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Section 124 in The Trade Marks Act, 1999
Section 124(1) in The Trade Marks Act, 1999
Section 111 in The Trade Marks Act, 1999
The Trade Marks Act, 1999
Section 30 in The Trade Marks Act, 1999

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Delhi High Court
Stokely Van Camp Inc & Anr vs Heinz India Private Ltd. on 3 September, 2012
Author: Kailash Gambhir
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*        IN THE HIGH COURT OF DELHI AT NEW DELHI


                               Judgment delivered on :3rd September, 2012
+        IA No.10795/2011 in CS(OS) 514/2010


         STOKELY VAN CAMP INC & ANR                      ..... Plaintiff
                               Through    Ms. Pratibha     M. Singh, Adv. with
                               Mr.Ashutosh Kumar, Adv.
                        versus


         HEINZ INDIA PRIVATE LTD                  ..... Defendant
                               Through      Ms.Anuradha      Salhotra,     Adv.with
                               Mr.Sumit Wadhwa, Adv.


         CORAM:
         HON'BLE MR. JUSTICE KAILASH GAMBHIR


1.       By this application moved under Section 124 of the Trade Marks Act,
1999 read with Section 151 of the Code of Civil Procedure, 1908, defendant
seeks directions for staying the further proceedings in the present suit till
the disposal of the rectification petition which is already pending before the



     CS (OS) No. 514 of 2010                                               Page 1 of 23
 Appellate Board (IPAB). The rectification petition was filed by the
defendant after the institution of the present suit.

2.       Arguing the present application, Ms. Anuradha Salhotra, learned
counsel appearing for the defendant, stated that even though the
defendant has filed rectification proceedings before the Appellate Board
without seeking leave of the court still the suit is liable to be stayed under
Section 124(1) (ii) of the Trade Marks Act, 1999 pending the rectification
proceedings before IPAB. In support of her arguments counsel for the
defendant placed reliance on a judgment of the Division Bench of this court
in the case of Puma Stationer P. Ltd. & Anr v. Hindustan Pencils Ltd., 2010
(43) PTC 479 (Del) (DB).

3.       Counsel submitted that as far as the present case is concerned, prima
facie the defendant has already succeeded in satisfying this court with
regard to the invalidity of the plaintiff's trade mark and therefore this court
has to stay the suit for a period so long till the Appellate Board decides
the rectification application moved by the defendant in accordance with
the mandate of section 124 of the Act.

4.       Counsel also submitted that the prior filing of the application of the
defendant would not affect the right of the defendant to seek grant of
the relief even at this stage as already the defendant in any case has
challenged the validity of the trade mark of the plaintiffs in the written


     CS (OS) No. 514 of 2010                                         Page 2 of 23
 statement.       Counsel thus submitted that      the defendant     fulfils   the
ingredients of Section 124 of the Trade Mark Act for the grant of the relief
of stay of the present suit.

5.       Counsel also submitted that the defendant need not withdraw the
earlier application filed by the defendant and can insist upon the order in
terms of Section 124 of the Trade Mark Act as the defendant fully satisfies
the conditions laid down in the said provision.

6.       Counsel further submitted that the right of the defendant will be
deemed to have been abandoned only when the defendant fails to file the
application before the Appellate Board within a period of three months
and the defendant in this case has already filed an application and
therefore the plea of abandonment will not be available to the plaintiff.

7.       Counsel also submitted that no prejudice would be caused to the
plaintiff if the defendant has already filed rectification application as the
filing of such an application will only result in early disposal of the same.

8.       Counsel also submitted that Section 124 of the Trade Mark Act in
fact     imposes an obligation     on the court itself to grant stay in the
proceedings        to enable   the party to move    rectification   application
whenever the court feels prima facie satisfied about the invalidity of the
registration of the trade mark of the other party. Counsel thus submitted
that the defendant even need not move any such application in this regard.


     CS (OS) No. 514 of 2010                                          Page 3 of 23
 9.       Opposing the present application, Ms. Pratibha Singh, learned
counsel appearing for the plaintiff, submitted that the defendant          has
already filed a rectification petition without seeking leave of this court
and therefore the defendant is not entitled to move this court in terms of
Section 124 of the Trade Mark Act.

