Anubhav Jain Vs Satish Kumar Jain: C Hari Shankar, H.J.

Harmonizing Sections 124 and 57 of the Trademarks Act 1999

Introduction:

The interplay between Sections 124 and 57 of the Trademarks Act 1999 has long been a subject of legal debate in India. Specifically, the question arises as to whether Section 124, which mandates obtaining leave from the court before challenging the validity of a registered trademark, operates to bar the initiation of rectification petitions under Section 57 independently. This article analyzes a recent judgment by the Hon'ble High Court of Delhi, which provides crucial insights into the compatibility of these provisions.

Section 124 of Trademarks Act 1999:

Section 124 of the Trademarks Act 1999 prescribes the requirement for obtaining leave from the court when challenging the validity of a registered trademark in a suit. It serves as a protective mechanism for registered trademark holders and prevents frivolous challenges to the validity of their marks.

Section 57 of Trademarks Act 1999:

On the other hand, Section 57 of the same Act allows for the initiation of rectification proceedings for the cancellation of a registered trademark independently of any pending suit. This provision empowers interested parties to seek rectification of the register based on various grounds, including the invalidity of the trademark.

The Case at Hand:

In a recent case before the Hon'ble High Court of Delhi, the petitioner, Mr. Anubhav Jain, filed a cancellation petition under Section 57 and Section 125 of the Trademarks Act 1999, seeking the cancellation of Certificate No. 2772286 dated 18th June 2021. Notably, Mr. Jain did not seek leave under Section 124 before initiating the rectification proceedings.

The Respondent's Contention:

The respondent, in response to rectification petition, raised a preliminary objection based on Section 124 of the Trademarks Act. Citing the Supreme Court's judgment in Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018) 2 SCC 112, the respondent contended that once a suit for infringement is filed by the plaintiff against the defendant, and the defendant raises the plea of invalidity of the plaintiff's mark as a ground of defense, the defendant forfeits the right to independently invoke Section 57 to seek rectification and cancellation of the plaintiff's mark.

The Court's Interpretation:

The Hon'ble High Court of Delhi, in its judgment, rejected the respondent's interpretation of the law. The court made several noteworthy observations to clarify the relationship between Sections 124 and 57 of the Trademarks Act 1999.

Firstly, the court emphasized that the decision in Patel Field Marshal Agencies did not conclusively establish that the right to seek cancellation of a mark under Section 57 and the right to seek rectification under Clause (ii) of the second part of Section 124 are mutually destructive to each other.

The court held that the right to seek cancellation and rectification, as conferred by Section 57 and Clause (ii) of the second part of Section 124, respectively, are independent rights. Therefore, an interested party retains the right to invoke either or both of these provisions, even in the absence of leave obtained under Section 124.

The Concluding Note:

The judgment of the Hon'ble High Court of Delhi provides a significant clarification on the relationship between Sections 124 and 57 of the Trademarks Act 1999. It highlights that these provisions operate independently, allowing interested parties to initiate rectification proceedings under Section 57 without being barred by the absence of leave obtained under Section 124.

Case Law Discussed:

Date of Judgement:09/01/2023

Case No. Co Comm IPD TM 55 of 2021

Neutral Citation No: 2023:DHC:7089-DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge:C Hari Shankar

Case Title:Anubhav Jain Vs Satish Kumar Jain

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

KRBL LTD. VS SHRI LAL MAHAL-PRATIBHA M.SINGH,H.J.

$~31

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+		CS (COMM) 929/2016
KRBL LTD				..... Plaintiff
		Through:	Mr. Ajay Amitabh Suman, Mr. Vinay
			Kumar Shukla, and Mr. V. K. Sinha,
			Advocates.	(M:9654130460	&
			9990389539)
		versus
LAL MAHAL LTD AND ANR.				.... Defendants
		Through:	Mr.   Mohan	Vidhani,   Mr.	Rahul
			Vidhani and Mr. Summit Aggarwal,
			Advocates.	(M:9811545888	&
			9811041240)
CORAM:
JUSTICE PRATHIBA M. SINGH
		O R D E R
%	07.09.2018
Learned counsel for the Defendants submits that due to mistake of the
counsel,  they  did  not	appear  before  the  Local			Commissioner  on	three

occasions. This fact is disputed by the learned counsel for Plaintiff.  Learned

counsel for the Defendants also submits that the Defendants have since sold

the brand ‘CHURCH GATE’ to a third party, namely M/s. Vigyat Trade Pvt.

