BDA PRIVATE LIMITED Vs. PAUL P JOHN

JUDGEMENT

(1.) THE plaintiff has filed this application under Section 124 of the trademarks Act, 1999 (hereinafter referred to as the ?said Act?) praying for an order that the present suit be stayed pending final disposal of proceedings before the Intellectual Property Appellate Board (IPAB ). It is contended by the plaintiff that the defendants filed an amended written statement on 15. 01. 2008 wherein they have pleaded that their trademark ?original CHOICE? and the device in Class 33 for ?wines, spirits and liqueurs? has been registered under no. 722161. It is further contended that the defendants, on the strength of the said registration, have raised the plea that in view of the provisions of section 28 (3) read with Section 30 (2) (e) of the said Act, the plaintiff?s relief for infringement of trademark as, inter alia, prayed in this suit, would not be maintainable against the defendants. It is further stated by the plaintiff that on 29. 01. 2008, an amended replication to the defendants? amended written statement was filed on its behalf. In the amended replication, the plaintiff has challenged the validity of the defendants? said registration of the trademark ?original CHOICE?. It is also stated that the plaintiff has filed an appeal on 31. 12. 2007 before the IPAB challenging the order passed by the deputy Registrar. It is the contention of the plaintiff that during the pendency of the said appeal before the IPAB this suit cannot be proceeded with in view of the provisions of Section 124 of the said Act.

(2.) THE present suit has been filed on the basis of the alleged infringement of the plaintiff?s registered trademark ?officer?s CHOICE?. The defendants had applied for registration of their trademark ?original CHOICE?. The plaintiff had filed a notice of opposition in Form TM-5 on 31. 03. 2004 accompanied by a cheque for the prescribed fee. However, the cheque was not signed and, therefore, it was returned to the plaintiff on 01. 04. 2004 It is material to note that on 02. 04. 2004 the period of four months (which included the extension that could be granted under Section 21) from the date of advertisement in the Trademark Journal (02. 12. 2003) expired. On 13. 04. 2004, the plaintiff allegedly submitted the cheque after signatures, which was received at the Trademark Registry on 15. 04. 2004 Thereafter, hearing was held on 10. 11. 2005 and ultimately the Deputy Registrar at the Trademark Registry, Chennai passed an order dated 17. 07. 2007 to the effect that the notice of opposition to the defendants? application for registration filed on behalf of the plaintiff in form TM-5 was beyond the prescribed time limit of four months inasmuch as it was received in its completed form only on 15. 04. 2004 Consequently, the said opposition was not taken on record and the defendants? trademark was subsequently registered. The plaintiff filed a review application which was also dismissed. The plaintiff then preferred an appeal against the order dated 17. 07. 2007 and the said appeal is pending before the IPAB.

(3.) SECTION 124 of the said Act reads as under:-