10.      Counsel      further submitted that   indisputably, the rectification
petition was not moved by the defendant prior to the filing of the suit on
19.3.2010 and therefore for seeking stay of the present suit the defendant
has to fulfil the conditions laid down under sub-clause (ii) of Clause (1) of
Section 124 of the Trade Marks Act. The contention raised by the counsel
for the petitioner was that under the said sub clause (ii), the Court in the
event of being satisfied regarding the invalidity of the mark can frame an
issue and then adjourn the suit for a period of three months so as to
enable the applicant to file the rectification application and since the
rectification application itself has already been filed by the defendant,
therefore, they are not entitled to stay at this stage and in fact the right
of the defendant to move such an application shall be deemed to have
been abandoned by them.

11.      Counsel also submitted that the defendant had earlier filed IA No.
4994/2010 under Section 124(1) (ii) of the Trade Mark Act 1999 and the
same was not pressed by the defendant even after the dismissal of the



     CS (OS) No. 514 of 2010                                        Page 4 of 23
 injunction application of the plaintiffs on 31.5.2010 and not even after the
dismissal of the appeal filed by the plaintiffs challenging the said dismissal
order dated 30.7.2010 and therefore,         by this fresh application the
defendant cannot seek stay of the present proceedings to the serious
prejudice and detriment of the interests of the plaintiffs as grant of any
such stay at this stage will unnecessarily delay the disposal of the present
suit.

12.     Counsel further submitted     that   in fact   the defendant       has
suppressed from this court that they have already filed a rectification
petition before the Appellate Board and therefore the defendant is not
entitled to claim the stay of the present proceedings. Counsel also
submitted that the plaintiff had challenged the order of the Hon'ble
Division Bench before the Hon'ble Supreme Court of India and vide order
dated 8.4.2011 the Apex Court left the legal questions raised by the
plaintiffs in the said appeal open for consideration of this court. Counsel
thus submitted that the defendant still will have to satisfy this court with
regard to the invalidity of the said trade mark of the plaintiffs as per the
mandatory requirement of Section 124 of the Trade Mark Act.

13.     Counsel further argued that the defendant has been       deliberately
delaying disposal of the said rectification application filed by them as for




   CS (OS) No. 514 of 2010                                          Page 5 of 23
 several dates they failed to rectify the defects in the said petition despite
being repeatedly informed by the office of the said Board.

14.    I have heard Ld. Counsels for the parties and have given my
thoughtful considerations to the arguments advanced by them.

15.    Before dealing with the contentions raised by the rival parties in the
present application, it will be appropriate to give brief narration of the facts
of the present case. The plaintiffs have filed the present suit for permanent
injunction to restrain the defendant, its Directors etc. from using the
expression "REHYDRATES REPLENISHES RECHARGES" or any other
expression identical to and/ or deceptively similar to the said mark, slogan,
expression etc. in relation to any of its products including beverages, health
drinks etc. resulting in violation of the statutory and common law rights of
the plaintiffs in the said trade mark. The plaintiffs have also claimed decree
of damages/ rendition of accounts to the tune of Rs.21 lacs against the
defendant. As per the averments set out by the plaintiffs in the plaint,
plaintiff No.1 has ownership in respect of registered trade-mark for the
expression "REHYDRATE REPLENISH REFUEL" since the year 2003 for their
internationally known product Gatorade, a sports drink. The plaintiffs have
also claimed that the said mark was coined by plaintiff No.1 in the year
2002 and was first put to use by the plaintiffs in June 2003 in USA and the
said trade-mark is in use in India since the year 2004 when the plaintiffs had



   CS (OS) No. 514 of 2010                                            Page 6 of 23
 launched the said sports drink under the name of Gatorade in the Indian
market. Grievance of the plaintiffs against the defendant is that the
defendant has recently launched a new product by the name of ISOTONIK
which is also an energy drink and the defendant has also started using the
same expression "REHYDRATES REPLENISHES RECHARGES" prominently on
their packaging/promotional material pertaining to the said product. The
plaintiff has thus claimed that adoption of the same expression by the
defendant for their said energy drink is illegal, fraudulent and in complete
violation of the proprietary rights of the plaintiffs in the said expression and
also it is infringement of the trade mark and copy right of the plaintiffs in
the said mark and brand name. The defendant has already filed written
statement in the present case and the main defence raised by the
defendant in the present case is that the said expression is descriptive of
the goods and the same is devoid of any distinctive character. The
defendant has also taken a stand that use of the expression "REHYDRATES
FLUIDS, REPLENISHES VITAL SALT, RECHARGES GLUCOSE" as is being used
by the defendant is not an infringement of the use of single expression of
the plaintiff for the reason that the said use satisfies the provisions of
Section 30(2) of the Trade Marks Act and that use of the said expression in
relation to the defendants goods indicates the kind, quality, intended
purpose and value of the defendants goods and other characteristics of the
defendant's goods. The defendant has thus claimed that the said



