HONOURABLE SRI JUSTICE P.NAVEEN RAO CIVIL REVISION PETITION NO.3306 OF 2014 DATE: 07.11.2014 Between :
Adepu Ravinder, Prop. Adepu Ramaiah Narayana & Co. 8-2-94, Gandhi Nagar, Sircilla, Karimnagar District (TS).
… Petitioner/plaintiff And Adepu Surender, Pro. Sunshine Textiles, 12-1-97/1, Pragathi Nagar, Sircilla, Karimnagar District (TS) … Respondent/defendant This Court made the following:
HONOURABLE SRI JUSTICE P.NAVEEN RAO CIVIL REVISION PETITION NO.3306 OF 2014 ORDER:
Plaintiff filed suit O.S.No.4 of 2007 on the file of III Additional District Judge at Karimnagar, praying to grant permanent injunction against the defendant, his servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under him or acting in concert with him from infringing the rights of the plaintiff to the trademark registered under No.1312052 and from passing off his dyed casement cloth or any other allied or cognate goods under the impugned trademark ADEPU and/or the composite labels consisting of ADEPU with or without numerals 222 or 555 as the case may be or any other numerals, the photo of a human being, the wheel and other artistic works or any other trademark labels which are identical with, similar or deceptively similar either visually or phonetically to the plaintiff’s registered/unregistered trademarks; to deliver up for destruction all the goods including printed matter and/or articles bearing the impugned trademarks and all other things which are used or may be intended to be used in connection with the manufacturing and sale of goods of the defendant.
2. Plaintiff filed I.A.No.318 of 2014 in the above said suit under Section 124 of Trademarks Act, 1999 (for short, ‘the Act’) praying the trial Court to stay the trial in the suit till final disposal of Writ Petition No.17029 of 2012 filed in this Court by the plaintiff praying to set aside order bearing No.78 of 2012 passed by Intellectual Property Appellate Board (for short, ‘the Appellate Board’). The Court below by the order impugned herein dismissed I.A.No.318 of 2014. The parties are referred to as arrayed in the suit.
3. The record would disclose that plaintiff and defendant are brothers. Father of plaintiff was the Karta of HUF. The joint family business was started with the trade name ‘ADEPU’ in the year 1986, which their family name. By dissolution deed dated 30.03.2005, immovable assets of the family stood partitioned. Joint family business was also partitioned. The defendant was allotted the business of M/s.Jayalakshmi Associates, Hyderabad. Subsequent to family partition, defendant filed an application to the Trade Mark Registry, Chennai for registration of two trademarks, 1) ADEPU under No.1509126 and 2) composite lable mark under No.1509197, both previously owned by the joint family. Plaintiff asked for trade mark ADEPU under No.1312052 and obtained registration. Defendant filed application before the Appellate Board praying to expunge registered trade mark No.1312052. The Appellate Board, by order 04.04.2012, upheld the claim of defendant holding that plaintiff cannot claim to be the proprietor of the trademark and allowed the application for rectification and the registered trademark no.1312052 is ordered to be removed from the register. Aggrieved by the order of the Appellate Board, plaintiff filed Writ Petition No.17029 of 2012, which is pending consideration of this Court. No stay is granted by this Court in the said petition.
4. According to provision in Section 124(1) of the Act, if any proceedings for rectification of the register in relation to the plaintiff’s/ defendant’s trademark are pending before the Registrar or the Appellate Board, on the same issue, if the suit is pending, the suit should be kept pending till final disposal of such proceedings. The said provision was relied upon to stay the proceedings in O.S.No.4 of 2007 till writ petition is disposed of. The said prayer of the petitioner was rejected by construing the provision in Section 124(1)(i) of the Act.
5. Learned counsel for the petitioner submits that against the order passed by the Appellate Board, no further appeal is provided under the Act and only remedy available is to file writ petition under Article 226 of the Constitution of India. He therefore submits that, this writ petition has to be treated as continuation of proceedings and therefore provision in Section 124(1)(i) of the Act is attracted.
6. Section 124(1) of Trademarks Act reads as under:
Section 124. Stay of proceedings where the validity of registration of the trademark is questioned, etc.,
(1) Where in any suit for infringement of a trademark— (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.
7. As per provision in Section 124(1)(i) of the Act, stay of proceedings in a suit would arise only in case rectification application is pending before the registering authority or proceedings are pending before the Appellate Board. In the instant case, neither proceedings are pending before the Registrar nor before the Appellate Board. Therefore, two contingencies provided therein are not attracted. Pendency of a writ petition in High Court is not envisaged in Section 124(1)(i) of the Act. Language of the provision is unambiguous. In the absence of statutory restriction, Civil Court cannot be restrained from proceeding with the suit on the ground that writ petition is pending in this Court. Therefore, I see no error in the decision of the III Additional District Judge, Karimnagar, warranting interference by this Court.
8. Accordingly, the Civil Revision Petition is dismissed. No costs. Miscellaneous petitions if any pending in this civil revision petition shall stand closed.
JUSTICE P.NAVEEN RAO Date: 07.11.2014 Kkm HONOURABLE SRI JUSTICE P.NAVEEN RAO CIVIL REVISION PETITION No.3306 OF 2014 Date: 07.11.2014 kkm