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Judgment
S. Usha, J
This miscellaneous petition has been filed by the Appellant seeking to defer the hearing of the main application until disposal of the suits pending
before the Additional District Judge in S. No. 12/2001 and suit No. 1041/2005 before the Hon'ble High Court of Delhi.
The Petitioner herein filed an application for registration of the trade mark 'NEW MADHURIMA' under No. 635516 in class 30. The application
was refused for registration and the opposition was allowed. Against the said order the present appeal was filed before the Hon'ble High Court of
Delhi and the Hon'ble High Court was pleased to stay the operation of the impugned order with the observation that the Petitioners have been using
the impugned trade mark since the year 1975-76 and that there has been a honest and concurrent use by the Petitioner and subsequently the appeal
was transferred to this Appellate Board as per the provisions of Section 100 of the Trade Marks Act, 1999.
The Petitioner and the Respondent herein are closely related. The Respondent herein filed a civil suit against the Petitioner's father before the Addl.
District Court Ghaziabad. The trial Court dismissed the application for injunction and the trial is in progress. Against the dismissal order, the
Respondent preferred an appeal and the same has been dismissed for default. The Respondent seems to have taken steps to restore the same. The
Petitioner also filed a suit before the Hon'ble High Court and no interim order was granted.
The documents filed by the parties would be tried in the suit whereas in the present proceedings it would not be possible. The rights of the Petitioner
are to be protected. In these circumstances, and in order to avoid conflicting judgment for a proper and just adjudication, it is imperative that the orders
of the civil suit is awaited. A detailed analysis of the rival facts and circumstances would be conducted in the said suit proceedings which would touch
upon the subject matter. The provisions of Section 11(3) of the Act has relevance in adjudicating the grant or non-grant of registration. The appeal be
deferred till the decision in suit No. 12/2001 before the ADJ, Ghaziabad and Suit No. 1041/05 before the Hon'ble Delhi High Court.
The Respondent herein filed their counter statement. At the outset the Respondent stated that the petition is a belated abuse of the process of law.
The petition is only to avoid and defer the hearing. The Petitioner's act is not a surprise as it has been the regular habit of the Petitioner to file such
petitions. The Petitioner even during the opposition proceedings, on the date of final hearing requested for inspection of documents and the matter was
adjourned. In the suit before the High Court of Delhi, the Petitioner's father field a suit against the Respondent where several adjournments were
sought. In the rectification proceedings, the Petitioner and his father filed a petition to defer the hearing. In other proceedings between the same
parties, the Petitioner moved a petition for stay at the time of final hearing.
The Petitioner's endeavour is only to prolong the appeal as the order of stay is in his favour. The said suits were pending during the time when the
opposition proceedings were on. The petition is malafide and deserves to be dismissed with heavy costs. There is no provision in the Act or the Rules
for staying the proceedings of the appeal, pending disposal of the suit. The miscellaneous petition is malafide and is liable to be dismissed as it is filed in
bad faith. The Respondent further denied the other submissions of the Petitioner.
We have heard Shri S.K. Bansal, learned Counsel for the Petitioner and Shri M.K. Miglani learned Counsel for the Respondent in the Circuit
Bench Sitting at Delhi on 16.12.09.
Learned Counsel for the Petitioner submitted that the application for registration of the impugned trade mark was filed in the year 1994 claiming
user since 1975. The opposition was filed on the ground of earlier registration application in the year 1981 claiming user since the year 1981. The
parties are carrying business in the same place. In the suit filed there was no interim order granted. The counsel relied on a judgment for the claim that
stay can be granted pending disposal of the suit.
Learned Counsel for the Respondent contended that the suit for infringement and the present appeal are of different jurisdiction. The suits pending
before the Court are to be dealt with only by the Courts where the Appellate Board cannot interfere with as well in the appeal it is to be decided by
the Appellate Board where the issue is with regard to the registration of a trade mark. The counsel further submitted that the judgments relied on by
the Petitioner is not relevant to the issue to be decided in the case on hand. The counsel prayed that an early date be fixed and the matter be heard
and disposed off.
We have heard both the counsel and gone through the records. The issue is whether the appeal pending before this Appellate Board be stayed
pending disposal of the two suits - of the year 2001. There is definitely a distinction between an appeal and a suit. The suit is for infringement and
passing off of the goods bearing a trade mark. An action for infringement is based on the right acquired by registration under the Act and is possible
only in respect of registered trade marks whereas passing off is based on common law principle that nobody has any right to report his goods as
somebody else and such action is recognised both in respect of unregistered as well as registered marks. The proprietor of a registered trade mark
can sue for infringement of a trade mark whereas the unregistered proprietor will have a common law remedy and will have to prove that his mark
has acquired distinctiveness by use. The suits for infringement and passing off will have to be tried only by the Courts as per the provisions of the Act.
The appeal before us is against an order of the Registrar in an opposition proceedings. The trade mark is in the preliminary stage of registration. A
duty is cast on the Registrar either to grant or not to grant registration based on the circumstances of the case. The jurisdiction in such cases is vested
with the Registrar. Aggrieved by the order, the appeal to be filed is before the Appellate Authority which is vested with the jurisdiction to decide the
issue as to the correctness of the Registrar's order.
The appeal is challenging the order not granting registration whereas the suit is for injunction restraining a person from infringing a trade mark or
passing off his goods as that of the other person. We are of the considered opinion that the issue as regard of a registration cannot be stayed till the
suits are disposed off. There is no provision to grant stay either in the Trade Marks Act or Intellectual Property Appellate Board (procedure) rules,
2003. The only provision for stay under the Act is Section 95 where it is clear that the impugned order under challenge can be stayed until disposal of
the appeal. There is no corresponding provision here.
We are also of the view that the Petitioner is only trying to delay the matter. The counsel for the Petitioner had not denied the averments made by
the Respondent in the counter statement about the various petitions filed at the stage of hearing. In fact, the Petitioner though sought time to file reply
to the counter on 27.08.09 had not filed the same till the date of hearing.
The miscellaneous petition is devoid of merits and is accordingly dismissed with no order as to costs.