Sankar Prasad Mitra, J. - (1.) This is an application for stay of all proceedings in Suit No. 1283 of 1964, pending the hearing and final disposal of an application to the Registrar of Trade Marks at the Calcutta Office of the Trade Marks Registry. The respondent No. 1 which is the plaintiff in the said suit has instituted the suit against the petitioner and other defendants praying for perpetual injunction restraining the defendants from infringing the plaintiff's registered trade mark consisting of the word " Formica " and from passing off goods which are not the plaintiffs goods as and for the plaintiff's goods and for other reliefs. The petitioner manufactures and sells goods by or under the mark " Sunmica "'.
(2.) The plaintiff's mark has been registered in Clause 19 in respect of non-metallic laminated material for use in building and construction. The said suit being Suit No. 1283 of 1964 was instituted on the 13th July. 1964, Prior in the institution of the suit the petitioner on the 14th June, 1963, filed in the office of the Trade Mark Registry at Calcutta an application for the rectification of the register of trade? marks by the removal of the plaintiff's registered trade mark, and the proceedings therein arc still pending. The petitioner has asked for rectification on the ground that the plaintiff's mark was registered in contravention of the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958. The petitioner's contention in the said application is that the mark "FORMICA" is a compound of two ordinary English words "For" and "Mica" and convoys the idea that the goods on or in relation to which it is used arc a substitute for mica which is a mineral found in nature; the product on or in relation to which the mark is used, neither is nor can he a substitute for mica; the mark, therefore, is likely to deceive or cause confusion or would be contrary to the law of Trade Marks for the lime being in force. The petitioner pleads that the registration of the plaintiff's mark is invalid, and under Section 111, Sub-section (1) (i) of the Trade and Merchandise Marks Act, 1958, the suit is liable to be stayed until the final disposal of the petitioner's application for rectification.
(3.) It is necessary, at the outset, to set out the relevant provisions of Section 111 of the Trade and Merchandise Marks Act, 1958. These provisions are as follows :-- " 111, Slay of proceedings where the validity of registration of the trade mark is questioned etc. "(1) Where in any suit for the in fringment of a trade mark-- (a) the defendant pleads that the registration of the plaintiff's trade mark is invalid ;.. ..... the Court trying the suit (hereinafter referred to as the Court), shall,-- (i) If any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar of the High Court stay the suit pending the final disposal of such proceedings; ........... Sub-section (4)--The final order made in any rectification proceedings referred to in Sub-section (1) ..... shall be binding upon the parties and the Court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. Sub-section (5)--The slay of a suit for the infringement of a trade mark under this section shall not preclude the Court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a Receiver or attaching any property), during the period of the stay of the suit. ";