IMPRESARIO EVENT MARKETING COMPANY PVT LTD REPRESENTED BY ITS MANAGING DIRECTOR Vs. IMPRESARIO ENTERTAINMENT AND HOSPITALITY PVT LTD REPRESENTED BY ITS GENERAL MANAGER

JUDGEMENT

(1.) Petitioner company is the plaintiff in O.S.No.18 of 2011 before the I Additional District Court, Ernakulam. Petitioner seeks reliefs against the respondent against infringing the company's registered trade mark "Impresario". Respondent/defendant company entered appearance and filed a petition under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 (in short, "the Act") praying for adjourning the suit for a period of three months enabling the respondent to move for rectification of the petitioner's registered trade mark. Respondent contended that the trade mark "Impresario" of the petitioner is deceptive and incapable of being registered.

(2.) Petitioner contended that it filed objection to the interlocutory application filed by the respondent seeking stay of the proceedings. Respondent without waiting for orders of the court, proceeded to institute rectification proceedings before the Intellectual Property Appellate Board (in short, "IPAB"). It is the contention of the petitioner that to invoke Section 124(1)(b)(ii) of the Act merely raising the plea of invalidity of registration would not suffice, if on the date of suit no rectification petition was pending. According to the petitioner, before adjourning the case by invoking Section 124 of the Act and permitting a party to file an application for rectification, as a precondition, the court should enter a finding that the plea raised is prima facie tenable. This statutory requirement has not been met in the present case.

(3.) True copy of the interlocutory application filed under Section 124(1)(b)(ii) of the Act is marked as Ext.P1. Though Ext.P1 application was heard, no orders were passed thereon. Thereafter, the respondent filed another application (Ext.P2) invoking Sections 10 and 151 of the Code of Civil Procedure, 1908 (in short, "CPC"). Meanwhile, another application was filed by the respondent under Section 124(1)(b)(i) and (ii) of the Act seeking the very same relief, which is marked as Ext.P3. Petitioner had filed objections in all the applications. At the time of hearing Ext.P3 application, the respondent sought permission of the court for withdrawing the earlier applications. Petitioner contended that the court below, after hearing the petitioner and the respondent, erroneously and without following the procedure laid down in Section 124(1)(b)(ii) of the Act stayed further proceedings in the suit on the application filed by the respondent. Ext.P4 is the stay order dated 03.12.2011.