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Judgment
Z.S. Negi, J
The appellant has preferred this appeal under Sections 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) against the order dated
7.5.2007 passed by the Deputy Registrar of Trade Marks, New Delhi whereby he dismissed the Interlocutory Petition dated 7.4.2004 filed by the
appellant herein. The appellant has also filed an application under Section 95 of the Act for stay of operation of the aforesaid impugned order until
disposal of the appeal by this Appellate Board.
According to the averments made in the appeal, the facts leading to the appeal is that the appellant, M/s. Safari International is a partnership firm,
constituted by Shri Ram Dhari Sharma and Smt. Rekha Sharma as the partners and on 7.11.1994 the appellant filed an application No. 644843 for
registration of the trade mark SAFARI in class 12 and the same was advertised in the Trade Marks Journal No. 1227(S) dated 21.7.2000 at pages 93
and 94. Thereupon, the respondent No. 1 filed notice of opposition numbered DEL-T-2171/56953 dated 26.9.2000 and the appellant filed the counter-
statement to the opposition. The appellant had filed another application No. 656900 for registration of trade mark SAFARI label in class 12 depicting
the trade name 'SAFARI INTERNATIONAL' with monogram of letters 'S' and 'I' which was advertised in association with its earlier application No.
644843 in the Trade Marks Journal No. 1233 and since there was no opposition thereto, the same was registered as of 24.2.1995. The appellant
claims to be the proprietor of the trade mark SAFARI in respect of cycles and parts thereof. The registration of the trade mark under No. 656900 is
subsisting and renewed up to 24.2.2009.
The respondent No. 1 filed a petition [C.O. No. 21 of 2002] before the High Court of Delhi for rectification of entry relating to trade mark No.
656900 and the same was, transferred by the High Court of Delhi to this Appellate Board in pursuance of Section 100 of the Trade Marks Act, 1999
and the same was renumbered by the Appellate Board as TRA/21/2005/TM/DEL. During the pendency of the transferred petition/application, the
appellant filed an interlocutory petition dated 7.4.2004 before the respondent No. 2 for stay of the proceedings relating to opposition No. DEL-T-
2171/56953 against application No. 644843 till the final decision in the rectification application, on the grounds that the said application for registration
of trade mark SAFARI (word per se) is under opposition; that by virtue of registration of SAFARI label under No. 656900, a valuable right has
accrued to the appellant and that the Hon'ble High Court of Delhi on 9.10.2002 ordered that in the meantime the respondent No. 1 (appellant herein)
shall not rely on the impugned trade mark SAFARI label in any legal proceedings inter-se the parties. The said interlocutory petition for stay was
dismissed on 7.5.2007 by the respondent No. 2 and aggrieved by the dismissal of the interlocutory petition, the appellant has preferred the present
appeal on various grounds, inter alia, that the impugned order dated 7.5.2007 is against law and facts; that the order has been passed ignoring the
factual position that a valuable statutory right has accrued in favour of the appellant on account of registration of SAFARI in its name; that the
respondent No. 2 was wrong in disallowing the interlocutory petition ignoring the judgment reported as 1981-PTC-201, wherein the tribunal had stayed
the opposition proceedings till the disposal of rectification proceedings pending before the High Court of Bombay; that the respondent No. 2 ought to
have allowed the interlocutory petition to avoid multiplicity of proceedings and that the impugned order is against the provisions of principles of natural
justice, equity as well as settled principles of law.
After completion of the procedural requirements, the application for stay came up for hearing on 13.3.2008 when Shri M.K. Miglani, Advocate
appeared on behalf of the appellant and Shri Neeraj Grover, Advocate appeared on behalf of the respondent No. 1. We have heard both the learned
Counsel at length. At the conclusion of his arguments, learned Counsel for the respondent No. 1 fairly submitted that both sides have argued at length
and same or similar arguments will be put forth at the time of final hearing of the appeal, therefore, he will have no objection if the appeal itself is
decided by applying these arguments in deciding the appeal. The counsel for the appellant after consulting the instructing counsel Shri D.K. Dhingra
agreed that the appeal may be decided by applying the arguments for stay application to the appeal. The leaned Counsel, however, sought liberty to
file some case laws in support of his arguments but nothing has so far been received by the Appellate Board.
