Najmi Waziri, J.
I.A. 19187/2014
1. This application seeks stay of the suit under Section 124 of the Trade Marks Act, 1999 (for short Act) till the time rectification proceedings initiated by the defendants before the Intellectual Property Appellate Board (IPAB) apropos trade mark registration Nos. 1166568, 1166569 and 1166570 are finally adjudicated. Mr. Hemant Singh, the learned counsel for the applicants/defendants submits that the scheme of Section 124 of the Act is that a suit for infringement of trade mark should be stayed for awaiting the outcome of rectification proceedings. In support of this contention, he relies upon the dicta of this Court in Puma Stationer P. Ltd. and Anr. v. Hindustan Pencils Ltd. 2010 (43) PTC 479 (Del.) [LQ/DelHC/2010/692] (DB) which held thus:
"We are of the view, therefore, that the law on this issue is quite well settled. Where an application for rectification/cancellation of a registered trade mark is pending before the statutory authority, the High Court is obliged to stay further proceedings in the suit pending before it pursuant to Section 124(1) of the Trade Marks Act, 1999".
2. In response, Mr. J. Sai Deepak, the learned counsel for the plaintiff/non-applicant submits that (i) the application is not maintainable and is only a ruse to delay the proceedings; (ii) even in appeal against the interim injunction order, the defendants were given only a limited relief to use the name of B.D. Khanna Jewellers as against M/s. Bhagwan Dass Khanna Jewellers used by the plaintiff; (iii) the plaintiff would have no objection to the defendants independent right to seek rectification/revocation before the IPAB unrelated to the present suit; and (iv) the defendants ought to have filed rectification proceedings within three months from the date when the issue apropos validity of the plaintiffs trade mark was framed.
3. In rebuttal, Mr. Singh submits that after issues were framed on 02.01.2014, on four occasions, i.e., 17.01.2014, 13.02.2014, 02.04.2014 and on 20.05.2014, the matter did not proceed further as there was an endeavour to amicably resolve the disputes; finally on 26th May, 2014, it was recorded that there was no possibility of an amicable settlement; since the parties were engaged in settlement efforts, the period for preferring rectification proceedings before the IPAB must be deemed to have been extended. He further submits that if 26th May, 2014 is taken as the cut off date, then the application for rectification, which was filed on 17th September, 2014, was only delayed by 20 days. He thus, submits that a mere delay of 20 days may be condoned by the Court for the purposes of achieving the object under Section 124 of the Act.
4. Section 124 of the Act, insofar as it is relevant, reads as under:
"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.-
(1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the plaintiffs trade mark is invalid, or
(b) the defendant raises a defense under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark,
the court trying the suit (hereinafter referred to as the court) shall,-
(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings.
(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 defendants 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 farming of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case."
5. The Court would note that issues were framed on 02.01.2014. In particular, issue No. (vii), with respect to the invalidity of the plaintiffs trade mark registration Nos. 1166569, 1166570 and 1166568 pertaining to "BDK" was framed since the defendants, in their written statement had pleaded its invalidity. This means that the Court prima facie found tenable the defendants contention apropos invalidity of the plaintiffs trade mark. The case was ordered to be listed before the Joint Registrar on 14.04.2014 for marking exhibits and fixing dates for trial, i.e., a few days after the expiry of three months prescribed under Section 124 of the Act. Additionally, upon a request made by the learned senior counsel for the defendants, the matter was listed on 17.01.2014 for amicable resolution of the disputes.
6. It is evident that the above exercise of framing an issue as to the validity of the plaintiffs trade mark was carried out in order to enable the defendants to apply to the IPAB for rectification of the register. It is also not in dispute that the prescribed period of three months expired on 02.04.2014 and this period was not extended by the Court.
7. In the facts and circumstances of the case, the Court is of the view that the suit cannot be stayed for awaiting the outcome of the rectification proceedings. Clearly, the application for rectification filed before the IPAB on 16.09.2014 is beyond the prescribed period of three months. Furthermore, there is no merit in the submission of the learned counsel for the defendants that 26th May, 2014 should be taken as the cut off date for initiation of rectification since it is contrary to the stipulation under Section 124(1)(b)(ii), i.e., adjourn the case for a period of three months from the date of framing the issue. The endeavour to settle the matter would not override the specific period prescribed under the said provision. The efforts to settle the lis amicably were in addition to the window which was available to the defendants to file their application for rectification before the IPAB. The extension of time for filing the application for rectification before the IPAB is not merely for the asking but only upon an application being so preferred and that too for sufficient cause. It is not even the case of the defendants that they were prevented, due to sufficient cause, from approaching the IPAB for rectification of the register.
8. Reliance on Puma Stationer (supra) by the learned counsel for the defendant does not support his contention since the facts of the present case are entirely different. It is settled that each case has to be examined in its own facts and circumstances. In Puma Stationer (supra), the Division Bench, inter alia, relied upon an earlier decision of a learned Single Judge of this Court in Elofix Industries (India) v. Steel Bird Industries, AIR 1985 Delhi 258 : 1985 (5) PTC 161 (Del) [LQ/DelHC/1985/137] . In that case after service of summons, the defendants filed their written statement on 14.09.1983 and simultaneously, filed C.O. No. 17/1983, a petition under Sections 107, 46 and 56 of the erstwhile Trade & Merchandise Marks Act for rectification of the plaintiffs trade mark. It was in those different circumstances that the suit proceedings were stayed. The same has been reaffirmed in Puma Stationer (supra). However, unlike in the present case, an issue regarding invalidity of either of the parties trade mark was not framed, thereby enabling the party concerned to approach the IPAB for rectification of the register.
9. The Court would notice that this suit is pending since the year 2008. Written Statement was filed on 01.08.2008 and issues were framed on 02.01.2014. It was always open to the defendants to file an application before the Registrar for seeking cancellation/rectification of the plaintiffs trade mark. They chose not to do so.
10. This is 68th listing of the case and no efforts have been made by the defendants to seek rectification/cancellation of the plaintiffs trade mark for the last more than eight years except as aforesaid. After filing the WS in August 2008, for any genuine claimant, it was his diligent duty to pursue the claim(s) both in the suit as well as before the IPAB. There is nothing in the record which would show that it was so pursued. Hence, the Court is not persuaded by the arguments of the applicants that the suit should be stayed.
11. In view of the above, the Court is of the view that the endeavour is only to delay the proceedings. The application is without merit and is accordingly, dismissed.
12. As a consequence, as provided under Section 124(3) of the Act, issue No. (vii) concerning validity of the registration of the plaintiffs trade mark is deemed to have been abandoned and this suit shall proceed only in respect of other issues.
CS(OS) 1061/2008
13. Mr. Sai Deepak, the learned counsel for the plaintiff submits that in view of the long pendency of the case, the trial be expedited. He requests that a Local Commissioner may be appointed for recording of evidence. The request is not opposed.
14. In the circumstances, Ms. Iram Majid, Advocate (Mobile No. 9868407411) is appointed as Local Commissioner at the sole expense of the plaintiff before whom the parties shall appear on 05.08.2015 who shall then fix dates for recording of evidence. The parties shall endeavour to complete the said exercise within a maximum period of six months from today. The learned counsel for the parties assure the Court that no unnecessary adjournments shall be sought. The fee of the Local Commissioner is fixed at Rs. 20,000/- per sitting. The Registry shall, at request of the Local Commissioner, make available the case records for recording of evidence, which shall be carried out in the High Court Premises. List before the Court on 07.12.2015.
