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Judgment
S. Usha, J
1 . This miscellaneous petition has been filed by the Respondents/Petitioner in the main rectification application for an order to dismiss/reject the main
application for rectification as not maintainable and premature.
2 . The applicant/Respondent filed an application for rectification of the trade mark registered under No. 704811 in class 30 under the provisions of the
Trade Marks Act, 1999 (hereinafter referred to as the Act). The applicant has not come with clean hands and is guilty of suppression of material
facts. The application is bad in law and is an abuse of the process of law. The Respondent filed a civil suit No. 3 of 1999 before the District Court at
Jamnagar on 15.03.1999 and the same is pending adjudication. The Civil Suit initially was for passing off action. On 30.12.2008, the Respondent filed
an application for amendment of the plaint to include the registration of the impugned trade mark. The rectification application has been filed based on
the amendment application and therefore deserves to be dismissed.
The applicant has not pleaded as to invalidity of the trade mark in the suit and so the application is not maintainable and is bad in law. In view of the
provisions of Section 124 of the Act, the applicant is not entitled to file this application for rectification without due compliance of the mandatory
provisions of Section 124(1) (b) (11) of the Act. The Respondent had quoted the Patel Field Marshall's case of the Gujarat High Court. On 22.03.1999
the applicant filed their counter to the interim application for injunction where it was admitted that the Respondent had obtained registration. Being
aware of the fact that the Respondent had applied for registration and having not opposed the same, the applicant has waved their right to challenge
the validity of the trade mark and therefore now cannot file an application for rectification.
4 . The matter came up before us at the Circuit Bench Sitting at Ahmedabad on 25.11.2010. Shri Akshay A. Vakil learned Counsel appeared for the
Respondent/applicant and learned Counsel Shri Y.S. Jasani appeared for the Petitioner/Respondent.
5 . The applicant had not filed their reply to the miscellaneous petition. They had sought adjournment on the ground that to collect appropriate
documents it would take time and that they require time to file counter. The Respondents counsel opposed the request for adjournment and the matter
was heard.
The learned Counsel for the Respondent/Petitioner contended that the application for registration was made on 17.04.1996 and registration was
granted in the year 2008. The civil suit for passing off was filed on 15.03.1999. After obtaining registration on 30.12.2008, the Respondent had filed an
application for amendment to include the registration. The applicant had filed this rectification application without complying the provisions of Section
124 of the Act. Validity of the registration was not challenged or raised in the suit and therefore the application is premature. The counsel also relied
on few Judgments in support of his case.
In reply the counsel for the Respondent contended that the miscellaneous petition itself is not maintainable. The counsel also requested that the
miscellaneous petition be heard along with the main matter.
8 . We have heard and considered the arguments of both the counsel and have perused the pleadings. It would be relevant to extract the passage from
the Division Bench judgment of the Gujarat High Court in Patel Field Marshall's Case -1999 (19) PTC 718.
... if proceedings for rectification are already pending raising the plea of invalidity, that is to say, the attention of an appropriate forum having already
been invited to that issue, those and then civil suit for infringement can proceed in the light of that decision. In case, no such proceedings for
rectification are pending at the time of raising the plea of invalidity the prosecution of such plea by the person raising it depends on prima facie
satisfaction of the court about the tenability of this plea....
The issue as to obtaining the satisfaction of the court regarding the validity of the registered trade mark would arise when the application for
rectification is not pending. In the instant case the suit was for passing off where the impugned trade mark was not registered. Then obviously the
issue as to challenging the validity of the registration does not arise. The suit was filed in the year 1999 subsequently in the year 2008, the trade mark
was registered and the application for amendment under Order VI Rule 17 Code of Civil Procedure was filed. It is not clear as to whether the
application was allowed or not. If allowed, whether amendment was carried out and direction given to the Defendant in the application to file
additional written statement. The Respondent has not made clear the facts. The Respondent's main contention was that when the applicant was
aware of the application for registration, he ought to have opposed the same. Having failed to do so, he has waived the right to challenge the
registration. We do not accept this contention of the Respondents. Failure to oppose an application for registration does not bar a person from filing an
application for rectification.
In this regard it is worth quoting the observation made in Hyde & Co.'s TM 1878 (7) Ch.D.724, by the Master of Rolls, ""It is said that the trade
should have taken notice of advertisement, which is inserted pursuant to the provisions of the Act of Parliament, to give to all the world of the intended
registration. But the answer to that is, that there is no obligation to see the advertisement. It is as a precaution that the Act gives people an additional
opportunity, besides looking at the Register, of knowing what is to be done. But if a person interested does not see the advertisement, he is in no worse
position than he would have been before. He must use due diligence, when the fact comes to his knowledge, to remove the trade mark.
In the case on hand, the additional written statement has not been filed, in our opinion as nothing has been stated by the Respondent. The
rectification application has been filed even before the additional written statement has been filed. So the stage of obtaining prior permission does not
arise in this case. We, therefore, find no reason to allow this miscellaneous petition.
The miscellaneous petition is accordingly dismissed with no order as to costs.