Shri M.K. Miglani, learned Counsel for the appellant submitted that the appellant is the proprietor of the trade mark SAFARI (word per se) and the
application No. 644843 filed by the appellant for registration thereof in respect of cycles and parts thereof included in class 12 has been advertised in
the Trade Marks Journal dated 21.7.2000, a copy of which is available on the record. The appellant is the registered proprietor of trade mark label
SAFARI depicting the trade name 'SAFARI INTERNATIONAL' and monogram of letters 'S' and 'I' under No. 656900 as of 24.2.1995 and on
account of this registered trade mark, a valuable statutory right has accrued in favour of the appellant. He further submitted that the interim order on
which the respondent No. 1 is so heavily relying is an ex parte order of the High Court and in appeal, the Division Bench did not find any ground to
interfere with the impugned order as it was interlocutory and the application under Order 39 Rule 1 and 2 CPC was at that time pending adjudication
and listed for hearing within less than a month's time.
Shri Miglani submitted that it should be the endeavor of the tribunal to avoid multiplicity of proceedings and with this object in view, the respondent
No. 2 ought to have stayed the opposition proceedings before it till the disposal of the rectification proceedings pending before the this Appellate
Board. The learned Counsel further submitted that the judgment in Charistine Hoden (India) Limited, Goa v. Johnson and Johnson, New Jersey (USA)
1981-PTC-201 cited by the counsel for the appellant before the respondent No. 2 has been ignored by him and passed the impugned order in
contradiction to the aforesaid judgment. The respondent No. 2 was wrong in disallowing the interlocutory petition and ought to have stayed the
opposition proceedings as had been done in the cited case.
Shri Miglani submitted that the impugned order passed by the respondent No. 2 is against the principles of natural justice, equity and the settled
principles of law. He urged that for the sake of justice, equity and good conscience and to avoid multiplicity of litigation, the impugned order dated
7.5.2007 of the respondent No. 2 is liable to be stayed otherwise the entire purpose of the appeal will become infructuous and the whole exercise will
be rendered futile.
Shri Neeraj Grover, learned Counsel or the respondent No. 1 vehemently opposed the averment made in the appeal that the pending rectification
application filed by the respondent No. 1 is likely to be dismissed being based on false and frivolous grounds. He pointed out that the trade mark of the
appellant advertised in Trade Marks Journal before acceptance is so illegible being extremely cloudy and blurred in appearance that the respondent
No. 1 could not locate the said advertisement in the Journal and the respondent No. 1 despite genuine intentions to oppose could not oppose the
application for registration. The genuine intentions of the respondent No. 1 to oppose the application can be inferred from the fact that the respondent
No. 1 has filed two separate Forms TM-58 dated 24.11.1999 and 30.10.2000, respectively, but the Registrar failed to inform the particulars of the
advertisement of the said mark in the Trade Marks Journal. The appellant's reliance placed on the registration of SAFARI (label) under No. 656900 is
misconceived as the said registration is pending in rectification proceeding and the High Court of Delhi has issued interim injunction against relying the
trade mark in legal proceedings between the parties. In view of these facts the averment of the appellant is frivolous and unsustainable.
Shri Grover submitted that the appellant has made this malafide attempt to delay the opposition proceedings to avoid a judicial decision therein and
thus to obtain unlawful benefits thereof in various legal proceedings pending between the parties. He submitted that the appellant is not the proprietor
of the trade mark but a mere pirator of the trade mark SAFARI. The appellant has adopted the impugned mark with malafide intention with a view to
trade upon the immense reputation and goodwill accrued to the trade mark SAFARI of the respondent No. 1. On account of these reasons and
appellant's attempt to delay to avoid a judicial pronouncement on its illegal claim to the proprietorship of the trade mark SAFARI the opposition
proceeding which is ripe for hearing is not proceeding ahead.
Shri Grover referring to Annexure-A (copy of rectification petition filed before the High Court of Delhi) submitted that the respondent No. 1 has
sought rectification/removal of the entry of appellant's registered trade mark under Sections 9, 11(a) and (e), 12(1) and 18(1) of the Act. Since the
respondent No. 1 has filed the said application for rectification/removal of the entry of appellant's registered trade mark under No. 656900 in class 12,
the appellant has based on the said application filed the interlocutory petition before the respondent No. 2 for staying the opposition proceedings.
Learned Counsel submitted that the Hon'ble High Court of Delhi on 9.10.2002 has granted injunction against the appellant to the effect that ""In the
meantime the respondent No. 1 shall not rely on the impugned trade mark SAFARI (label) in any legal proceedings inter se the parties."" and in the
appeal preferred against the order of single Judge before the Division Bench, the injunction was not interfered with by the Division Bench.
