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Judgment
M.H.S. Ansari, J
This is an appeal against the order dated 29.8.2006 passed by respondent No. 2 in interlocutory petition filed by the opponent (appellant herein) in
opposition No. Kol-171121 to the application No. 1115916 in class 25 for registration of the trade mark 'OLIVES' in favour of respondent No. 1
By the impugned order dated 29.8.2006 learned Deputy Registrar of Trade Marks dismissed the petition for stay of the opposition proceedings.
That interlocutory petition was filed by the opponent - appellant.
In the order under appeal, learned Deputy Registrar has noticed that the word 'OLIVES' was sought for registration by the applicant / respondent
No. 1 and was advertised before acceptance in the trade marks journal dated 14.11.2003 whereupon the appellant lodged a notice of opposition
objecting to the registration of the mark of the applicant under Sections 9, 11 and 18 of the Trade Marks Act, 1999 (hereinafter referred to as the
Act). It has further been noticed in the order under appeal that after completion of evidence the matter was set down for hearing on 15.3.2006 and
has thereafter been adjourned from time to time and finally the hearing took place on 22.8.2006 when the interlocutory petition was heard out.
Learned Deputy Registrar was of the view that the interlocutory petition is filed at the fag end of the proceedings when the matter was not only ripe
for hearing, but a number of main hearings were adjourned on the request of the opponents. Learned Deputy Registrar was further of the view that
the interlocutory petition is filed just to delay the registration of the impugned mark. It was further observed that there is no bearing between the two
litigations (the suit and the opposition proceedings) as the present proceedings are for registration of a trade mark and the issues before the civil court
case appeared to be relating to infringement and passing off.
We heard Shri Shravan Kumar Bansal learned Counsel for the appellant, none having appeared on behalf of the respondents at the Bench Sitting of
the Board at Kolkata on 23.01.2008.
The findings and conclusions as noticed herein before have been assailed in the instant appeal. Shri Shravan Kumar Bansal learned advocate
contended that in similar circumstances, opposition proceedings were stayed because of pendency of civil suit. Learned Counsel submitted that if
proceedings are pending before a High Court, the Registrar will keep his hands off and not touch those other proceedings, reference is to judgment of
Supreme Court in Whirlpool Corporation v. Registrar of Trade Mark. Further reliance has been placed upon the judgment in Times Publishing House
v. Assistant Registrar of Trade Marks 2006 33 PTC 173 and Charistine Hoden (India) Ltd., Goa v. Johnson and Johnson 1981 PTC 201. Shri Bansal
learned Counsel contended that non filing of documents pertaining to Delhi suit cannot be a ground for rejection of the prayer for stay as the factum of
pendency of Delhi suit was not in dispute. The cause of action of stay petition is totally based on the factum of filing of Delhi suit. As soon as the
appellant filed the Delhi suit, it has filed the stay petition. There is, therefore, no delay on the part of the appellant in seeking the relief for stay of
Kolkata opposition proceedings, contended Shri Bansal.
It will be useful at this stage to look at the decisions cited by Shri Bansal.
The Bombay High Court in Charistine Hoden (India) Ltd's case (supra) considered the question of stay of opposition proceedings when rectification
proceedings were pending before the Court. A relevant extract from the said judgment would be appropriate to appreciate the context in which the
following observations have been made:
It is true that the provisions in Section 10 of the Civil Procedure Code are not directly applicable to the proceedings before the Registrar. In fact there
is no specific provision for stay of proceedings before the Registrar. However, the Registrar as a tribunal has got inherent jurisdiction to stay any
proceedings before him for sound reasons (See P. Narayanan on Trade Marks, para 213.) The observation of Jenkins L.J., on Flowerdale Ld. v. Ha'e
Electric Coy. Ld. (1949) 66 R.P.C. 331, 333 at p.338 (C.A) are also relevant: ""I am quite satisfied that, if in a case of this kind it appears to the
Registrar that certain issues, which will have to be decided before the application before him can be dealt with, will be decided in an action pending in
the Chancery Division, and he takes the view that it will be more convenient for those issues to be so decided, he is perfectly in order in exercising his
inherent jurisdiction to say: 'I will adjourn this application until those issues have been dealt with in the High Court"".
To avoid multiplicity of proceedings, I think, it is justified, rather it is necessary to stay the present proceedings till the disposal of the rectification
proceedings in relation to trade mark No. 2635555B pending before the Honourable High Court of Bombay.
It may be noticed that stay of opposition proceedings was ordered till the disposal of rectification proceedings, unlike the case on hand where the
stay sought is in the context of infringement and passing off suit. The distinction between the two sets of action is apparent and obvious and would
have to be borne in mind while considering an application for stay. The civil suit for infringement and passing off is one for restraining the opposite
party from using the trade mark or passing off his goods as that of the plaintiffs'. Whereas proceedings for opposition to registration of a mark is either
to allow the registration of a mark applied for or to refuse the registration of the same. The reference made to a judgment of the English Court is with
respect to the exercise of inherent jurisdiction vested in the registering authority. In the case on hand registering authority has exercised its inherent
jurisdiction by refusing stay on the ground that issues in the two matters are wholly different. Unlike the rectification proceedings, proceedings in a suit
for infringement and opposition proceedings, the issues are wholly different. The consequences flowing from registration or refusal of registration are
also quite different. In the case of rectification proceedings the orders of the registering authority can have the effect of rendering the rectification
proceedings themselves infructuous as observed in the Times Publishing House case (supra) unlike in the case of passing off or infringement action.
The orders of the registrar passed in an earlier proceedings (Cal 17742 dated 21.2.2006) relied upon by the applicant are interim in nature and
therefore not a precedent. Further, in that case there was an order of injunction in force restraining the use of the mark applied for registration.
We are, therefore, of the view that no case is made out for interference with the discretionary order under appeal. The appeal deserves to be and is
accordingly dismissed. However, there shall be no order as to costs.