Mohan Lal And Brothers vs Deputy Registrar Of Trade Marks And Ors

Syed Obaidur Rahaman, Technical Member

1 . This is an appeal against the order dated 27.07.2006 passed by the Deputy Registrar of Trade Marks, Kolkata. The facts of the case is that the

applicant filed interlocutory petition before the Trade Marks Registry with a prayer that the present proceeding be stayed till the suit pending in the

Court of the Learned District Judge at Bhagalpur is disposed of. The label mark consisting of the word 'ASLI MUNNA RAJA KHAINI' with the

device of bust photo of a man was sought for registration under application No. 1214071 in class 34 dated 14.7.2003 by the applicant/appellant. The

mark was claimed to be in use since 01.10.1990. The application was advertised before acceptance under Section 20 (1) proviso vide Trade Marks

Journal No. 1327 Supplementary (5) dated 31.01.2005 at page 3615. On 01.07.2005 a notice of opposition was filed by the respondent No. 3 to the

registration of the aforesaid impugned mark of the appellant under Sections 9, 11, 12 and 18 of the Trade Marks Act, 1999 (hereinafter referred to as

the Act) and they also prayed for the exercise of the discretion of the Tribunal adverse to the applicant under Section 18 (4) of the Act. The applicant

filed his counter statement on 13.09.2005. Thereafter both the parties filed their evidence in terms of Rules 50, 51 and 52 of the Trade Marks Rules,

2002. After completion of evidence as per rules, the matter was set down for hearing for the first time on 16.05.2006 which was adjourned to

19.07.2006. In the meantime, the applicant filed the aforesaid interlocutory petition on 07.07.2006 when the Deputy Registrar heard the matter. The

appellant filed an interlocutory petition for stay of the proceeding till the disposal of the Civil suit pending between the parties in the court of learned

District Judge at Bhagalpur. The advocate for the opponent stated that he does not want to file comments on the said interlocutory petition of the

applicant and this may be heard and disposed of. The applicant/appellant stated that the opponent/respondent have filed a suit being No. TS No.

1/2001 in the Court of learned District Judge at Bhagalpur under Sections 134 and 135 of the Act praying for declaration that the trade mark

MUNNA KHAINI belongs to the opponent/respondent No. 3 and that the applicant be restrained from using the impugned trade mark. The

appellant/applicant stated that the pending suit relates to infringement and passing off and therefore the issue relating to proprietorship of the rival

marks are pending before the Hon'ble court. He stated that the same issues are also pending before the Tribunal as to whether the applicant is entitled

to the registration of the impugned mark as per the provisions of the Act. He stated that there may be some possibility of conflicting judgment and

decisions and therefore the proceeding be stayed till final outcome of the pending suit.

2 . The opponent/respondent No. 3 vehemently repudiated the submissions of the appellant/applicant and stated that the present interlocutory petition is

filed by the applicant is deliberate with a view to delay the proceeding in a malafide way. He stated that the suit is pending since the year 2001 when

the opposition proceedings were not even instituted. He stated that the application for registration of impugned mark was filed only on 14.07.2003 i.e.

much subsequent to the said suit and therefore has no relevance to those proceedings. The opponent/respondent No. 3 submitted that in any case the

issue before the Tribunal is whether the impugned mark is registerable within the provisions of the Act or not, whereas the suit pending before the

learned District Judge, Bhagalpur is as to whether there is any infringement or passing off. He stated that there is no similarity of the issue in pending

suit and the present proceeding. He stated that the evidence of the parties is already completed and the matter is already set down for main hearing

and therefore, staying of the proceedings at this stage is not called for.

The Deputy Registrar, after hearing the submissions of the parties, found that it is correct that the suit pending in the Court of learned District Judge

is of the year 2001 whereas the present proceedings was initiated in the year 2005. Even the impugned application the subject matter of this opposition

proceedings is dated 14.07.2003. The applicant/appellant has not furnished any detail as to what issues are pending before the District Judge as he has

not filed any copy of the plaint or the written statement or any paper relating to the said suit except a bald statement to this effect in the present

interlocutory petition. He also opined that this type of petition without any supporting documents to stay the application proceedings is not appreciated

and the said application proceedings could have easily taken necessary steps at the initial stage. He also upheld that the impugned interlocutory petition

at the fag end of the proceedings when the matter is already set down for hearing and in fact and hearing fixed on 16.05.2006 was already adjourned.

He also found that the practice of the applicant/appellant in filing the interlocutory petition at that stage of the proceedings as stated by the applicant is

malafide and this Tribunal condemns such practice of filing interlocutory petitions just for the sake of filing with out any documentary support without

any bonafide intention and also that even otherwise there is no bearing between two litigations as the present proceedings are for registration of a

trade mark and issue of the of the court case are mainly relating to infringement and passing off. He also observed that in view of the foregoing and

on consideration of the over all facts and circumstances, the Tribunal is of the view that the impugned interlocutory petition dated 07.07.2006 deserves

outright dismissal with cost of Rs. 1000 and the main matter shall be heard on 24.08.2006.

