IN THE HIGH COURT OF DELHI
Decided On: 02.02.2017
Appellants: Abhoy
Kumar Jain
Vs.
Respondent: Vrajlal Manilal & Company and Ors.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Sanjeev Sindhwani ,
Senior Advocate and Ajay Amitabh Suman
JUDGMENT
W.P.(C) No.
7941/2012 & CM No. 19913/2012(stay)
1. The petitioner impugns
order dated 07.11.2012 passed by the Intellectual Property Appellate Board
(hereinafter referred to as the IPAB), allowing the Original Rectification
Application filed by the respondent for removal of the mark of the petitioner "Tufan"
under registration No. 1148910, in class 34, thereby rectifying the trademark
of the petitioner.
2. The respondent claims to
be a registered proprietor of trademark "Toofan Bidi", registered
consequent to registration application TM-1 filed on 17.10.2001. The petitioner
claims to be a registered proprietor of the impugned trademark
"Tufan" applied vide the TM-1 filed on 07.11.2002.
3. The respondent filed the
rectification application seeking rectification of the register of the
Registrar of Trade Marks and for removal of the trademark "Tufan"
registered in favour of the petitioner.
4. There is no dispute
between the parties that the parties consider the rival trademarks as
deceptively similar. The dispute is with regard to the priority in adoption of
the mark by the parties. Both the parties dispute the claim of each other with
regard to the date of the respective adoption. The petitioner claims to have
adopted the mark "Tufan" in the year 1998 and the respondent claims
to have adopted the mark "Toofan Bidi" in the year 1999. The
petitioner disputes that the respondent adopted the mark in the year 1999 and
contends that the same was adopted much later and likewise the respondent
disputes that the petitioner adopted the mark in the year 1998 and contends that
the same was adopted much later than what is claimed.
5. On 07.11.2012, when the
petition was listed before the IPAB and disposed of by the impugned order, the
petitioner (respondent before IPAB) was not present. It is contended by the
petitioner that on account of medical reasons of the mother of the petitioner,
the petitioner could not before the IPAB, thus there could be no
representation.
6. The impugned order dated
07.11.2012 is assailed, inter alia, on the ground that the order is an ex parte
order and does not take into account the various contentions and submissions as
well as the documents placed on record by the petitioner.
7. It is contended that
though the order records that the IPAB has considered the material placed
before it, the order does not give any reasons for accepting the contention of
the respondent and rejecting the statement of defence and the material placed
by the petitioner before the IPAB. It is contended that the IPAB has not even
examined the material placed by the petitioner.
8. Learned senior counsel
for the petitioner pointed out to certain invoices filed by the respondent
before the IPAB to contend that these were not genuine as there were certain
discrepancies in the said invoices.
9. Without going into the
controversy being raised by the petitioner with regard to the genuineness or
otherwise of the material placed by the respondent before the IPAB, since the
impugned order is an ex parte order and apparently does not consider the
statement of defence and the material placed by the petitioner before the IPAB,
the impugned order dated 07.11.2012 is set aside. The Trademark of the
petitioner "Tufan" is restored on the register of Registrar of
Trademarks. The matter is also remitted to the IPAB for reconsideration of the
case of the parties.
10. Learned senior counsel
for the petitioner has contended that there are certain more documents and
evidences that the petitioner would like to place before the IPAB. He contends
that the said material has been placed on the record of this case. Learned
counsel for the respondent opposes the request for filing additional documents
and evidences.
11. Since I have set aside
the impugned order and passed an order of remit, solely on the ground that the
order is an ex parte order and has not taken into account the statement of
defence and the material placed by the petitioner before the IPAB, I am not
considering the prayer of the petitioner for filing additional
documents/evidence before the IPAB and leave it to the discretion of the IPAB
to consider the prayer in accordance with law, if such a prayer is made to the
IPAB.
12. Since the rectification
was filed in the year 2006 and the order impugned herein was passed in 2012, I
deem it expedient to direct the IPAB to expedite the hearing of the petition
and dispose of the same preferably within a period of six months from the date
the matter is taken up for the first time by the IPAB.
13. It is clarified that
the Court has not examined the merits of the contentions of either the
petitioner or the respondent and has passed the order of remit in the limited
circumstances, as noted hereinabove.
14. Learned counsel for the
parties inform that on account of insufficient number of members, no sittings
of the IPAB are being held. Parties are given liberty to approach the IPAB for
fixing an earlier date for commencing the hearing in the matter once the
Appellate Board is reconstituted.
15. The Writ Petition is
disposed of in the above terms.
16. There shall be no order
as to costs.
17. The Registry is
directed to transmit the records of the IPAB back to the IPAB, as expeditiously
as possible.
