Syed Obaidur Rahaman, Technical Member - (1.) THE applicant has filed original rectification application seeking to rectify the Register and to cancel of the Respondent's trade mark 'PP' registered under No. 1197470 in class 28. The Respondent have filed M.P. No. 99/2009 seeking dismissal of the original rectification application ORA/85/2008/TM/DEL under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) THE facts of the case are that the rectification application has been filed in the year 2008 after the Respondent herein had filed a civil suit in January, 2005 against the applicant being C.S. (O.S.) No. 19 of 2005 before the Hon'ble High Court of Delhi. The Respondent herein has relied upon the registration of the mark in the said suit and this fact is admitted, by the applicant herein, before this Appellate Board in the proceedings pertaining to ORA/42/2007/TM/DEL and ORA/43/2007/TM/DEL. The applicant has in its written statement, filed in 2006 and again in 2007 in the aforesaid suit, pleaded that the registration of the Respondent's mark is invalid. The Respondent has stated that while the aforesaid suit was pending and after the application claimed in its written statement that the present registration of the mark of the Respondent was not valid, the applicant has filed the present original rectification application. It is submitted that the said original rectification application has been filed without taking prior permission of the Hon'ble High Court of Delhi. It is also submitted by the Respondent/applicant that as per settled law and as per provisions of Section 124 of the Act, the applicant in the aforesaid circumstances is required to take permission from the Hon'ble High Court where the suit is filed, prior to filing the original rectification application. Failure to take such permission renders the original rectification application as invalid and a nullity. Accordingly, the Respondent states that original rectification application is liable to be dismissed on this ground alone. The learned Counsel for the applicant also relied upon judgment in : 2009 (39) PTC 705 (IPAB) P.P. Jwellers Pvt. Ltd. v. P.P. Buildwell Pvt. Ltd. The counsel further relied upon an unreported judgment of this Appellate Board in M.P. No. 13/2008 in ORA/209/2007/TM/DEL wherein it is stated in para 16 and 17 as follows: 16. On a plain reading of the provisions of Section 124 of the Act, we do not find any specific requirement of permission for filing the rectification petition from the Civil Court where the suit is pending. The Division Bench of the Gujarat High court in Patel Field Marshal case (supra) had decided this issue under Section 111 Trade and Merchandise Marks Act, 1958. The Division Bench has held that once a person has abandoned the plea as to the invalidity of the mark cannot raise a fresh plea de hors the suit by filing a rectification petition and resume such a plea if on discovery of sufficient documents the Defendant was to raise a plea of invalidity of the trade mark, could do so by inviting the attention of the civil court as to the tenability of the issue and after satisfaction approach the rectification court. 17. The Division Bench of the Delhi High Court in Astrazeneca case (supra) held that when a petition for rectification is field subsequent to the suit, the party seeking rectification can apply for the same subject to a prima facie satisfaction of the court regarding the validity of the registration of the trade mark.
(3.) THE learned Counsel for the applicant/Respondent submits that this M.P. is not maintainable. The pending suit proceedings, the opposite party have obtained two registrations. He relied upon the judgment in : AIR 1993 SC 352 R.N. Gosian, v. Yashpal Dhir. This case law is not applicable in the present case.;