M/S. Impresario Event Marketing Company Pvt. Ltd. vs M/S. Impresario Entertainment and Hospitality Pvt. Ltd.

IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT: THE HONOURABLE MR. JUSTICE A.HARIPRASAD WEDNESDAY, THE 19TH DAY OF JULY 2017/28TH ASHADHA, 1939 OP(C).No. 1413 of 2013 (O) --------------------------AGAINST THE ORDER DATED 01.01.2013 IN IA NO.4932/2012 IN OS 18/2011 of I ADDITIONAL DISTRICT COURT, ERNAKULAM PETITIONER: ------------- M/S. IMPRESARIO EVENT MARKETING COMPANY PVT. LTD. 5TH FLOOR, CHAITHANYA BUILDING, SA ROAD, KOCHI-682 016, REPRESENTED BY ITS MANAGING DIRECTOR, HARISH BABU. BY ADVS.SRI.C.HARIKUMAR SRI.VIZZY GEORGE KOKKAT SMT.C.B.ANUROOPA SRI.VIPIN VARGHESE RESPONDENT: -------------- M/S. IMPRESARIO ENTERTAINMENT AND HOSPITALITY PVT. LTD. AMERICAN EXPRESS BAKERY HOUSE, 66A, CLAIRE ROAD, BYCULLA, MUMBAI-400 008, REPRESENTED BY ITS GENERAL MANAGER LEGAL PRAKASH HALMANYAR, S/O. LAXMAN. BY SRI.S.RENJITH THIS OP (CIVIL) HAVING BEEN FINALLY HEARD ON 22.06.2017, THE COURT ON 19.07.2017 DELIVERED THE FOLLOWING: OP(C).No. 1413 of 2013 (O) --------------------------- ## APPENDIX PETITIONER(S)' EXHIBITS ----------------------- EXHIBIT P1 : COPY OF THE IA NO.4475/2011 IN OS NO.18/2011 DTD.3.9.2011 ON THE FILE OF DISTRICT COURT, ERNAKULAM. EXHIBIT P2 : COPY OF THE IA NO.4953/2011 IN OS NO.18/2011 DTD.23.9.2011 ON THE FILE OF DISTRICT COURT, ERNAKULAM. EXHIBIT P3 : COPY OF THE APPLICATION IN IA 1504/2011 IN OS NO.18/2011 DTD.3.10.2011 ON THE FILE OF DISTRICT COURT, ERNAKULAM. EXHIBIT P4 : COPY OF THE ORDER DTD.3.12.2011 IN IA 5014/2011 IN OS NO.18/2011 ON THE FILE OF THE 1ST ADDL. DISTRICT JUDGE, ERNAKULAM. EXHIBIT P5 : COPY OF THE ORDER DTD.22.6.2012 IN OPC NO.1116/2012 OF THE HIGH COURT OF KERALA. EXHIBIT P6 : COPY OF THE AFFIDAVIT IN OS NO.18/2011 DTD.12.7.2012 FILED BY THE DEFENDANT. EXHIBIT P7 : COPY OF THE PETITION IN IA NO.4932/2012 IN OS NO.18/2011 ON THE FILE OF DISTRICT COURT, ERNAKULAM, DTD.26.9.2012. EXHIBIT P8 : COPY OF THE ORDER DTD.1.1.2013 IN IA 4932/2012. RESPONDENT(S)' EXHIBITS NIL ----------------------- //TRUE COPY// ## **A.HARIPRASAD, J. -------------------------------------O.P.(C) No.1413 of 2013** ## **-------------------------------------Dated this the 19[th] day of July, 2017** ## **JUDGMENT** 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. 2 OP(C) No.1413 of 2013 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. 4. Petitioner approached this Court by filing O.P.(C) No.1116 of 2012 challenging Ext.P4 order. As per Ext.P5 judgment, this Court 3 OP(C) No.1413 of 2013 disposed of the original petition with certain directions, inter alia, that if the court below was not satisfied of the essential requirement that hearing had been given in the rectification proceedings, the court should reconsider the question of staying further proceedings in the suit. 5. The respondent thereafter filed Ext.P6 affidavit before the court below affirming that the proceedings in the rectification application were pending and hearing would commence after pleadings were complete. As it was clear from the averments in Ext.P6 that no hearing as contemplated in Ext.P5 judgment had taken place, the order of stay was liable to be vacated. Petitioner therefore filed I.A.No.4932 of 2012 to reconsider the order of stay in the light of the judgment of this Court. Copy of the application is Ext.P7. Finally, the court below disposed of Ext.P7 interlocutory application by Ext.P8 order, which is impugned in this proceedings. 6. Heard the learned counsel appearing for the petitioner and the respondent. 7. In order to appreciate the contentions of the parties, I feel it apposite to extract Section 124 of the Act: _“_ _**Stay of proceedings where the validity of registration of the trade mark is questioned, etc** .-(1) Where in any suit for infringement of a_ 4 OP(C) No.1413 of 2013 _trade mark-_ _(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or_ _(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark,_ _the court trying the suit (hereinafter referred to as the court), shall,-_ _(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;_ _(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register._ _(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of_ 5 OP(C) No.1413 of 2013 _the suit shall stand stayed until the final disposal of the rectification proceedings._ _(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case._ _(4) The final order made in any rectification proceedings referred to in sub-section (1) or subsection (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark._ _(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.”