   CS (OS) No. 514 of 2010                                           Page 7 of 23
 expressions are not being used by the defendant as trade-mark but only as
bonafide description of their products and the same cannot be said to be
an infringement of the plaintiff's rights over the said expression and the
plaintiffs cannot have any kind of monopoly on such expressions describing
the quality of the goods. Along with the suit the plaintiffs have also moved
an application for the grant of interim injunction under Order 39 Rule 1 & 2,
CPC. The said application of the plaintiff was dismissed by a detailed order
dated 31.5.2010 passed by this court. The said order dated 31.5.2010 was
challenged by the plaintiff by filing an appeal vide FAO(OS) 448/2010 and
the said appeal preferred by the appellant was also dismissed by the
Hon'ble Division Bench vide order dated 10.11.2010. The appellate court
upheld the view taken by the learned Single Judge and found that the
plaintiffs/appellants do not have any prima-facie case in their favour and
the balance of convenience is in favour of the defendant/ respondent who

will be caused grave and irreparable injury if injunction as prayed for is granted. The said order of the Hon'ble Division Bench was further challenged by the plaintiff before the Hon'ble Supreme Court. Vide order dated 8.4.2011 the SLP filed by the appellants was dismissed while leaving the legal issues open for the consideration of this court.

16. After giving the aforesaid background of the case, let me now revert back to the controversy in hand. The present suit was filed by the plaintiff on 19.3.2010. Along with the said suit an interim application vide IA CS (OS) No. 514 of 2010 Page 8 of 23 No.3646/2010 was also filed. Before even the court could hear arguments on the stay application, the defendant had moved an application under Section 124(1) (ii) of the Trade Mark Act, 1999 thereby seeking leave of this court in order to file a rectification application before IPAB against the plaintiff's registered trade-mark. Arguments on injunction application were heard by this court on 6.5.2010 and the said application was dismissed by this court vide order dated 31.5.2010. The appeal against the said order was preferred by the appellant on 30.7.2010 and the same was dismissed by the Hon'ble Division Bench vide orders dated 10.11.2010. In the meanwhile on 6.10.10 defendant filed a rectification application before IPAB vide application bearing number (ORA/147/2011/TM/DEL) under Section 57 & 125 of the Trade Marks Act thereby challenging the validity of the plaintiffs trade mark "REHYDRATES REPLENISHES RECHARGES". The said rectification application was moved by the defendant without seeking any leave of the court although application to this effect filed by the defendant u/s 124 of the Act was pending consideration before this court. Reply to the defendants IA No.4994/2010 was filed by the plaintiff on 8.12.2010. Thereafter, defendant sought time to file rejoinder to the same. The Hon'ble Supreme Court had dismissed the SLP filed by the plaintiffs against the order of the Hon'ble Division Bench vide orders dated 8.4.2011 and it is thereafter that the defendant had moved yet another application under Section 124 of the Trade Marks Act to apprise this court about the filing of CS (OS) No. 514 of 2010 Page 9 of 23 the rectification application filed by the defendant on 6.10.2010 and praying for stay of the instant suit till the disposal of the said rectification application. The defendant in the present application has taken a stand that this court has heard arguments on the applications being IA No.3646/2010(injunction application u/o 39 Rule 1,2 CPC) and IANo.4994/2010(stay application u/s 124 TMA ) and then reserved judgment. The defendants have also taken a stand that although this court passed an order on the injunction application but over-looked passing any order on IA No.4994/2010. The defendant has further taken a stand that pending appeal before the Division Bench of this court they have filed rectification petition before IPAB on 6.10.2010 and the defendant has also taken a stand that since this court has already given a prima-facie finding on the invalidity of the trade-mark of the plaintiff, therefore, further proceedings in the present matter must be stayed so that final adjudication on the validity of the said registered trade-mark of the plaintiffs can take place before Intellectual Property Appellate Board(IPAB). This application has been strongly contested by the plaintiffs and rival contentions of both the counsels have already been referred above.

