HINDUSTAN PENCILS LTD Vs. APTUDAT INDUSTRIES

JUDGEMENT

(1.) The defendant has filed the present application under Section 111 of the Trade and Merchandise Marks Act, for stay of the proceeding in the suit. It is submitted in the application that the ex parte interim order granted in favour of the plaintiff has already been vacated by this Court. The defendant claims that it adopted the trade mark 'NATARAJ' and the device NATARAJ in respect of their products sealing-wax and chalk sticks in the year 1975. The plaintiff originally has its registered trade mark only in relation to pencils, sharpeners and erasers since 1961. They got the said trade mark also registered for stationery goods. It is this part of the registration in favour of the plaintiff which affects the defendant because it is stated that stationery goods would include sealing-wax and chalk sticks.

(2.) The provisions of Section 111 require that the suit which is sought to be stayed should be a suit for infringement of a trade mark. The other requirements of Section 111 which are relevant and important for the purpose of the present case are that the defendant should plead in its written statement that registration of plaintiff's trade mark is invalid and that the rectification in respect of plaintiff's registered trade mark at the instance of the defendant should be pending. On the question of these requirements, counsel for the plaintiff has pointed out that the present suit is not only a suit for infringement of trade mark, it is a suit for infringement of trade mark, passing off and rendition of accounts. Secondly, it is pointed out that the invalidity of the registration of trade mark in favour of the plaintiff has not been pleaded by the defendant. Regarding the third requirement, it has been stated that the rectification of the registered trade mark in favour of the plaintiff was applied for by the defendant only after the institution of the present suit and, therefore, the same was not pending at the time of institution of the suit. It is also pointed out in this connection, that the rectification relates only to two registered trade marks in favour of the plaintiff regarding stationery goods including sealing-wax and tailoring chalk. In view of this, it is submitted on behalf of the plaintiff that none of the requirements of Section 111 are met and, therefore, the suit is not liable to be stayed. Learned counsel for the plaintiff has relied on Kedar Nath Vs Monga Prefumery & Flour Mills A.I.R. 1974 Delhi 12 in support of his submission that the rectification of the trade mark should have been pending at the time of institution of the suit. In other words, if the suit is instituted subsequent to the pendency of rectification then alone the question of stay of the suit under Section 111 of the Trade and Merchandise Marks Act would arise. In this judgment, in para 18 with reference to the scheme of the Act, it has been clearly laid down that the said provision would apply only if any rectification proceeding is already pending before the Registrar or the High Court.

(3.) Learned counsel for the defendant in reply has drawn my attention to para 3 of the written statement wherein it has been stated, "the defendants deny the use, reputation and validity of the registration of the plaintiffs' impugned trade mark." On the basis of this statement, it is submitted on behalf of the defendant that validity of the registration of the trade mark in favour of the plaintiff has been challenged and this requirement of Section 111 has, therefore, been met.