NIPPON SODA CO LTD Vs. V P GOYAL

JUDGEMENT

(1.) THE plaintiff in this suit for permanent injunction to restrain the defendants from infringing the trademark TOPSIN of the plaintiff and passing off their goods as that of the plaintiff seeks stay under Section 124(1)(i) of the Trade Marks Act, 1999 of proceedings in the suit as well as in the counter claim filed by the defendants.

(2.) THE counsel for both the defendants has contested the application on three grounds. Firstly, that for a stay to be applied for under Section 124(1) of the Act, the plea has to be of the invalidity of the registration of the other party; invalidity has to be interpreted narrowly and merely because a rectification application may be pending, is no ground to stay the proceedings; that there is no issue of invalidity of the trademark. Secondly, it is contended that stay of proceedings under Section 124(1)(i) of the Act can be sought only where the rectification proceedings are filed after the institution of the suit and not in a case as the present one, where the plaintiff had filed rectification proceedings prior to the institution of the suit. Lastly, it is contended that the plaintiff as well as the defendant, in the suit and counter claim respectively, besides claiming the relief against the infringement have also claimed the relief against passing off and which relief in any case would survive and cannot be stayed and the suit qua that has to go on.

(3.) ON the second contention, though the counsel does not controvert that there is no bar to institution of a suit after filing a rectification application but contends that the "pendency of the proceedings for rectification" referred to in Section 124(1)(i) ought to be only after the defendant in a suit has taken the defence of a registered trademark and cannot be where the plaintiff has already, prior to the institution of the suit, applied for rectification.