17. Section 124 of the Trade Marks Act (Section 111 prior to amendment of Trade Marks Act, 1999) has been subject matter of discussion in a catena of judgments of this court and other High Courts. For better appreciation of CS (OS) No. 514 of 2010 Page 10 of 23 the controversy in hand, Section 124 of the Trade Marks Act 1999 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) 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 Appellate Board, 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 Appellate Board 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 CS (OS) No. 514 of 2010 Page 11 of 23
(b) (ii) of sub- section (1) within the time specified therein 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."
As heading of the said section suggests it deals with stay of the proceedings by the court where the validity of registration of the trade mark of other party is in question.
CS (OS) No. 514 of 2010 Page 12 of 23

18. On a bare reading of the said provision the same envisages satisfaction of the following conditions to be fulfilled for the stay of the proceedings pending before the court.

The first and foremost condition is that such a suit is a suit for infringement of trade mark. If this condition is satisfied then the court will examine the defence raised by the defendant to find whether the same satisfies either of the conditions i.e. (a) or (b) of section 124(1) of the Act. Section 124(1)(a) contemplates a situation where the defendant pleads that registration of the plaintiffs trade mark is invalid and Section 124(1)(b) envisages a situation where 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 defendants trade mark. If one of these conditions envisaged in sub- clause (a) and (b) is satisfied then the court trying the suit shall stay the same in accordance with the subsequent subsections. If condition (i) of Section 124(1) is satisfied i.e. if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade-mark are already pending before the Registrar or the Appellate Board then the court shall stay the suit till the final disposal of such proceedings and if the condition

(ii) of Section 124(1) is satisfied i.e. the rectification proceedings are not pending before the Registrar or the Appellate Board 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, then the court CS (OS) No. 514 of 2010 Page 13 of 23 shall raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register. Sub-section (2) of Section 124 further provides that if the party concerned proves to the court that he has made any such application as is referred to in clause (ii) of sub-section (1) within the time specified therein 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. Sub Section (3) of Section 124 of the Act deals with the consequences of not filing an application within the time specified by the court or within such extended time as the court may have allowed and then the court shall proceed with the suit in regard to the other issues in the case and issue as to the validity of the registration of the trade mark concerned then shall be deemed to have been abandoned by such a party. Sub-section (4) of Section 124 of the Act envisages that 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 comfortably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. Sub section (5) of Section 124 provides that the stay of a suit for infringement of 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 CS (OS) No. 514 of 2010 Page 14 of 23 kept, appointing a receiver or attaching any property during the period of the stay of the suit.

19. It is thus seen that in any suit for infringement of trade mark on the satisfaction of either of the conditions envisaged under clause (a) or (b) of Section 124, the court shall straightway stay the suit till the disposal of proceedings before the Appellate Board if clause (i) of section 124(1) is satisfied. Therefore, Clause (i) of section 124(1) poses no difficulty as for claiming stay under this clause the party has to merely satisfy the court that the proceedings for rectification of the register in relation to the trade mark of the either party are already pending consideration before the Registrar or the Appellate Board before the institution of the present suit. On the other hand, for claiming stay under clause (ii) of section 124 (1), the party has to satisfy the following conditions:-

1. That no such proceedings for rectification of the register in relation to the trade-mark of the either party are already pending before the Registrar or the Appellate Board.
2. That the contention regarding the invalidity of the registration of the plaintiffs or defendants trade-mark is prima-facie tenable.

If both the above mentioned conditions are satisfied then the court will raise an issue regarding the same and also adjourn the case for a period of three months from the date of the framing of the issue in order to enable CS (OS) No. 514 of 2010 Page 15 of 23 the party concerned to apply to the Appellate Board for rectification of the register.

20. The aforesaid legal position was settled by this court in the case of Kedar Nath v. Monga Perfumery and Flour Mills reported in AIR 1974 Delhi 12 and relevant part of the same is reproduced as under:

"This section deals with the procedure in cases where the defendant in an action for infringement attacks the validity of the plaintiff's registration. If any rectification proceeding is already Pending before the Registrar or the High Court the action for infringement has to be stayed until the final disposal of the rectification proceeding under Section 111(1)(i) [Section 124 of the Trade Marks Act, 1999 is similar to the Section 111 of the Trade and Merchandise Marks Act, 1958.] Under Section 111(1)(i) where no rectification proceeding is pending and the Court is satisfied that the contention as to validity is bona fide and prima facie sustainable, an issue as to validity will be raised to enable the party concerned to apply to the High Court for rectification. It was not disputed that under Section 111 the Court has the Power to grant interlocutory injunction etc., even where the issue as to the validity of registration is raised and the Court stays the proceeding in an infringement suit."
"...the scheme of the section shows that before the Court stays a -Proceeding in the infringement action, proceeding for rectification of the register under Section 111 must be pending on that date. The defendant cannot file an CS (OS) No. 514 of 2010 Page 16 of 23 application subsequent to the institution of the suit under Section 111 and claim that the plaintiff's suit for infringement must be stayed. If no proceeding for rectification of the register is pending on the date of the institution of the suit by the plaintiff then Section 111 is attracted and a Court may adjourn the case for a period of three months in order to enable the defendant to apply to the High Court for rectification of the register. In that case the Court must be satisfied that the contention as to validity of the defendant's registration is bona fide and Prima facie sustainable."

