ITC LIMITED Vs. GODFREY PHILLIPS INDIA LIMITED

JUDGEMENT

(1.) THE key to the legal issue raised in the defendant's application is in the understanding of the word 'invalid' as it appears in Section 124 of the Trade Marks Act, 1999.

(2.) THERE are two parts to the defendant's challenge to the continuance of the action. The primary attack is as to the continuation of the suit in this Court on the ground that appropriate proceedings have been launched by the defendant against the plaintiff before the Trade Marks Appellate Board. The defendant's application to the Board appears to be on the ground of non-use of the plaintiff's registered mark. No copy of the defendant's application before the Appellate Board has been appended to the defendant's present application, nor has a copy thereof been otherwise produced in court; but it is not in dispute that the basis for assailing the mark is non-use of the mark for a period of at least five years and three months prior to the making of the defendant's application to the Appellate Board. The defendant says a challenge to the continuation of a registered mark on the count of non-user can also be carried on the ground that it is an entry wrongly remaining in the register within the meaning of that expression found in Section 57(2) of the Trade Marks Act, 1999.

(3.) IT is submitted by the defendant that though a prayer for rejection of the plaint implies that the entirety of the plaint be rejected and not a part thereof, when a suit for both infringement and passing-off is instituted, it is possible for the two causes of action to be divorced. The submission is that it is open to a defendant to seek the arrest of the action in so far as it relates to infringement by virtue of Section 124 of the 1999 Act if there is an application pending before the Appellate Board or Registrar where the validity of the registered mark is in question even though the court can continue with the claim of passing-off if a combined action had been instituted. In support of such argument, the defendant relies on a judgment reported at AIR 1966 Cal 247 (Formica International Ltd v. Caprihans (India) Pvt. Ltd.). The plaintiff has no quarrel with such proposition. The corollary to this argument, as canvassed by the defendant, is that if the present suit in so far as it relates to the infringement action has to be stayed, the plaint relating to the alleged cause of action of passing-off is liable to be rejected or the claim relating to passing-off completely disregarded as no part of such alleged cause of action has, or is claimed to have, arisen within the jurisdiction of this Court. The defendant relies on Section 134(2) of the 1999 Act which is an introduction into the statute and an improvement on the 1958 Act as it allows the plaintiff to bring a suit for infringement in the court of a district judge if, at the time of institution of the suit, the plaintiff or any of the plaintiffs actually and voluntarily reside or carry on business or personally work for gain within the local limits of the jurisdiction of the district court. In support of such ground, the defendant has relied on Order VI Rule 16 of the Code which provides for expunction of averments in pleadings. The defendant has also referred to a judgment reported at 33 PTC 348 (Dabur India Limited v. K.R. Industries) where a Division Bench of the Delhi High Court held that notwithstanding the infringement claim in the rolled-up action being permissible in that court, the claim for passing-off could not have been made there. The cause of action as to passing-off was delinked from the infringement action and permitted to be carried to the appropriate forum. The defendant has relied on the judgment reported at (2008) 10 SCC 595 (Dabur India Ltd. v. K.R. Industries) wherein the Delhi decision was affirmed.