SARWAN SINGH AND SONS LUDHIANA Vs. RICO INDUSTRIES

JUDGEMENT

(1.) THIS is an application for stay of the suit under Sec. 111 of the Trade and Merchandise Marks Act, 1958. That Section provides that if there is an application for rectification pending before the Registrar of Trade Marks then the suit will be stayed pending the final disposal of the rectification proceedings. There is no doubt that an application is before the Registrar and, therefore, this suit has to be stayed. However, Section 111 of the Act only applies to suits for infringement of a trade mark but the present suit also contains a plea of claim based on passing off. The claim for passing off is not based on the statutory remedy and, therefore, is not hit by Sec. 111 of the Act. The learned counsel for the plaintiff submits that even if the suit is stayed it should only be stayed qua infringement but should go on qua passing off. I fail to understand how the suit can be stayed and can also proceed. Either a suit can be stayed or has not to be stayed: The learned counsel for the plaintiff has referred to Formica International Ltd. v. Caprihans (India) Pvt. Ltd. And others, A. I. R. 1966 Calcutta 247, in which it was held that the suit should by stayed only qua infringement. I find the problem faced by the court there was that a suit based on two separate causes of action such as infringement and passing off was claimed not to fall within Sec. 111 of the Act and the court held that the suit could not be divided by adding a separate cause of section to be claim for infringement of trade mark. In any event, I am not able to hold that the suit can remain stayed as well as proceed. The proper course of action in the present suit is to pass an order under Order 2 Rule 6 of the Code of Civil Procedure which is in the following terms:

(2.) THIS provision is in the Code only from 1-2-1977 and was obviously introduced just to meet the present situation. It is obvious that there are two causes of action in the present suit and one of them has got to be stayed and if the whole suit is stayed then the other also gets stayed and so obviously the trial is embarrassing or inconvenient because if the suit goes on qua the said issue naturally the statutory stay under sec. 111 will be defeated. Therefore, it is neither easy to stay the whole suit nor easy to proceed with the suit. It is in this situation that two trial should be ordered. The Learned counsel for the plaintiff states that he is not anxious to have two separate trials. I accordingly hold that it is better to stay the whole suit as the rectification proceedings may come to an end very shortly and then this suit can proceed. I accordingly allow the application, stay the suit till the rectification proceedings are over. On the orders being passed either party may apply for revival of the present suit.