Z.S. Negi, J. - (1.) THE above two rectification applications are filed by the same applicant for removal of the registration of trade marks 'P.P. Mall' under No. 1308303 in class 37 and 'P.P. Shopping Mall' under No. 1308302 in class 37, respectively, registered in the name of the respective Respondents in the applications, or to rectify the register under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) DURING the pendency of the applications, the Respondent/Petitioner in both the applications has filed miscellaneous petitions in both the rectification applications being M.P. No. 84/2008 and M.P. No. 85/2008 seeking direction of this Appellate Board to the Applicant/Respondent that, it, must follow the procedure and method laid down in Section 124 of the Act. It, is stated that averment, in paragraph 8(f) of the respective rectification application have been made that the applicant has been extremely vigilant in safeguarding and protecting its well known PP trade marks and has initiated a civil suit bearing No. 19 of 2005 before the Hon'ble High Court of Delhi against the proprietor of the impugned mark and has craved leave therein to refer to and rely upon documentary evidence filed in such proceedings in respect of use, promotion and well -known character of the 'PP' trade marks as may be required in support of its contentions in the applications. It is further stated that in such circumstances, the applications could not, in view of the provisions of Section 124 of the Act, have been filed in the manner in which the Applicant/Respondent have filed the present applications. Referring to the observation made by the Division Bench of High Court of Delhi in the case of Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and Pharmaceuticals Ltd.,, 2007 (34) PTC 469, which reads thus: "13. It was however submitted on behalf of the Appellants/ Plaintiffs that in view of provisions of Section 124 of the Act there should have been a stay of the proceedings when the validity of the registration of trade mark is in question. However, in the present case, the provisions of Section 124(i)(b)(ii) would not be applicable. The said provisions are applicable only to an application for rectification which is already pending, in view of which, the suit could be stayed, pending final disposal of such proceeding. The provisions which would be applicable to the facts and circumstances of the present case are those which envisage that where the application for rectification of the order in such proceeding is not pending, then a party seeking rectification applies for rectification subject to a prima facie satisfaction of the Court regarding invalidity of the registration of the mark of the opposite party. The Appellants/Plaintiffs therefore could not have filed an application for rectification without showing, establishing and obtaining prima facie satisfaction of the Court that they have sufficient material to be able to invalidate the registration of the mark of the Respondent/Defendant. The aforesaid rectification proceeding which is filed is still pending for consideration. Therefore, the learned Single Judge was justified in not staying the Suit. In this connection, reference may be made to the provisions of Section 124(5) of the Trade Marks Act, which entitles the Court to deal with the interlocutory application. Therefore, the submission of the counsel for the Appellants/Plaintiffs in this regard, is misconceived and cannot' be accepted", the Respondent/Petitioner has stated that in such circumstances, the petitions are not maintainable. It is also stated the Respondent (Plaintiff in the suit) in the said suit has filed an amendment application seeking to bring on record factum of the present registration. The applicant has filed the present petitions after receipt of copy of the amendment application. Having chosen its course of proceedings, the applicant must follow the procedure and method as laid down in Section 124 of the Act. The applicant may not prefer the proceedings dehors the suit, independently. It is prayed that it is in the interest of justice, the petitions be dismissed at the threshold. Shri Shailen Bhatia, learned Counsel for the Petitioner raised objection relating to the very maintainability of the rectification applications and submitted that the same is filed without following the procedure prescribed under Section 124 of the Act and placed reliance upon the Division Bench judgment of the Gujarat High Court in Field Marshal Agencies v. P.M. Diesel Limited,, 1999 PTC (19) 718 and, 2007 (34) PTC 468 (DB) (Del.) Astrazeneca UK Limited v. ORCHID Chemicals and Pharmaceuticals and para 61 of judgment in Whirlpool Corporation v. Registrar of Trade Marks, : AIR 1999 SC 22 : 1998 PTC (18) 717 (SC). It was submitted that the applicant herein has filed a suit pending on the file of Hon'ble High Court of Delhi, against the Respondent herein for passing off. The applicant in the rectification applications have took out an application in the civil suit seeking amendment of the plaint by incorporating the factum of registration of the trade mark which has not yet been allowed. The provision of Section 124 of the Act provides that where a rectification application is already filed and filing of suit for infringement follows then an application be filed in the suit under that section and the court trying the suit stays the suit and where the infringement suit is already filed the Defendant must put in an appearance and put forward a plea that the Plaintiffs trade mark is invalid, the court trying the suit must be satisfied itself that the plea of the Defendant is prima facie tenable, then the court; trying the suit would raise an issue and adjourn the suit for three months and the party concerned may file the rectification application, but in the present case nothing of the sort has been followed by the applicant and therefore the rectification applications are not maintainable.
(3.) ON the other hand, Shri Abhishek Malhotra, learned Counsel for the answering Respondent herein submitted that the provision Section 124 of the Act is applicable where suit pertains to infringement of a registered trade mark is filed. By virtue of the unambiguous language of Section 124 of the Act, the same is not applicable to a suit for passing off. This is evident from the fact that Section 124 of the Act requires the satisfaction of certain conditions for application of the said provision, namely, (a) there should be a suit for infringement of trade mark and (b) the Defendant should raise a plea of invalidity of Plaintiffs registered trade mark; or (c)the Plaintiff should, in response to the Defendant's defence under Section 30(2)(e) of the Act, raise a plea of invalidity of the Defendant's registered trade mark. The Provision has been enacted to ensure that when a claim of infringement of trade mark is made, in order to ensure that a civil court hearing the suit gets appropriate expert assistance/opinion while adjudicating the rights of the parties. Placing upon the judgment in N.R. Dongre v. Whirlpool Corporation,, 1996 (16) PTC 583, it was further submitted that in a suit for passing off, the validity or otherwise of a registration of any party is not germane to deciding t he outcome of the suit, since the Plaintiff does not seek to rely upon its registration in such a suit, nor is the registration owned by the Defendant, a defence in such a suit. In view of this, the opinion of the expert body referred to above, is not. relevant, to determining a suit for passing oil and thus the civil court hearing a suit for passing off need not concern itself with any application for cancellation, if made in a suit for passing oil as such an application will not affect the determination of rights of the parties in a suit for passing off. Learned Counsel further submitted that the facts of the present case are similar to the facts set out in the recently decided case of M/s. Safari Cycles Pvt. Ltd. v. Safari Bikes Limited, IPAB order No. 136/2007 dated 7.11.2007 in M.P. No. 72/2007 in ORA 62/2007/TM/DEL). In that case, on the similar facts, wherein subsequent to the registration of the Defendant's trade mark the application for amendment of written statement was filed and rectification proceedings were alleged to be initiated without obtaining the leave of the court, pending the amendment application, the Intellectual Property Appellate Board rejected the Defendant's contention to dismiss the cancellation petition holding that the stage has yet not arrived in the suit wherein the plea regarding the invalidity of the Defendant's trade mark is raised and hence Section 124 is not applicable to the case. It was also the submission of the learned Counsel for the Respondent herein that all cases cited at the bar by the counsel for the Petitioner in the present petitions related to suits for infringement of trade marks and not passing off, including the Astrazeneca case, Patel Field Marshall case and the MICO case of this Appellate Board. In the light of the submissions made by him, the learned Counsel urged that the present petitions may be dismissed with cost and fix a date for hearing of the rectification applications.;