21. The same issue also came up for consideration before this court in the case of Astrazeneca UK Ltd. & Ors v. Orchid Chemicals & Pharmaceuticals Ltd, 2012 (50) PTC 380 (Del) and after placing reliance on Kedarnaths judgment (Supra) and on a judgment of Division Bench of Gujarat High Court reported in 1999 PTC (19) 718 in the case of Patel Field Marshal Agencies v. P.M. Diesels Ltd., it was held as under :

"The distinction between Section 124(b)(i) and 124(b)(ii) is on the basis of pendency of the proceedings for rectification of the register and not on the basis of whether the party initiating the proceedings for rectification could initiate such proceedings before the institution of the suit or not. There can be other eventualities under which a party may not be able to initiate the proceedings for rectification before the institution of the suit, but that will not give them a right to circumvent the prima facie satisfaction of his plea for invalidity, by the Court. The CS (OS) No. 514 of 2010 Page 17 of 23 distinguishing feature of the two sub clauses is only pendency of the proceedings and nothing more can be read into them. The plea of substantial compliance of the requirement of Section 124 by the plaintiffs is also not sustainable. Either there is compliance of the said provision or non-compliance in the facts and circumstances. Compliance will be when after the institution of the suit, if an application for rectification is to be filed, prima facie invalidity of the opposing mark is to be demonstrated to the Court. The fact that the application could not be filed prior to the institution of the suit, will not entitle a party to circumvent the prima facie satisfaction of the Court. Consequently the proceedings for rectification of the defendant's mark could not be initiated by the plaintiffs without the prima facie satisfaction of their plea by this Court nor this case is liable to be adjourned or stayed for three months in terms of Section 124(b)(i) of the Act to await the outcome of the rectification proceedings initiated by the plaintiffs before the Appellate Board."

22. The said order of the Single Bench was challenged by the aggrieved party before the Hon'ble Division Bench and without interfering with the view taken by the learned Single Judge the Division Bench in the following paragraph reiterated the same principles:

"It was however submitted on behalf of the appellants/plaintiffs that in view of provisions of Section 124 of the Act there should have been a stay of the proceedings when the validity of the registration of trade CS (OS) No. 514 of 2010 Page 18 of 23 mark is in question. However, in the present case, the provisions of Section 124(1)(b)(ii) would not be applicable. The said provisions are applicable only to an application for rectification which is already pending, in view of which, the suit could be stayed, pending final disposal of such proceedings. The provisions which would be applicable to the facts and circumstances of the present case are those which envisage that where the application for rectification of the order in such proceeding is not pending, then a party seeking rectification applies for rectification, subject to a prima-facie satisfaction of the Court regarding invalidity of the registration of the mark of the opposite party. The appellants/plaintiffs therefore could not have filed an application for rectification without showing, establishing and obtaining prima-facie satisfaction of the Court that they have sufficient material to be able to invalidate the registration of the mark of the respondent/defendant. The aforesaid rectification proceeding which is filed is still pending for consideration. Therefore, the learned Single judge was justified in not staying the Suit. In this connection, reference may be made to the provisions of Section 124(5) of the Trade Marks Act, which entitles the Court to deal with the interlocutory application. Therefore, the submission of the counsel for the appellants/plaintiffs in this regard, is misconceived and cannot be accepted."

23. Reiterating the legal principles, Hon'ble Justice Gita Mittal also took a same view in the case of Pfizer Products Inc v. Rajesh Chopra & Ors, 2007 (35) PTC 59(Del.) and the relevant paragraph of the judgment is as follows:

CS (OS) No. 514 of 2010 Page 19 of 23
"A bare perusal of the statute shows that it is only if there are pending proceedings for rectification of the register in relation to the plaintiffs or defendants trademark at the time of filing of the suit that the court is required to stay the suit pending final disposal of such proceedings. However, if no such proceedings are pending, the satisfaction of the court that the plea regarding the invalidity of the registration of the plaintiffs or the defendant's trade mark is prima facie tenable, is a sine qua non under Section 124(1)(b)(ii). Upon such a prima facie view, the law requires the court to raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of issue in order to enable the party concerned to apply to the appellate board for rectification of the register."

