Trade & Merchandise Marks Act, 1958 - Section 120(2);Specific Relief Act, 1960 -
Section 41(A), ... B.D. Karyalaya, AIR 1975 DELHI 149; S.M. Dyechem Ltd. v.
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MANU/DE/0494/2001
Equivalent Citation: 2001VAD(Delhi)6, 92(2001)DLT556, 2001(3)RAJ263 IN THE HIGH COURT OF DELHI IA. 8429/99 With IA. 8591/99 in Suit No. 1886 of 1999 Decided On: 01.05.2001 Appellants: M/s Rajni Industries
Vs. Respondent: Bhartiya Dhoop Karyalaya and others
Hon'ble Judges/Coram: Mr. Mukul Mudga, J.
Counsels: For Appellant/Petitioner/plaintiff: Ms. Pratibha M. Singh, Adv For Respondents/Defendant: Mr. P.N. Lekhi, Sr. Advocate, Mr. M.K. Miglani and Mr. S.P.R. Rao, Advs.
Subject: Intellectual Property Rights Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) - Section 10, Code of Civil Procedure, 1908 (CPC) - Section 24 , Code of Civil Procedure, 1908 (CPC) - Section 107, Code of Civil Procedure, 1908 (CPC) - Order XXXIX Rule 1, Code of Civil Procedure, 1908 (CPC) - Order XXXIX Rule 2;Trade & Merchandise Marks Act, 1958 - Section 2, Trade & Merchandise Marks Act, 1958 - Section 15, Trade & Merchandise Marks Act, 1958 - Section 16, Trade & Merchandise Marks Act, 1958 - Section 17, Trade & Merchandise Marks Act, 1958 - Section 27(2) , Trade & Merchandise Marks Act, 1958 - Section 29, Trade & Merchandise Marks Act, 1958 - Section 31, Trade & Merchandise Marks Act, 1958 - Section 32, Trade & Merchandise Marks Act, 1958 - Section 43, Trade & Merchandise Marks Act, 1958 - Section 46, Trade & Merchandise Marks Act, 1958 - Section 54(2) , Trade & Merchandise Marks Act, 1958 - Section 56, Trade & Merchandise Marks Act, 1958 - Section 77, Trade & Merchandise Marks Act, 1958 - Section 78, Trade & Merchandise Marks Act, 1958 - Section 79, Trade & Merchandise Marks Act, 1958 - Section 120, Trade & Merchandise Marks Act, 1958 - Section 120(1) , Trade & Merchandise Marks Act, 1958 - Section 120(2); Specific Relief Act, 1960 - Section 41(A), Specific Relief Act, 1960 - Section 41 (B);Indian Penal Code 1860, (IPC) - Section 34, Indian Penal Code 1860, (IPC) Section 420
Cases Referred: Registrar, Trade Marks v. Ashok Chandra Rakhit, AIR 1955 SC 558; Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (1998) 9 SCC 531; Madura Coats Ltd. v. Chetan Dev, AIR 1985 PUNJAB 43; Jagan Nath v. B.D. Karyalaya, AIR 1975 DELHI 149; S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000; Sidharth Wheels Pvt. Ltd. v. Bedrock Ltd. & Another, AIR 1988 DELHI 228; Dolphin Laboratories Pvt. Ltd. v. Kaptab Pharmaceuticals, AIR 1981 CALCUTTA 76
Case Note: a) The case debated on scope in applicability of bar provided under Section 120(1) & (2) of the Trade and Merchandise Marks Rules, 1959 – The criminal complaint was under Section 200 of the Criminal Procedure Code, 1973 in committing offences under Sections 77, 78 and 79 of the Trade and Merchandise Act read with Section 420/34 of the Indian Penal Code, 1860, with application under Section 39 of the code and civil suit by the defendants – It was observed that subject matter of the present suit under Section 120(1) of the Act, 1959 and the civil suit were the same but of the criminal complaint were different – It was ruled that in the interest of justice the criminal complaint filed was to be stayed under Section 120(1) and the suit filed under Section 120(1) of the Act did not had continuance of the civil suit as the subject matter of the suits were the same b) The case dealt with effect of pendency of action under Section 120(1), (2) & 106 of the Trade and Merchandise Marks Rules, 1959 – There was no bar in filing the suit by the defendant in asserting his right as the registered user – It was observed that suit filed by the defendant was prior in the point of time – Hence it was ruled under Order 39 Rules 1&2 of the Civil Procedure Code, 1908, that the question of infringement by the plaintiff was the question that was essentially required to be decided in the suit filed by the defendant c) The case debated on scope in remedy under Section 120(1) of the Trade and Merchandise Marks Rules, 1959 – It was observed that remedy was available when the proceeding was threatened and
ceased to operate when the proceeding in the Court of Law was instituted – Also found that when the registered proprietor of the trade mark prosecutes an action against the person threatened, for infringement of the trade mark, then Section 120(1) of the Act would not be applied and the action under it was not to be maintained – The criminal complaint under Section 200 of the Criminal Procedure Code, 1973, for offences under Section 77, 78 and 79 of the Trade and Merchandise Marks Act read with Sections 420/34 of the Indian Penal Code, 1860, along with application under Section 93 of the Criminal Procedure Code, 1973 and the civil suit maintained by the defendants – It was ruled that the two proceedings constituted a cause of action under Section 120(2) were initiated
