* 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:-
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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