KANTABEN MANIBHAI PATEL Vs. PREMCHANDBHAI VENIDAS PATEL

JUDGEMENT

(1.) Following are the prayers made in paragraph 7 of the petition filed under Article 226 of the Constitution : -

(2.) The relevant facts which need to be noticed first are as under : - Three applications dated 26.02.2001 for registration of trademark "OCLEG" in Class 07, 09 and 011 were filed in the name of the petitioner in the office of Assistant Registrar of Trade Marks - the respondent No.2 by the authorized agent and trademark attorney of the petitioner. Such applications were registered on 01.03.2001 and given numbers as 993722, 993723 and 993724 respectively in the office of respondent No.2. On 7th September, 2005, three different applications were submitted in Form TM-16 under Trade Marks Act, 1999 ("the Act") in the name of the petitioner by Law Office of HK Acharya and Company, Advocates, Patent and Trademark Agents to amend the name of the applicant to read the name of respondent No.1 as applicant in above referred applications. It appears that such applications were not attended and the Registrar of Trademarks issued two certificates in Class 07, 09 dated 03.07.2006 and the third certificate dated 26.06.2006 in Class 011 bearing Registrations No.993722, 993723 and 993724 respectively under Section 23(2) of the Act and Rule 62(1) of the Trademark Rules, 2002 ("the Rules") to the petitioner. However, since respondent No.1 made grievance that certificate of the registration of trademark was issued to the petitioner without considering the application made in form TM-16, the respondent No.2 addressed a letter dated 23.01.2007 to the joint Registrar of Trade Marks, stating that it was a case for rectification drive on the facts that the attorney for the applicant M/s. HK Acharya & Company filed TM-16 on 17.09.2005 with partnership deed, retirement deed and extract from the Registrar of the firm to change the constitution of the firm, however, request on Form No.TM-16 was not considered before issuing certificate of registration which was a mistake on the part of Trade Marks Registry. In such letter, request was made to issue fresh certificate in the name of respondent No.1 after allowing TM-16. Pursuant to such letter from respondent No.2, the change was made in the Register of trademarks to show respondent No.1 as proprietor of the trademark "OCLEG" in Class 07, 09, 011. The copies of computer prints of the registered trademarks details are placed at Page No.72, 74 and 76 of the petition wherein respondent No.1 is shown to be the proprietor of trademark "OCLEG". It appears that before certificates of registration of trademark "OCLEG" were issued in the name of the petitioner, the respondent No.1 filed Civil Suit No.10 of 2005 for infringement and passing of action against the petitioner on the ground that respondent No.1 was the owner of said trademark as per the retirement deed dated 01.04.2005. In the said suit, the stand taken by the petitioner was that the retirement deed was concocted document and based on such concocted document, the respondent No.1 could not be said to be the owner of the trademark. The distributor of the respondent No.1 also filed Special Civil Suit No.8 of 2007 in the Court at Surat to restrain the petitioner from using trademark "OCLEG". The petitioner filed reply and resisted the suit. The petitioner then filed Civil Suit No.2044 of 2007 against respondent No.1 for infringement of the trademark as well as for passing of action and for infringement of the copyright. In such suit, the petitioner preferred an application for interim injunction. But before such application was decided, the petitioner filed petition being Civil Application (Stamp Number) 7327 of 2008 on 13.05.2008. It appears that such petition remained pending with the same status (at the stage of removal of office objection). Thereafter, the injunction application preferred by the petitioner in her Civil Suit No. 2044 of 2007 came to be rejected by learned Judge City Civil Court, Ahmedabad vide order dated 21.04.2010. The petitioner then preferred one more petition (to be referred as second petition) being Special Civil Application No.10325 of 2010 for the same relief prayed for in the first petition. The petitioner also filed Appeal from Order No.269 of 2010 on 06.08.2010 with Civil Application No.9590 of 2010 for interim injunction. After filing Appeal from Order, the petitioner sought withdrawal of the second petition with liberty to file fresh comprehensive petition, which the Court granted vide order dated 13.09.2010 and disposed of the petition as withdrawn with a liberty to the petitioner to file fresh comprehensive petition in accordance with law. The Appeal from Order preferred by the petitioner was admitted vide order dated 07.03.2011 and the Civil Application was disposed of as the Appeal from Order was fixed for hearing on 03.05.2011. It is stated at the bar that the Appeal from Order is still pending. The present petition came to be filed in the month of March, 2011 for the same relief prayed for in earlier two petitions preferred by the petitioner.

(3.) Learned Advocate Ms.Acharya with learned Advocate Mr.Rushvi Shah and Mr.Zahid Shaikh appearing for respondent No.1 raised preliminary objection against maintainability of the petition on principles of estoppal and res judicata, suppression of pendency of the first petition while filing second petition and availability of alternative remedy under the provisions of the Act to ventilate the grievances concerning the subject matter of the present petition. As regards the availability of the alternative remedy, Ms. Acharya took the Court to some relevant provisions of the Act.