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Judgment
N. Paul Vasanthakumar, J.—By consent of both parties, the writ petition itself is taken up for final disposal.
Prayer in the writ petition is to issue a writ of mandamus forbearing the first and second Respondents from advertising any application for the
trade mark ''PRIYA'' filed by the third Respondent, pending finality in the civil proceedings.
The case of the Petitioners is that the third Respondent is a Company incorporated under the Indian Companies Act, which is manufacturing
pickles and food products under the trade mark ''PRIYA''. Petitioner filed a suit in C.S. No. 608 of 1994 before this Court and also filed an
injunction application to restrain the use of the trade mark ''PRIYA'' and the main suit is posted for trial. Third Respondent applied for registration
of the Trade mark ''PRIYA'' in the list by submitting application Nos. 376202, 727928, 727929, 727932, for which the Petitioner filed
objections/opposition. The matter is pending before the Intellectual Property Appellate Board, Ahmedabad. The third Respondent filed
applications 532606, 727938, 727941, 727944 and 727945, all of which have been published before acceptance in Trade Mark Journal No.
1338 Suppl (1), dated 15.1.2006. The grievance focused by the Petitioner is that the third Respondent is going on filing applications before the
Registrar for registration of the products manufactured by them under the Trade.Mark ''PRIYA'', for which the Petitioners who asserts their right
and for each and every application filed by the third Respondent, first Petitioner filed opposition asserting its right. Since the third Respondent is
going on filing applications pending civil litigation and the adjudication before the Intellectual Property Appellate Board, Ahmedabad, first Petitioner
has filed, this writ petition with the above said prayer, which according to the first Petitioner is to prevent multiplicity of the proceedings.
Third Respondent filed counter affidavit contending as follows:
(a) Originally the third Respondents company commenced its business in the year 1974 under the name and style of ''Priya Foods Pvt. Limited'',
Subsequently it has changed its name as PRIYA, keeping part of the original name, which has not goodwill on various goods in the market and one
of the marketed food product is pickles.
(b) One Vasudevan was chosen as their sole distributor to USA. Differences arose between the said Vasudevan and the third Respondent and
consequently the sole distributorship for USA given to the said Vasudevan was terminated. Thereafter a civil suit was filed by the said Vasudevan
in O.S. No. 1470 of 1992 on the file of the City Civil Court, Hyderabad, in which an exparte interim order of injunction in I.A. No. 1625 of 1992
was passed. The interim injunction was vacated on condition on 13.9.1993.
(c) The said Vasudevan obtained power of attorney from the Petitioner herein and filed civil suit in C.S. No. 608 of 1994 before this Court and
also prayed for permanent injunction against the third Respondent from using the Trade Mark ''PRIYA'' with respect to pickles. O.A. No. 499 of
was filed on the same lines for interim injunction.
(d) First Petitioner had four registrations under the Trade Marks Act, 1999, for various goods in Classes 32, 29 and 30 under Nos. 353713,
366103, 367909 and 367910. However, first Petitioner had never carried on the business using the said trade mark of ''PRIYA'' for several years.
The injunction petition was also dismissed on 7.9.1994 by this Court.
(e) The third Respondent filed C.S. No. 1658 of 1994 against the erstwhile sole selling agent and also obtained interim injunction against the said
person on 25.7.1996. The third Respondent also filed C.S. No. 2055 of 1995 against the first Petitioner and sought for interim orders in O.A. No.
1309 and 1310 of 1995. The said interim applications having been dismissed, third Respondent filed OSA Nos. 35 and 36 of 1997 before this
Court and the Division Bench of this Court disposed of the said O.S. appeals directing the suit to be expedited by order dated 21.11.2002. The
issue between the erstwhile agent and the third Respondent was settled and a memo of compromise was recorded.
(f) The third Respondent filed rectification application under R.A. Nos. 1 to 4 of 1999 before the High Court of Ahmedabad seeking to
rectify/cancel the first Petitioner''s registration under Nos. 353713 in Class 32, 366103-B in Class 32, 367909-B in Class 29 and 367910-B in
Class 30. In the meanwhile the Trade Marks Act, 1999, was brought into force from 15.9.2003 and, therefore, the said rectification applications
were transferred to the Intellectual Property Appellate Board as TRA. Nos. 68 to 71 of 2004.
(g) The said Appellate Board on 25.1.2005 upheld the contention of the third Respondent and cancelled the registration held by the first Petitioner.
The Review Petition filed in M.P. Nos. 26 to 29 of 2005 were also dismissed on 23.2.2007. First Petitioner moved the High Court of Gujarat by
filing Special Civil Application No. 10329 of 2007 and prayed for setting aside the orders dated 20.1.2005 and 23.2.2007 and obtained an
interim stay of the order and the matter is pending.
