Rohit Surfactants Private Limited Now Rspl Limited vs Manodia Salt Company Private Limited and Another

Sanjay Misra, J.—Heard Sri Ravi Kant, learned Senior Counsel assisted by Sri Tarun Agrawal, learned counsel for the revisionist and Sri Abhinava Kumar Srivastava, learned counsel for the both opposite parties. Since both the respondents are represented, with the consent of learned counsel for both the parties, this revision is being decided finally today itself. This revision is directed against the order dated 27.03.2013 passed in Original Suit No. 24 of 2010 (M/s. Rohit Surfactants (P) Ltd. v. M/s. Kanodia Salt Company Private Ltd.) by the Additional District Judge, Court No. 16, Kanpur Nagar whereby the Court by the impugned order has directed that the application filed by the plaintiff being Paper No. 408 Ga would be decided after the application of the defendant Paper No. 411 Ga under Order VII Rule 11 of the CPC has been considered and decided.

Learned counsel for the revisionist has submitted that the impugned order is illegal and is violative of the provisions of Section 124(1)(b)(ii) of the Trade Marks Act, 1999. According to him when there is a plea regarding invalidity of the registration of either the plaintiff''s or the defendant''s trade mark which is prima facie tenable the court has to raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register. He states that when the application by the plaintiff was made u/s 124 of the Trade Marks Act the court below could not direct for consideration of the defendant''s application under Order VII Rule 11 of the CPC particularly when a similar application prior to the stage of framing issues made by the defendant had been rejected by the order dated 02.07.2010.

Learned counsel for the opposite parties has submitted that the order impugned does not suffer from any illegality inasmuch as if the suit is not maintainable and such an order is passed on the application made by the defendant under Order VII Rule 11 of the CPC there would be no occasion for consideration of the application of the plaintiff made u/s 124 of the Trade Marks Act. He has further submitted that the earlier order dated 02.07.2010 passed on the defendant''s application under Order VII Rule 11 of the CPC clearly provided that such application could not be considered because issues had not been framed and evidence had not been led between the parties. He states that under such circumstance, now when the issue has been framed, evidence has been led the application of the defendant under Order VII Rule 11 of the CPC has rightly been directed to be considered before the application made by the plaintiff u/s 124 of the Trade Marks Act.

Having considered the submission of learned counsel for the parties and perused the record, Section 124(1)(b)(ii) of the Trade Marks Act is quoted hereunder:--

(ii) If no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant''s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

From the aforesaid provisions, it appears that if the court is satisfied that the plea regarding invalidity of the registration of the trade mark is prima facie tenable then it would raise such an issue and adjourn the case for three months to enable the parties concerned to apply to the Appellate Board for rectification of the registration. The provision is quite clear that under such circumstance when there is a prima facie satisfaction regarding invalidity of the registration of either of the parties the court has to adjourn the case.

In the present case the claim of the plaintiff is regarding the trade mark GHARI whereas the defendant claims to be using the trade mark GHADI. The said circumstance indicates that there appears to be prima facie a challenge to the defendant''s trade mark by the plaintiff to the effect that his registration of GHADI is invalid. Under such circumstance, the provision of Sections 124 of the Trade Mark Act would come into play and by adjourning such application u/s 124 of the Trade Marks Act the court below appears to have committed an error in holding that the application of the defendant under Order VII Rule 11 of the CPC is to be decided first.

The fact whether the grounds given under Order VII Rule 11 of the CPC for rejection of the plaint on the ground of non disclosure of cause of action or valuation, insufficiency of stamp or it being barred by any law would be liable to be decided prior to an application u/s 124 of the Trade Marks Act is to be considered here.

Clearly the provisions of Section 124(1)(b)(ii) of the Trade Marks Act would precede consideration of an application under Order VII Rule 11 of the CPC for rejection of the plaint for the reason that when no such proceeding is pending and there is prima facie satisfaction of the court u/s 124(1)(b)(ii) of the Trade Marks Act then the court in the suit has to raise the issue and adjourn the case for rectification in the register. Such order would send the rectification matter within the jurisdiction of the Appellate Board. It is only there after that the application under Order VII Rule 11 of the CPC would became maintainable.

Under such circumstance, the impugned order cannot be sustained whereby it has directed that the application Under Order VII Rule 11 of the CPC made by the defendant has to be considered prior to the application of the plaintiff u/s 124 of the Trade Marks Act.

The impugned order dated 27.07.2013 passed on the Application No. 411-C in Original Suit No. 24 of 2010 (M/s. Rohit Surfactants (P) Ltd. v. M/s. Kanodia Salt Company Private Ltd.) is therefore, set aside and the court below is required to consider the application u/s 124 of the Trade Marks Act prior to defendant''s application under Order VII Rule 11 of the Code of Civil Procedure. The revision is allowed. No order is passed as to costs.