24. The case Puma stationer (supra) relied upon by the counsel for the defendant in support of her contention that it is obligatory on the part of the court to order stay of the suit if the proceedings, even if initiated after filing of the suit, are pending before the Appellate Board, in my opinion, is clearly distinguishable as in that case, the Division Bench has not discussed the law in details so as to give a clear picture on the same, nor has it referred to any of the above mentioned cases which have elaborately discussed and analyzed the legal position threadbare. The court has given its decision after placing reliance on two judgments of Single Bench namely, Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co., Bikaner AIR 1982 Delhi 230 and Elofix Industries (India) v. Steel Bird CS (OS) No. 514 of 2010 Page 20 of 23 Industries, AIR 1985 Delhi 258 but without taking note of any other previous decisions on the subject nor even the case Kedar Nath (supra). It is also found, on the perusal of these judgments, that the facts of these judgments are also quite distinct from the facts of the present case.

25. Before concluding, seeing the case from another point of view, let us consider the scheme of section 124, Trade Marks Act, 1999. Section 124 is primarily made to prevent parallel enquiries in the same matter.

26. In the present case, the defendant initially came up with an application u/s 124(1) (ii) of the Act to seek leave of the court in order to initiate proceedings before the IPAB and according to me that was the correct approach taken by the defendant. Things went wrong when the defendant chose not to press that application and later, without taking recourse of following the mandate of section 124(1) (ii), initiated the rectification proceedings before the Appellate Board on his own free will. The defendant, himself acting contrary to the clear provision of statute, cannot expect the court to take a step forward and go out of the way by giving a hypothetical construction to the statute in order to rescue the defendant from his untenable acts.

27. It is a well settled law that when the words of the statute are clear, plain or unambiguous i.e. they are reasonably susceptible to only one meaning; the courts are bound to give effect to that meaning irrespective CS (OS) No. 514 of 2010 Page 21 of 23 of the consequences. The literal interpretation should be given to a statute if the same does not lead to any absurdity. It has been observed by the Apex court in Nandi Devi v. Radha Devi Gupta, AIR 2005 SC 648, that "The interpretative function of the Court is to discover the true legislative intent. It is trite that in interpreting a statute the Court must, if the words are clear, plain, unambiguous and reasonably susceptible to only one meaning, give to the words that meaning, irrespective of the consequences. Those words must be expounded in their natural and ordinary sense. When a language is plain and unambiguous and admits of only one meaning no question of construction of statute arises, for the Act speaks for itself. Courts are not concerned with the policy involved or that the results are injurious or otherwise, which may follow from giving effect to the language used. If the words used are capable of one construction only then it would not be open to the Courts to adopt any other hypothetical construction on the ground that such construction is more consistent with the alleged object and policy of the Act. ..."

28. In Nasiruddin and Ors. v. Sita Ram Agarwal, AIR 2003 SC 1543, this Court stated the law in the following terms :-

"The court's jurisdiction to interpret a statute can be invoked when the same is ambiguous. It is well known that in a given case the court can iron out the fabric but it cannot change the texture of the fabric. It cannot enlarge the scope of legislation or intention when the language of CS (OS) No. 514 of 2010 Page 22 of 23 provision is plain and unambiguous. It cannot add or subtract words to a statute or read something into it which is not there. It cannot re-write or recast legislation..."

29. Hence, keeping the legal principles as discussed above in mind, it is concluded that in a suit for infringement of a trademark, the applicant cannot ask for a relief of the stay of the suit until he fulfills the conditions stated in 124(1) of the Act. If the rectification proceeding are not pending the institution of the suit, it is obligatory on part of the applicant to follow the provision laid down under section 124(1)(ii) of the Act in order to initiate rectification proceedings before the Appellate Authority. In case he fails to adhere to the same and yet initiates rectification proceedings, then he will not be entitled to the relief of stay of the suit under section 124 of The Trade Mark Act, 1999.

30. In the light of the above discussion, the defendant is not entitled to seek stay of the present suit. The application moved by the defendant under section 124(1) (ii) of The Trademarks Act, 1999, is devoid of any merit and the same is hereby dismissed.

KAILASH GAMBHIR, J 3rd September , 2012 CS (OS) No. 514 of 2010 Page 23 of 23