BDA PRIVATE LIMITED Vs. PAUL P JOHN

JUDGEMENT

(1.) THESE five applications are being disposed of by a common order. Three applications [two under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the "cpc") and one under Order 39 Rule 4 CPC] have been filed in CS (OS) 383/2007, which is a suit based on infringement of a registered trademark as also on passing off. Two applications, both under Order 39 Rules 1 and 2 CPC, have been filed in CS (OS) 1058/2002, which is a suit based on passing off action as well as for infringement of a copyright. Both the suits have been filed by the same plaintiff and in respect of the same trademark, i. e, "officer"s CHOICE". The defendants" mark which is sought to be injuncted is "original CHOICE". Both the marks are used for the very same product, that is, whisky.

(2.) WHEN the suit bearing No. CS (OS) 1058/2002 was filed, the plaintiff had not yet been granted a certificate of registration in respect of the mark "officer"s choice" and, therefore, that suit was based purely on the plea of passing off. On 19. 04. 2007 registration was granted to the plaintiff in respect of the mark "officer"s CHOICE" in relation to whisky falling under Class 33 of the Fourth schedule to the Trade Mark Rules, 2002. The registration, however, carried a disclaimer that the plaintiff would not have any exclusive right to the use of the word "choice". Consequent upon the said grant of registration, the plaintiff instituted the second suit i. e CS (OS) 383/2007 incorporating the action of infringement of a registered trademark and seeking reliefs on the basis of such purported infringement on the part of the defendants by use of their mark "original CHOICE". According to the plaintiff, the defendants" mark "original CHOICE" is deceptively similar to the plaintiff's registered mark "officer"s CHOICE".

(3.) THE defendants had also applied for registration of their trademark "original choice" which was also registered in the year 2007. The defendants, therefore, moved an application under Order 6 Rule 17 CPC being IA No. 9/2008 seeking amendment of the plaint to bring on record this development as also to take defences on the basis of the registration granted in their favour. The said application was allowed by an order dated 10. 01. 2008. In the amended written statement, the defendants contended that in view of the provisions of Section 28 (3) read with Section 30 (2) (e) of the Trademarks Act, 1999 (hereinafter referred to as the "said Act"), the plaintiff's suit for relief of infringement of trademark would not be maintainable against the defendants. The plaintiff also filed an amended replication and challenged the validity of the defendants" registration of the trademark "original CHOICE". In this background, the plaintiff filed an application (IA No. 1610/2008 in CS (OS) 383/2007) under section 124 of the said Act praying for an order that the suit be stayed pending final disposal of proceedings before the Intellectual Property Appellate Board (IPAB ). That application (IA 1610/2008) was disposed of by a judgment of this court dated 01. 04. 2008 wherein this Court took the view that substantial triable issues arise with regard to the challenge to the validity of the registration of the defendants" trademark. This Court was satisfied that the plea regarding the invalidity of the defendants" trademark was, prima facie, tenable on both counts " the alleged improper rejection of the plaintiff's notice of opposition and the alleged non-registerability of the defendants" mark in view of Section 11 (1) (6) of the said Act. By virtue of the said judgment and/ or order the issue regarding the same was raised and the case was adjourned for a period of three months in order to enable the plaintiff to apply to the IPAB for rectification of the register in the prescribed manner. That matter is pending before the ipab.