Ltd. in Andhra Pradesh.  Issue notice to M/s. Vigyat Trade Pvt. Ltd., Door

No.-70-17-30/2, R. R. Nagar, Near R.T.O. Office, Kakinada, East Godavari,

Andhra Pradesh-533003, for the next date of hearing.

The assignment deed between the Defendants and M/s Vigyat Trade

Pvt Ltd is taken on record. As per the assignment deed, the Defendants have

received  a  sum  of  Rs.1.48  crores  for  the  sale  of  various  brands.  The

injunction application in the present case was dismissed on 23^rd February, 2015, by appointing a Local Commissioner for recordal of evidence. Thereafter of the Defendants in the present case reveals that The Defendants shall deposit a sum of Rs.30 lakhs in this Court within four weeks from today. The said amount shall be deposited in a Fixed Deposit with the Registrar General of this Court.

List on 4^th October, 2018.

PRATHIBA M. SINGH, J.

SEPTEMBER 07, 2018/dk

RAKESH KUMAR AGGARWAL VS LOCK & LOCKING DEVICES-R.S.ENDLAW, H.J.

$~76

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   RFA 68/2009 & C.M. No. 30627/2018

RAKESH KUMAR AGGARWAL                                     ..... Appellant

Through :      Mr S.K.Bansal and Mr Ajay Amitabh

Suman, Advocates.

versus

LOCK & LOCKING DEVICES                                            ..... Respondent

Through :      Mr Harshvardhan Pandey, Advocate.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW O R D E R

%                                         09.08.2018

1.                This order is in continuation of yesterday’s order.

2.                The counsel for the appellant/applicant has handed over in Court the affidavit, as was directed to be filed, along with documents and which are taken on record.

3.                As per the said affidavit and as per the counsel for the appellant/applicant, whatever stocks bearing the impugned mark were in possession of the appellant/applicant, at the instance of the respondent, have already been seized by the Police from the premises of the appellant/applicant.

4.                The appellant/applicant however states, that the appellant/applicant, from the month of April, 2018 till the month of July, 2018 has effected sale of the goods with the impugned mark to

RFA 68/2009                                                                                                                       page 1 of 4

his distributor and the distributor of the appellant/applicant may be in possession of such of those goods with the impugned mark which have not been sold till date. It is contended that just like the respondent has got the goods with the impugned mark seized from the premises of the appellant/applicant, the respondent may also have the goods with the impugned mark seized from the premises of the distributor of the appellant.

5.                However, copies of the invoices filed by the appellant/applicant show the delivery to the distributor of the goods with the impugned mark being by way of sale with IGST paid thereon. The appellant/applicant present in person, on enquiry, states that IGST is paid on inter-State sales. I have thus enquired from the counsel for the appellant/applicant that once the appellant has delivered the goods with the impugned mark to his distributor, by way of sale, and not as an agent and not on sale or return basis, how can the distributor of the appellant/applicant be bound by the injunction order.

6.                It has been pointed out that the subject goods, being padlocks, bearing the embossed impugned mark, would be in possession of the purchasers thereof also and the injunction cannot possibly direct the persons who have purchased the said goods, from using the same.

7.                The counsel for the appellant/applicant confirms that the transaction between the appellant and the distributor namely M/s. Vijayan Lock Industries, Navi Mumbai-400708, is of sale and the property in goods has been transferred and M/s Vijayan Lock Industries has not taken the goods on sale or return basis.