4 . The matter came up for hearing on 02.03.2009 at the Circuit Bench Sitting at Kolkata when Shr A.K. Chakraborthy, learned Counsel appeared for

the appellant/applicant and Dr. Alok M. Saha, learned Counsel appeared for the respondent No. 3.

5 . The learned Counsel for the appellant/applicant contended that the learned Registrar's impugned order is malafide in nature. When a suit is pending

sub-judice before the District Court for passing off filed by the opponent/respondent, so without deciding this suit the application for registration should

be stayed until and unless the suit was decided by the District Court, the matter is sub-judice before the Bhagalpur Court for passing off of goods

under Sections 134 and 135 of the Act. He further contended that the tribunal has no power to interfere when the suit for infringement and passing off

is pending before the District Court which was filed by the opponent/respondent No. 3. As such the Deputy Registrar has no right to further proceed

in the case of application for registration. In support of his contention, the learned Counsel for the appellant/applicant relied on three judgements (i)

2002 (24) PTC 80 (Del) Mohan Chand Naliwal v. Rakesh Gar gwherein the identity of the matter in issue was established viz., the controversies

arising as a result of plaints of both parties were identical having main controversy in both the suits was the same as to who was entitled to the

software and whose rights had been infringed and also both parties claimed a relief of restraint against each other, the court held that necessarily the

subsequently instituted suit is liable to be stayed.

(ii) AIR 1978 Delhi 221 C.L. Tandon, G.S. v. Prem Pal Singh Rawat and Ors. wherein it was held that before Section 10 of CPC apply to a particular

case the following conditions must be satisfied:

(a) The matter/matters in issue should be substantially the same in the two suits;

(b) The previously instituted suit should be pending in the same Court in which the subsequent suit is brought or in another court in India having

jurisdiction to grant the relief claimed; and

(c) The two suits between should be between the same parties or their representatives and these parties should be litigating in the two suits under the

same title.

(iii) AIR 1975 Calcutta 411 - The expression, 'the matter in issue' in Section 10 has reference to the entire subject matter in controversy between the

parties and a mere identity of some issues in both the suits is not sufficient to attract that section and unless the decision of the suit operates as a res

judicata in the other suit, it cannot be said that the matter in issue is directly and substantially the same in both the suits. It was held in para 15, 16, and

17 as follows:

It is well-settled that unless an issue is framed and decided by the Court it cannot operate as res judicata in a subsequent suit between the same

parties or their privies. It is true that the written statement in the Ferrukhabad suit has raised some of the questions which are also in the plaint of the

Calcutta suit, but unless in both the suits the entire subject-matter in controversy between the parties are substantially and directly the same it cannot

be said that the matter in issue in both the suits is the same. There being no issue in the Ferrukhabad suit as to the terms and conditions of the

dealership agreement nor as to its breach, in my opinion, it cannot be said that the matter in issue in both the suits is substantially and directly the same.

Hence, the judgement under appeal cannot be supported.

1 6 . In this view of the matter, we allow this appeal and set aside the judgement and order under appeal. The respondents will pay the costs of this

appeal to the appellant. The application for stay under Section 10 is dismissed and the costs of that application will be cost in the Calcutta suit.

Liberty is given to the respondent to take appropriate directions from the Interlocutory Court with regard to the filing of the written statement.

6 . The learned Counsel appearing on behalf of the respondent No. 3 submitted that the learned Deputy Registrar had passed the order rightly and

there is no need to interfere with it.

7 . We have heard the submissions of both counsel. After hearing both counsel and going through the facts and circumstances of the case and the

citations placed before us, we are of the view that the matter is pending before the District Court filed by the opponent/respondent No. 3 for

infringement and passing off. In this situation now he opposed the said petition which was filed against his suit for passing off. The learned Counsel

appearing for the appellant is contending that the suit is filed in 2001 and the application for registration is filed in the year 2005 and the suit is pending

and is ripe for final decision. So the Tribunal may keep its hands off till the suit is decided. But, the learned Counsel appearing for the

opponent/respondent No. 3 vehemently opposed this miscellaneous petition and prayed for its dismissal.

8 . In view of the above submissions, we are of the view that when the respondent No. 3 is not pressing their suit which is filed for infringement and

passing off at Bhagalpur Court then the appellant/applicant's interlocutory petition for stay of proceeding of registration is not bonafide. So the learned

Registrar has rightly dismissed the interlocutory petition for stay of hearing. In our opinion there is no merit in the M.P. and the same is rejected. Main

appeal be posted for hearing in the ensuing Circuit Bench sitting at Kolkata.