(h) The civil suit filed in C.S. No. 608 of 1994 by the first Petitioner before this Court is pending. The petition for amendment of Plaint filed by the
first Petitioner in Application No. 980 of 2006 and the application filed by the third Respondent for rejection of Plaint in Application No. 981 of
2006 are also pending before this Court and in spite of pendency of the above issues before this Court as well as High Court of Ahmedabad,
Petitioner has filed this writ petition which is not maintainable.
(i) It is further stated in the counter affidavit that as per the Trade Marks Act, 1999, a mechanism of opposition of any Trade Mark can be filed if
any application is filed for registration of Trade Mark. Petitioner having failed before the Intellectual Property Appellate Board and also failed to
get interim injunction from this Court, is not justified in filing this writ petition. The third Respondent submitted separate applications for each label
for various products and out of 32 applications filed, 28 applications have been proceeded for registration. It is also stated that the prayer sought
by the Petitioner is contrary to the statutory provision contained in Trade Marks Act, 1999, and therefore the third Respondent prays for dismissal
of the writ petition.
Heard the learned Counsel appearing for the Petitioner as well as learned Counsel for the third Respondent.
The point for consideration in this writ petition is whether the writ petition filed is maintainable in view of the availability of provision to oppose
the registration of Trade marks under Trade Marks Act, 1999.
Admittedly, Petitioner has filed civil suit in C.S. No. 608 of 1994 with the following prayer:
(a) leave to the Plaintiff to file the suit at Madras;
(b) a permanent injunction restraining the Defendant (viz., the third Respondent in this writ petition) from manufacturing or marketing its products
especially pickles under the trade name ''PRIYA'' in India and abroad, including the United States of America, and to forthwith withhold, cease,
discontinue and withdraw manufacturing stocking its products under the trade mark ''PRIYA'' in India and abroad, including the United States of
America, to hand over to the Plaintiff for destruction of the stocks of all the offending goods bearing the trade mark ''PRIYA'' in possession of the
Defendant together with labels, wrappers, cartons, blocks, advertisement material etc., bearing the false trade mark ''PRIYA'' as mentioned above
and directing the Defendant to give a written undertaking that it will not henceforth at any time, stock, sell or exhibit for sale or deal with the trade
mark ''PRIYA'' or any other trade mark deceptively similar to the Plaintiffs reputed trade mark ''PRIYA''.
(c) directing the Defendant to pay the Plaintiff a sum of Rs. 1,00,000 or more on taking of the accounts rendered by Defendant by way of
compensation for wrongful gains made by the Defendant and render accounts;
(d) directing the Defendant to pay Plaintiff the costs of the suit; and
(e) granting such other and further reliefs as this Hon''ble Court may deem fit and proper in the circumstances of the case and thus render justice
The petition filed for interim injunction by the first Petitioner in Application Nos. 499 of 1994 and 4431 of 1994 in C.S. No. 608 of 1994 were
dismissed by this Court by an elaborate order and the same is reported in 1994 (2) LW 510 (Modern Food Products v. Ushodaya Enterprises
Limited). In paragraph 61, this Court held as follows:
On the materials now available on record, it cannot be said that Plaintiff has established a prima facie case of exclusive right to use the mark
''Priya'' for pickles as against the Defendant which has placed materials to show that its user was prior to the date of the Plaintiffs application for
registration. As to whether the Plaintiff had commenced using this mark for pickles even before the Defendant started using the mark for the pickles
manufactured by it, is a matter which has to be decided at the trial of the action. Registration of the mark would not entitle the proprietor of the
mark to prevent a prior user of the mark from continuing to use the mark as the registration is subject to the rights of the prior user as expressly
provided in Section 33 of the Act.
Admittedly the main suit viz., C.S. No. 608 of 1994 is still pending. The prayer in the writ petition being omnibus in nature and the first Petitioner
having failed to establish his right before the Civil Court as well as before the Intellectual Property Appellate Board, Ahmedabad, is not justified in
seeking prohibitory order against the Respondent 1 and 2 from permitting the third Respondent in advertising any application for the trade mark
''PRIYA''. As rightly contended by the learned Counsel for the third Respondent, as and when application if filed for registration u/s 18 of the
Trade Marks Act, 1999, and immediately after advertisement, is made, it is open to the Petitioners to raise opposition u/s 21 of the Act before the
Registrar and the Petitioner''s right is not in any way affected even during the pendency of the Civil suit. Even against the orders of registration
passed by the second Respondent, if the Petitioners are still aggrieved, it is open to them to file application u/s 50 before the Registrar of Trade
Marks or to move the Intellectual Property Appellate Board constituted u/s 83 of the Act, by filing appeal u/s 91 of the Act and the Appellate
Board is also empowered to issue interim orders as per Section 95 of the Act. Since the Trade Marks Act, 1999, gives ample opportunity to
oppose the registration and provided effective remedies, I am of the view that the writ petition filed with the above prayer is not maintainable.
There is no merit in the writ petition and consequently the writ petition stands dismissed. No costs, Connected miscellaneous petition is also
dismissed.