Section 124 Trademarks Act Doesn’t Contemplate Any Grant Of Permission By Civil Court To Move High Court Or IPAB For Rectification: Karnataka HC
The Karnataka High Court clarified that, Section 124 of the Trademarks Act, 1999 does not contemplate any grant of permission by the Civil Court to move to the High Court or IPAB (Intellectual Property Appellate Board) for rectification.
The Dharwad Bench was dealing with a writ petition filed by M/s Sri Laxmi Balaji Industries, seeking to quash the order of the Principal District Judge and stay the proceedings in a suit pending disposal of the rectification proceedings before the Registrar of Trademarks.
A Single Bench of Justice H.P. Sandesh observed, “… it is clear that Section 124 of the Act nowhere contemplates any grant of permission by the Civil Court to move to the High Court or IPAB, as may be, for rectification. The true purport and effect of Sections 111/124 (of the old and new Act) has been dealt with in detail and would not require any further discussion or enumeration. The requirement of satisfaction of the Civil Court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in the statutory authority to deal with the issue of invalidity by no means, tantamount to permission or leave of the civil court, as has been contended.”
The Bench added that, it is a basic requirement to further the cause of justice by elimination of false, frivolous, and untenable claims of invalidity that may be raised in the suit.
Advocate S.R. Kamalacharan appeared on behalf of the petitioners while Advocate V. Vidya appeared on behalf of the respondent.
Brief Facts -
The petitioners sought a writ of certiorari contending that few partners of the petitioners began the business of manufacturing and supplying rice products in 1993 under the name and style of ‘M/s. Sri Raghavendra Agro Agencies’, under the brand name ‘R Gold’. Thereafter, in the year 1998, ‘M/s. Sri Raghavendra Agro Agencies’, introduced a new product ‘Sortex Silky Rice’ under the brand name ‘Swamy Ayyappa Gold’. Two different partnership firms were formed namely ‘Sri Laxmi Balaji Industries’ and ‘Sri Laxmi Vinayaka Rice Industries’ in the year 1998.
Application was filed by the petitioner for registration of trademark ‘Swamy Ayyappa Gold’ and ‘Image/Device of Lord Ayyappa’ before the Registrar of Trademarks, Chennai in 2010. The respondent had filed a suit before the Principal District Judge seeking an order of permanent injunction restraining the petitioners from using the brand name ‘Swamy Ayyappa Gold’. The petitioners filed an application for rectification before the Trademarks Registrar against the respondent’s trademark and notice was also issued to the respondent by the Registrar. The Trial Court dismissed the petitioners’ application and being aggrieved, the petitioners approached the High Court.
The High Court in the above regard, noted, “The principles laid down in the case of Patel Field Marshal Agencies, supra are aptly applicable to the facts of the case on hand since though an application is filed subsequent to filing of the suit by the respondent herein but the same is pending for adjudication and since in case where an issue of invalidity is raised or arises, independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter and hence in a suit where inter alia, raising the issue of invalidity of the trademark is pending and also when the suit is filed for the relief of permanent injunction, the same should be stayed.”
The Court said that in this case, exercising of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity is questioned by the petitioner and the finding of the Tribunal/High Court is binding on the Trial Court in considering the same.
“… it is clear that even if no such application is pending on the date of filing of the suit also, Section 124 provides an opportunity to make an application and hence the contention of the respondent’s counsel cannot be accepted”, it further observed.
The Court said that the very contention of the respondent’s counsel that validity has not been disputed in the written statement cannot be accepted.
“… the very contention of the respondent that the same plea has not been raised is also cannot be accepted. … particularly Section 124 in toto, the very Act is very clear that if any application for rectification is pending and the same has to be adjudicated and till then the matter has to be stayed. Hence, the Trial Court has committed an error in considering the very proviso under Section 124(1)(a) and as contended by the petitioners’ counsel it ought to have considered Section 124(1)(b) and misdirected itself and passed the impugned order”, it concluded.
Accordingly, the High Court allowed the writ petition, quashed the impugned order, and stayed the further proceedings.
Cause Title- M/s Sri Laxmi Balaji Industries v. M/s Lakshmi Venkateshwar (Neutral Citation: 2024:KHC-D:13121)
