- (1.) This is an application by the defendant, the Structural Waterproofing Company Private Limited for an order staying the suit No. 200 of 1990 filed by Fosroc International Limited and another against the defendant the Structural Waterproofing Company Private Limited pending the disposal of the proceedings pending before the Registrar. The learned lawyer appearing on behalf of the petitioner submitted that by virtue of the provisions as contained in Section 111 of the Trade and Merchandise Marks Act. 1958, this court should stay the suit in view of the specific provision made under Sub-Section (a) of the said Section which provides that where in any suit for infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark is invalid then the Court shall, where any proceedings in relation to the plaintiff's or the defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings. Mr. Jaydeep Gupta, the learned Advocate appearing on behalf of the petitioner further has drawn the attention of this Court to Section 46(1) of the Act. According to him, the application for removal from Register and imposition of limitation on the ground of non-user has been filed on 21st of February 1989 by his client whereas the present suit has been filed on 5th of March 1990 by the plaintiff against the defendant.
(2.) From the submissions made by Mr. Gautam Chakraborty the learned lawyer appearing on behalf of the plaintiff, it appears that the bar of proceeding of suit under Section 111 of the said Act is in respect of proceedings whereunder the validity of the registration of trade mark has been questioned. The heading of the Section provides "stay of proceedings where the validity of registration of the trade mark is "questioned". Under those circumstances, referring td the application that had been made by the defendant and pending before the Registrar it would indicate that such application has been made not for any declaration of the validity or invalidity of the registration of the trade mark of the plaintiff inasmuch as the application has been made by invoking the provisions of Section 46(1)(b) on the allegations that the plaintiff up to a date, one month prior to the date of the application had not been in continuous period of 5 years or longer in use of the trade mark. Under those circumstances that up to a date one month before. the date of application as continuous period of 5 years or longer has elapsed during which the trade mark was registered and during which there was no bona fide user thereof in relation to the goods by the proprietor thereof for the time being. Under those circumstances it appears that the validity of the registration has not been challenged, but the jurisdiction of the Registrar has been invoked only on the ground that the plaintiffs had not been in continuous use of the said product for a period of five years. Apart from that. Mr. Chakraborty further contended that the present suit being Suit No. 200 of 1990 is a suit for infringement as also it is based on the cause of action of passing off. Under those circumstances in the alternative he has submitted that not only this application is not maintainable nor any order be passed under Section 111 of the Act but because of the nature of the suit that has been filed by the plaintiff, this court should not stay the suit. In that respect he craved reference to a decision reported in AIR 1966 Cal. 247 where Mr. Justice Sankar Prosad Mitra (as he then was) was of the view that Section 111 seeks to prevent parallel enquiries in the same matter and where the defendant pleads that the registration of the plaintiff's trade mark is invalid, he would be entitled to ask for a stay of the suit if the other conditions specified in the Section are satisfied. That is under Section 111(1) where in any suit for the infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark is invalid or the defendant raises the defence under Section 30. In that case the Court trying the suit shall, if any proceedings for rectification of the Registrar in relation to the plaintiff's trade mark is pending before the Registrar, stay the suit pending final disposal of such proceedings. The learned Judge further was of the view that the plaintiff can always file a fixed action for infringement and passing off. Many of the rules relating to an action of infringement in general apply also to an action for passing off. A suit for infringement lies when the plaintiff's title by registration has been affected and the suit for passing off lies when the reputation of his goods has been affected. In paragraph 8, the learned Judge observed that the cause of action for infringement and passing of are distinct and separate and one of them may fail while the other may succeed on the same evidence. In a suit where the two causes of action are combined and the defendant seeks to invoke the provisions of Section 111, the court has the power and duty to stay the suit so far as it relates to infringement of trade mark. The Court trying the suit must wait for the result of the rectification proceedings before it passes any final order or decree involving the validity of the registration. The learned Judge realised that the suit may have to be tried piecemeal. But having regard to the mandatory provisions of Section 111 the Court saw no other alternative but to do the same. In the instant case, the question of staying the suit does not arise inasmuch as in a proceeding before the Registrar, the defendant has not challenged the validity of the registration but has assailed the same on the ground of nonuser for more than 5 years.
(3.) In the case of Kedar Nath v. Monga Perfumery and Flour Mills, reported in AIR 1974 Delhi 12, the learned Judge of the Delhi High Court observed that the stay of action may be refused if particulars of concurrent user or prior user are not furnished. Relying upon the case of AIR 1966 Cal. 247, the learned Judge observed in the facts and circumstances of the case that the court would not stay even a portion of the suit in respect of infringement action unless the court was satisfied that the petition under that Section 111 was bona fide. In the case of M/s. Elofix Industries (India) v. M/s. Steel Board Industries reported in AIR 1985 Delhi 258, Mr. Justice Chawla of Delhi High Court in paragraph 6 held that the grounds incorporated in the rectification proceedings will have to be considered as to whether those were prima fascie tenable or not. The statutory provisions have taken good care to see that the claim for rectification which necessitates stay of the suit must be prima facie tenable and it is not the object of the law that in every action for infringement of trade mark stay should be granted as soon as the defendant raises a howsoever false plea of the invalidity of the trade mark and rectification of the register. In the instant case pending before this court, the question of stay of the suit does not arise inasmuch as in the proceedings for rectification, no challenge of the validity of the registration of the plaintiff has been assailed.;