SANJIB BANERJEE, J. - (1.) THE key to the legal issue raised in the defendant's application is in the understanding of the word 'invalid' as it appears in Section 124 of the Trade Marks Act, 1999.
(2.) THERE are two parts to the defendant's challenge to the continuance of the action. The primary attack is as to the continuation of the suit in this Court on the ground that appropriate proceedings have been launched by the defendant against the plaintiff before the Trade Marks Appellate Board. The defendant's application to the Board appears to be on the ground of non-use of the plaintiff's registered mark. No copy of the defendant's application before the Appellate Board has been appended to the defendant's present application, nor has a copy thereof been otherwise produced in court; but it is not in dispute that the basis for assailing the mark is non-use of the mark for a period of at least five years and three months prior to the making of the defendant's application to the Appellate Board. The defendant says a challenge to the continuation of a registered mark on the count of non-user can also be carried on the ground that it is an entry wrongly remaining in the register within the meaning of that expression found in Section 57(2) of the Trade Marks Act, 1999. The suit is for infringement and passing-off. Both parties are well-known in the tobacco industry. In the plaint it has been claimed that the plaintiff is the proprietor of the trademark 'Pilot' in respect of manufactured tobacco since December, 1945. The plaintiff claims to have conceived and adopted the mark with the word 'Pilot' being the most prominent feature thereof along with a distinctive figure of a pilot. The label mark was registered in Class 34 in December, 1945. The plaint says that the registration has been renewed and is valid and subsisting. Paragraph 5 of the plaint says that at the time that the plaintiff applied in November, 1999 for registration of a mark containing the word 'Pilot' and a distinctive devise, again in Class 34, it claimed user since 1945 in respect of the word 'Pilot.' Such application is pending. The plaint suggests that early in December, 2008 the plaintiff came across cigarettes of the defendant's manufact ure under the mark 'Pilot Number One.' Paragraph 16 of the plaint records as follows: '16. By reason of the aforesaid, the defendant is guilty of infringement of the Plaintiff's registered trade mark and is also guilty of passing off the cigarettes manufactured by the Defendant with the mark PILOT as and for the cigarettes manufactured by the plaintiff. The defendant has wrongfully and with a mala fide intention used and imitated in the packaging of their cigarettes the essential and leading feature PILOT which is the exclusive property of the plaintiff which the plaintiff has adopted as long back as in 1945. The defendant has, further, wrongfully and illegally adopted a colour scheme, get-up, style and manner of writing and layout for its product which is identical and/or deceptively similar to that of the plaintiff.' The suit was brought in this Court on the strength of the plaintiff's principal place of business being within jurisdiction. No leave under clause 12 of the Letters Patent has been sought though the claim is both on account of infringement and for alleged passing-off. Despite the fact that it is of little relevance in the context of the present application, it may be mentioned that the plaintiff had obtained an ad-interim order of injunction which was subsequently vacated and the only order now subsisting is for the defendant to keep accounts in respect of the products sold by and under the impugned mark. The defendant asserts that it had filed an application 'for cancellation of the plaintiff's said registered trade mark in December, 2006 '' It contends that after being served with a copy of such application for cancellation, the plaintiff carried the present action to this Court. The defendant insinuates that the plaintiff was aware that the suit was not maintainable or was otherwise liable to be stayed in view of the defendant's previous application for rectification of its registered mark. On the cause of action of passing-off, the defendant says that this Court has no jurisdiction to entertain such claim as no part of the alleged cause of action on such count is alleged in the plaint to have arisen within jurisdiction and no leave under clause 12 of the Letters Patent has been obtained. In effect, the defendant has sought a stay of the suit in so far as it relates to the claim on account of infringement; and, the defendant has sought the rejection of the plaint in so far as it relates to passing-off.
(3.) IT is submitted by the defendant that though a prayer for rejection of the plaint implies that the entirety of the plaint be rejected and not a part thereof, when a suit for both infringement and passing-off is instituted, it is possible for the two causes of action to be divorced. The submission is that it is open to a defendant to seek the arrest of the action in so far as it relates to infringement by virtue of Section 124 of the 1999 Act if there is an application pending before the Appellate Board or Registrar where the validity of the registered mark is in question even though the court can continue with the claim of passing-off if a combined action had been instituted. In support of such argument, the defendant relies on a judgment reported at AIR 1966 Cal 247 (Formica International Ltd v. Caprihans (India) Pvt. Ltd.). The plaintiff has no quarrel with such proposition. The corollary to this argument, as canvassed by the defendant, is that if the present suit in so far as it relates to the infringement action has to be stayed, the plaint relating to the alleged cause of action of passing-off is liable to be rejected or the claim relating to passing-off completely disregarded as no part of such alleged cause of action has, or is claimed to have, arisen within the jurisdiction of this Court. The defendant relies on Section 134(2) of the 1999 Act which is an introduction into the statute and an improvement on the 1958 Act as it allows the plaintiff to bring a suit for infringement in the court of a district judge if, at the time of institution of the suit, the plaintiff or any of the plaintiffs actually and voluntarily reside or carry on business or personally work for gain within the local limits of the jurisdiction of the district court. In support of such ground, the defendant has relied on Order VI Rule 16 of the Code which provides for expunction of averments in pleadings. The defendant has also referred to a judgment reported at 33 PTC 348 (Dabur India Limited v. K.R. Industries) where a Division Bench of the Delhi High Court held that notwithstanding the infringement claim in the rolled-up action being permissible in that court, the claim for passing-off could not have been made there. The cause of action as to passing-off was delinked from the infringement action and permitted to be carried to the appropriate forum. The defendant has relied on the judgment reported at (2008) 10 SCC 595 (Dabur India Ltd. v. K.R. Industries) wherein the Delhi decision was affirmed. On such aspect of the matter, the plaintiff has brought a Bombay judgment reported at 2004 (28) PTC 362 (Hindustan Petroleum Corpn. Ltd v. H.P. Oil Corporation Ltd) for a contrary view. The Bombay decision is based on a consideration of the leave available under clause 14 of the Letters Patent governing that chartered High Court. The plaintiff submits that since, unlike leave under clause 12 of the Letters Patent, leave under clause 14 of the Letters Patent applicable to this Court can be obtained at a subsequent stage of the suit, the Delhi view on splitting the causes of action to retain one and release the other should not be followed. Clause 14 of the Letters Patent applicable to this Court ordains that where a plaintiff has several causes of action against the defendant, such causes of action not being for land and other immovable property, if this Court has the jurisdiction in respect of one of such causes of action, it shall be lawful for this Court to call on the defendant to show cause why the several causes of action should not be joined together in one suit and to make such order for trial as may seem fit. It is no longer open to argument that leave under clause 14 of the Letters Patent can be granted after the institution of the suit since the wording of the clause is such. In view of clause 14 of the Letters Patent it cannot be said that a second cause of action cannot be joined by a plaintiff in an action on the Original Side of this Court even if the second cause of action has no nexus with this Court and only the first does. It then becomes a question of relative convenience of the parties. It is not necessary to finally assess at this stage as to whether the plaintiff should be permitted to pursue the cause of action as to passing-off in this suit, both because the plaintiff has not yet sought leave under clause 14 of the Letters Patent and the defendant has not applied its mind to address the issue of convenience in the present application.;