_ 8. Considering the facts in this case, it can be seen that Section 124(1)(a) of the Act has no application. I need only consider the scope of Section 124(1)(b)(ii) of the Act as admittedly no proceedings before the IPAB was laid regarding validity of the trade mark at the time of commencement of the suit. A plain reading of Clause (ii) of Section 124(1) 6 OP(C) No.1413 of 2013 (b) of the Act would show that if no such proceedings are pending before the IPAB and if the court is satisfied with the plea regarding invalidity of the registration of trade mark is prima facie tenable, it shall raise an issue regarding the same and adjourn the case for a period of three months from the date of framing of issue. That is done in order to enable the party concerned to apply to IPAB for rectification of the register. Sub-section (2) of Section 124 of the Act allows the court to stay the suit until the final disposal of the rectification proceedings in certain situations. Sub-section (5) of the Section makes it clear that stay of the suit for the infringement of a trade mark shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property) during the period of stay of the suit. 9. Full Bench of the Delhi High Court had occasion to consider the cardinal distinction between Clauses (i) and (ii) of Section 124(1)(b) of the Act in **Data Infosys Ltd. & Others v. Infosys Technologies Ltd. (2016 (65) PTC 209)** . In a situation envisaged under Section 124(1)(b)(i) of the Act, if rectification proceedings are instituted before filing the suit, the court has to stay the suit to await the decision of IPAB. Going by Section 124(1) (b)(ii) of the Act, if there was no application for rectification before the IPAB when the suit was filed and the party to the infringement suit wishes to 7 OP(C) No.1413 of 2013 challenge it after filing the suit, it may do so, but the court has to assess the tenability of the invalidity plea. If it finds the plea prima facie tenable, then and then alone would it stay the suit to enable the party to approach the IPAB within a time period. Relevant paragraph in the decision is extracted hereunder: _“This Court holds, by its majority judgment (Vipin Sanghi, J dissenting on this point) that the two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124(1)(i) and after the plea of invalidity is held to be prima facie tenable under Section 124(1)(ii)). In the first situation, if such plea exists, before the filing of the suit, the Court has to stay the suit to await the decision of the IPAB. In the second situation, if there is no application for rectification before the IPAB when the suit is filed and a party to the infringement suit, wishes to challenge it after the filing of the suit, it may do so, but the court has to assesses the tenability of the invalidity plea - if it finds it prima facie tenable, then and then alone, would it stay the suit to enable the party to approach the IPAB within a time period. If the party does not avail of this, or approaches the IPAB after the period given, the court would proceed with the suit; the plea of invalidity is deemed abandoned in the infringement suit.”_ 8 OP(C) No.1413 of 2013 I am in agreement with the above view. 10. In this case, as stated above, the order passed by the trial court on 03.12.2011 on I.A.No.5014 of 2011 allowing the suit to be stayed till the decision of the IPAB had been challenged before this Court in O.P. (C) No.1116 of 2012. As per Ext.P5 judgment, this Court considered the rival contentions and disposed the matter with certain directions. It is an undisputed fact that the respondent has initiated rectification proceedings before IPAB. It is recorded in the impugned order (Ext.P8) that on 19.07.2012 the respondent's General Manager filed an affidavit before the trial court stating that it had filed rectification applications before IPAB in respect of trade mark Nos.1248201 in class 41, 1037212 in class 16 and 1226321 in class 16 and with respect to application Nos.1037212 and 1226321 the petitioner was directed by the IPAB to file counter statement. It was further averred that IPAB was seized of the matter and was proceeding with the matters in accordance with the rules and regulations. It was further informed the trial court that hearing would be notified after completing the pleadings. 11. Learned counsel for the petitioner contended that the court below did not apply its mind to enter a finding that the respondent's plea regarding invalidity of the registration of trade mark is prima facie tenable. This contention is controverted by the learned counsel for the respondent. 9 OP(C) No.1413 of 2013 According to her, there are enough materials produced to show that the plea raised by the respondent is tenable and a strong prima facie case has been made out regarding invalidity of the registration. 12. After hearing the learned counsel on both sides and on perusal of the impugned order, I am of the view that the court below has applied its mind and found that the requirements in Section 124(1)(b)(ii) of the Act have been satisfied. The expression “hearing” cannot be narrowly construed. Fact that the parties are contesting before IPAB is not in dispute. The contentions raised by the respondent certainly show a prima facie tenable case. I do not find any jurisdictional error or perversity in the impugned order. Supervisory jurisdiction of this Court need not be invoked to disturb a finding of the court below properly entered on the materials available. Therefore, I find no merit in the petition. In the result, the original petition is dismissed confirming the impugned order. ## **A. HARIPRASAD, JUDGE.** **cks**