to note that sub-Section 4 of
Section 124 of the Act of 1999 provides that order to be passed
on rectification of application shall be binding upon the parties
and the Court shall dispose of the suit conformably to such an
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order in so far as it relates to the issue as to the validity of
registration of the trade mark. From reading of sub-Section 4 of
Section 124 of the Act of 1999, it is apparent that the order to
be passed on a rectification of application will have a bearing on
the outcome of the suit in so far as it relates to the disputed
trade mark.
18. Learned counsel for the respondent No.1 has relied
upon the judgment of Hon'ble Delhi High Court in the case of
Stokely Van Camp Inc and Anr Vs. Heinz India Private
Ltd. in CS(OS) 514/2010 on 3rd September, 2012 to urge
the contention that unless an application under Section
124(1)(b)(ii) of the Act of 1999 is pending, the suit cannot be
stayed.
19. This Court is of the view that Section 124(1)(b)(ii)
of the Act of 1999 is applied only in a situation, where there is
no application pending for rectification of trade mark.
Admittedly, since the application for rectification of trade mark
is pending, Section 124(1)(b)(ii) of the Act of 1999 has no
application and it cannot be a condition precedent for filing an
application under Section 124 of the Act of 1999.
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20. Learned counsel for the respondent No.1 would also
rely upon another judgment of Hon'ble Delhi High Court in the
case of Praveen Kumar Gupta Vs. Mr. Ravi Chadha And
Ors., in CM(M) 428/2021 on 6th August, 2021 to urge a
contention that there is a prayer by the plaintiff with regard to
passing off and the suit can continue in so far as the prayer is
concerned.
21. This Court has considered the said judgment also.
22. Though, it is true that Section 124 of the Act of
1999 does not provide for stay of the proceeding when the
prayer is for passing off, it is relevant to note that in case, a
part of the suit is stayed and remaining part is allowed to be
proceeded and after the conclusion of the proceeding before the
Authority under Section 57 of the Act of 1999, there has to be
one more trial in respect of the matter pertaining to the trade
mark.
23. Under these circumstances, this Court is of the view
that in the interest of justice, a direction to be issued to the
Authority under Section 57 of the Act of 1999 to dispose of the
pending application with an outer limit of eight months.
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24. For the aforesaid reasons, the following:
ORDER
(i) The Writ Petition is allowed.
(ii) The impugned order is set aside.
(iii) The suit pending before the Trial Court in
O.S.No.5497/2020 is stayed till the disposal of
rectification of application pending before the
Authority under the Act of 1999.
(iv) The Authority under the Act of 1999 shall
dispose of the pending applications with an
outer limit of eight months. The parties shall
co-operate for early disposal of the application.
(v) It is further made clear that the stay of the suit
will not come in the way of the parties filing
necessary interlocutory application, if there is
any cause of action for interlocutory
application.
Sd/-
JUDGE
PHM