RFA 68/2009                                                                                                                       page 2 of 4

8.                The counsel for the respondent agrees that in such situation, the distributor of appellant will not be bound by the injunction; he however states that VIJAYAN was the impugned mark and M/s Vijayan Lock Industries must be an entity of the appellant only.

9.                The counsel for the appellant/applicant, on enquiry, under instructions from the appellant/applicant present in Court, states that Ankit Aggarwal son of the appellant/applicant, is the sole proprietor of Vijayan Lock Industries.

10.           The same shows the mala fides of the appellant/applicant in moving the subject application, without disclosing to the Court that the distributor is an alter ego of the appellant/applicant. In fact the counsel for the appellant/applicant ought to have informed the Court, at the outset, of this fact. The Court cannot possibly decide all the large number of matters listed before it, without trusting the counsel; if such faith is lost, in each case, the Court will have to read the file minutely, without believing single word of the counsel, making the presence of the counsel redundant.

11.           The aforesaid act of the appellant/applicant is found to be a clear attempt to overreach the Court and to interfere with and obstruct the administration of justice and the appellant/applicant is liable to be proceeded against therefor. Not only so, all the goods, as per the particulars given in the affidavit handed over today, are liable to be delivered by the appellant/applicant to the respondent and if not delivered by the appellant/applicant, are liable to be seized from the premises of M/s. Vijayan Lock Industries.

RFA 68/2009                                                                                                                       page 3 of 4

12.           The counsel for the appellant/applicant apologizes and states that the appellant/applicant will make amends and will, within one week deliver all goods on his own to the respondent.

13.           The undertaking to this effect is given by the appellant/applicant present in Court, which is accepted and the appellant/applicant has been explained the consequences of the breach of the undertaking given to this Court.

14.           The counsel for the appellant/applicant also states that the appellant/applicant is willing to pay damages in the sum of Rs.1 lakh to the respondent as penalty for the aforesaid misconduct of the appellant/applicant. An undertaking is given to pay the said amount also within one week of today and which undertaking is also accepted.

15.           The application is dismissed.

16.           If the appellant/applicant is in violation/breach of any of the undertakings aforesaid, it will be open to the respondent to take appropriate action against the appellant/applicant including for breach of undertaking given to this Court. In such eventuality, it will also be open to the respondent to take the Police to whichsoever premises of the appellant/applicant or of any of his family members, for the purposes of seizure of the goods, particulars of which are given in the affidavit.

Dasti.

RAJIV SAHAI ENDLAW, J

AUGUST 09, 2018/‘Sn’..

RFA 68/2009                                                                                                                       page 4 of 4

Capital Meters Limited Vs S. Johnflex Industries-B.D.Ahmed, H.J.

2015XAD(Delhi)70, 221(2015)DLT606

IN THE HIGH COURT OF DELHI

FAO (OS) 324/2015 and CM No. 11302 of 2015

Decided On: 03.07.2015

Appellants: Capital Meters Limited and Ors.

Vs.

Respondent: S. Johnflex Industries and Ors.

Judges/Coram:

Badar Durrez Ahmed and Sanjeev Sachdeva, JJ.

Counsels:

For Appellant/Petitioner/Plaintiff: S.K. Bansal and Ajay Amitabh Suman, Advocates
Subject: Civil

Acts/Rules/Orders:

·  Code of Civil Procedure, 1908 (CPC) - Order XIII Rule 10

Cases Referred:

·  Lakshmi and Anr. vs. Chinnammal @ Rayyammal and Ors. MANU/SC/0543/2009

Disposition:
Appeal Dismissed

JUDGMENT

Badar Durrez Ahmed, J.

CM No. 11303/2015 (exemption)

Exemption is allowed subject to all just exceptions.
FAO (OS) 324/2015 & CM No. 11302/2015 (stay)

1. This appeal is preferred against the order dated 25.5.2015 passed by a learned Single Judge of this Court, whereby IA No. 1072/2015 filed by the appellant/defendant seeking to bring certain documents was rejected. The documents which were sought to be brought on record are as under:

"(i) The photographs of the products under the trade mark Capital carrying the manufacturing year 1987.