Shri Grover submitted that there is no specific provision in the Act to stay opposition proceedings on the basis of rectification application filed by
the opponent. The respondent No. 1 is the prior adopter and prior user of the trade mark SAFARI. Relying on the decision in E. Griffiths Hughes Ltd.
v. Vick Chemical Co. the counsel submitted that in the case of all applications for registration of trade marks, the rights of the party or parties are to
be determined as on the date of application, hence the respondent No. 1's right in the mark is since 1974. Further, since the rights of the parties had to
be determined as on the date of the application, an opponent who had not used the mark SAFARI cannot oppose the application based on the use of
the mark by it. Learned Counsel, in support of his submission, placed reliance upon the judgment in Mohan Goldwater Breweries (Private) Limited v.
Khoday Distilleries Private Limited and Anr. 1977 I PLR 83 (Mad).
It is true that there is no provision in the Act which provide for staying an opposition proceeding as had been sought by appellant before the
respondent No. 2. The provisions of the Code of Civil Procedure, 1908 is not applicable. We would refer to paragraph 6.31 of Shri P. Narayanan book
titled law of Trade Marks and Passing off (sixth edition), wherein he observes that ""There is no specific provision for stay of proceedings before the
Registrar, but the Registrar as a tribunal has got inherent jurisdiction to stay any proceedings before him for sound reasons.
As already stated that this appeal has arisen from the impugned order of the respondent No. 2 and the respondent No. 2 has passed the said order
on the interlocutory petition dated 7.4.2004, it would be appropriate to refer to the said petition vis-a-vis to the impugned order. The respondent No. 2
in his impugned order has referred to the order dated 9.10.2002 of the Hon'ble High Court of Delhi and concluded that there was no order for stay of
the present proceedings passed by the Hon'ble High Court during the pendency of the rectification petition. In terms of order of the Hon'ble High
Court, the appellant herein shall not rely on the impugned trade mark in any legal proceedings inter se the parties (which is in association with No.
644843, the subject matter of opposition proceedings) then how the Registrar will decide unless the rectification application is decided by the Appellate
Board. In our view in order to have the opposition proceedings properly adjudicated by the Registrar, it is necessary or expedient that the rectification
application is decided first. It is notable that the order of Hon'ble High Court is still in force as the Court while passing order on 6.1.2004 to transfer
the petition/application to this Appellate Board has recorded the interim order to continue.
Regarding the contention of the appellant that the respondent No. 2 has passed the impugned order ignoring the judgment cited by the appellant,
we find that the respondent No. 2 has not dealt with the case cited by the appellant. In that case, Johnson & Johnson applied for registration of trade
mark CAREFREE and the application was accepted and advertised based on the prior registration of applicants trade mark CAREFREE. A
rectification proceeding against the prior registered trade mark of the applicant was pending before the High Court of Bombay. A notice of opposition
was filed by the Charistne Hoden (India) Ltd. and later on the opponent filed interlocutory petition for stay. The Assistant Registrar had stayed the
opposition proceedings till the disposal of the rectification proceedings pending before the High Court of Bombay solely with a view to avoid
multiplicity of proceedings. The Assistant Registrar in the cited case has observed that the Registrar as a tribunal has the inherent jurisdiction to stay
any proceedings before it but the respondent No. 2 ignoring the same has observed in his order that in fact there is no specific provision for stay of
proceedings before the Registrar. On other issues also, the respondent No. 2 has not given his findings though he has recorded that he has carefully
considered the material available on record. In the present case, the parties are litigating at various fora and it would be appropriate if the opposition
proceedings is stayed to avoid the possibility of further litigation. The facts of the cited case applies to the case on hand, the ratio decidendi therein will
be applicable to the present case. Had the respondent No. 2 dealt with this cited case, his order on interlocutory petition would have been different.
Since the parties are same and marks involved are similar, the issues involved would substantially be the same. If stay is granted, the same will not
cause any prejudice or injury or irreparable loss to the respondent No. 1.
Regarding the submissions made by the learned Counsel for the respondent No. 1 in relation to the various grounds on which rectification of
appellant's mark has been made are not required to be gone into as those issues will be gone into at the time of deciding the rectification application
and hence, hearing of that application is required to be expedited.
In view of the above, the impugned order of respondent No. 2 is not sustainable. Accordingly, we set aside the impugned order dated 7.5.2007 of
the respondent No. 2 and allow the appeal. Since the appeal is allowed, the application under Section 95 of the Act is ordered accordingly. 17. In
Consequent to paragraph 16 of this order, we direct the Registrar of Trade Marks not to proceed in the opposition No. DEL-T-2171/56953 until
TRA/21/2005/TM/DEL is decided by this Appellate Board.
It is also directed that TRA/21/2005/TM/DEL shall be listed for hearing in the ensuing Circuit Bench sitting at New Delhi. There shall be no order
as to costs.