(ii) The ITCC Certificate for the financial year 1987-88.

(iii) The NSIC certificate dated 22.5.1990 against application of defendant No. 1 dated 8.3.1990.

(iv) KSEB Registration certificate dated 6.12.1988.

(v) The letter dated 27.3.1987 issued by the Electricity department of UP.

(vi) No Objection Certificate from UP Pollution Board dated 26.4.1986.

(vii) UP PWD approval dated 14.5.1987.

(viii) UP SEB approval dated 25.5.1987.

(ix) The ISI Licence valid since the year 1987.

(x) Surrender letter of defendant No. 1 of BIS Licence."

The learned Single Judge noted that these documents were always available with the defendants/appellants at all times. We may also point out that the said suit was filed in the year 2004. Initially, a written statement was filed by the defendants which was subsequently amended in the year 2008. Issues were framed in the year 2009 and the plaintiffs, evidence was concluded in the year 2012. Three years later, in the current year, i.e., 2015, the said application being IA 1072/2015 was filed to bring on record the documents which were, at all times, available with the defendants. A flimsy explanation had been attempted to be given for the non-production of the said documents at an earlier stage. The same can be discerned from paragraph 4 of the application which reads as under:

"4. That the defendant No. 1 is filing the afore mentioned additional documents by way of list of document dated 15.5.2015. The same may be referred to. All the documents are being filed in photocopies. The plaintiff is desirous of producing the same at the trial stage as the same are very important and necessary for the defendant No. 1 to produce the same in relation to various proceedings on daily basis. The said document could not have been filed before framing of issues. The afore mentioned documents are very old documents are were lying under various files in godown. The custodian of the aforementioned documents changed from time-to-time in the office of the defendant No. 1. After much effort, the defendant No. 1 was able to obtain the same. The same could not have been filed before framing of issues because of the reasons mentioned hereinabove. The reasons for not filing the aforementioned document is beyond the power and control of the plaintiff."

2. The learned Single Judge has correctly noted that, at this stage, the defendants (appellants herein) cannot be permitted to rely on the same and that the application does not indicate diligence and seriousness of the defendants. In our view, this is only an attempt to delay the proceedings in the suit.

3. The learned Counsel for the appellants placed before us a judgment of the Supreme Court in Lakshmi & Anr. v. Chinnammal Rayyammal & Ors., MANU/SC/0543/2009 : III (2009) SLT 312 : 11 (2009) CLT 191 (SC) : (2009) 13 SCC 25, in an attempt to support his argument that this Court ought to take the said documents on record. First of all, the said decision of the Supreme Court in Lakshmi (supra) was one under Order 13 Rule 10, CPC which is entirely different from the situation which obtains in the present case. Under that provision, the Court may send for the papers from its own record or from other Courts. Here the documents were available with the appellants at all times and admittedly so. The explanation sought to be given by the appellants, as noted above, is clearly untenable. It is in the context of Order 13 Rule 10 that the Supreme Court in Lakshmi (supra) made the observation in paragraph 12 which is reproduced hereinbelow:

"12. If bringing on record a document is essential for proving the case by a party, ordinarily the same should not be refused; the Court's duty being to find out the truth.

The procedural mechanics necessary to arrive at a just decision must be encouraged. We are not unmindful of the fact that the Court in the said process would not encourage any fishing inquiry. It would also not assist a party in procuring a document which he should have himself filed."

Even in the said observation of the Supreme Court, the word 'ordinarily' has been used. The present case does not fall in that category. Here, no plausible explanation has been given for not producing the documents despite the suit having been filed in 2004 and even the written statement having been amended in 2008, particularly, when the documents were all along said to be available with the appellants.

4. In the factual matrix of the present case, we do not find any error in the impugned order whereby the learned Single Judge has refused the appellant/defendant's request for taking on record the said documents. The appeal has no merit. The same is dismissed.