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ORDER Mukul Mudgal, J. 1. is 8429/99 is an application, filed by the plaintiff under Order XXXIX Rules 1 & 2 CPC for continuance of interim order. is 8591/99 is an application, filed by the plaintiff under Section 24 of the CPC seeking transfer of the Suit No. 112/99, filed by the defendant in the Court of Additional District Judge for being tried with the present suit. This matter had come up on 25th of August, 1999 when by an ex-parte interim order, this Court restrained the defendant or anyone acting on their behalf from taking any proceedings against the plaintiff on the basis of the plaintiff's mark "T-Series Bhakti Sagar Gopal Dhoop" on the basis of the violation of the Trademark NO. 158747. It is this ex-parte ad-interim injunction order which is sought to be confirmed/vacated by the present application, i.e., is 8429/99. 2. The plaint avers as follows: (i) That plaintiff is the leading manufacturer of dhoop, agarbatti, havan samagri etc., under the Mark "T-Series" and/or "T-Series Bhakti Sagar". (ii) That the plaintiffs have carried on business since 1996 and the mark "T-Series Bhakti Sagar" denotes various products of the plaintiff in the same genre of dhoop, agarbatti, havan samagri and other cognate goods. (iii) That various names have been used by the plaintiff to indicate various products in the above range and in the process name of Gods and Goddesses were also used to connote the articles used in worship. (iv) That the use of the words 'Gopal', 'Ganapati' etc. in this context is common and appears on most articles of worship. consequently use of the word 'Gopal' on articles used in worship has a bona fide description of the character and quality of the goods of the plaintiff, ie.e, goods suitable for worship of Lord Krishna or any other God or Goddess. (v) That the defendant had a Trade Mark Registration No. 158747 in respect of the mark "GOPAL CHHAP No.1". The registration of this mark carried the following disclaimer: "Registration of this Trade Mark shall have no right to the exclusive use of a device of Krishna except substantially as shown in the representation on the form of Application. Registration of this trade mark shall give no right to exclusive use of the words "Gopal Chhap" and the expression "No.1". The Devnagri characters appearing on the Mark represent the words "Gopal chhap No.1", and the trading style and address of the. Applicants and descriptive matter. The word "Gopal" is another name for "Lord Krishna". (vi) That the use of the trade mark registration of the defendant does not give any exclusive right to the use of the word "Gopal chhap". (vii) That subsequently another registration for the word "Palal" was given in favor of the defendant which was subsequently rectified to "Gopal'. This registration was in association with the earlier trade mark "Gopal chhap" bearing No. 158747 and due to the aforesaid association this second mark "Gopal" was subject to the same conditions and limitations. That the defendants have no product which is marketed/sold purely with the mark 'GOPAL'. (viii) That there are at least 30 marks registered for the mark 'Gopal' in the same class, i.e. Class-3 in which the defendant mark is registered. Consequently no exclusive rights can vest in the defendants for use of the word 'Gopal' as clearly disclaimed in the registration No. 158747. Several other application are still pending for the registration of the trade mark 'Gopal' for dhoop and agarbatti etc.
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(ix) That no party thus has been given the exclusive right to use the word 'Gopal'. Rights, if any, only dealt with to the form and manner in which the labels have been represented. (x) That the labels of plaintiff and defendant are totally different, the trade dress and get up including colour scheme and artistic work of the plaintiff and the defendants' products are also completely different. Consequently, no copyright violation can be alleged against the plaintiff since competing marks, cartons etc., are no deceptive an similar and thus cannot confuse the ordinary consumers. (xi) That on 18.8.89, a search was conducted by the police on the premises of the plaintiff at the behest of the defendants for having violated the trademark 'Gopal' of the defendant-Company for dhoop and agarbatti on the basis that the defendant was the registered proprietor of the trade mark 'Gopal' and the defendant filed a complaint before the Metropolitan Magistrate, Delhi leading to the search warrant. (xii) That the defendants have issued in an unlawful and illegal manner threats to the plaintiff by filing a baseless complaint before the metropolitan Magistrate that the manufacture and sale of "T-Series Sagar Gopal Dhoop" is in violation of the defendants' rights. (xiii) That the filing of the criminal complaint by the defendants and the threatening telephone calls made by the defendants and their servants/agents to plaintiffs' distributors also constitute illegal threats. That the defendants had also filed as suit, bearing No. 112/99 against the plaintiff before the District Judge, Delhi as a suit for perpetual injunction, restraining infringement of Registered Trade Mark, passing off, rendition of accounts, etc. on 19.8.1999. (xiv) That the present suit was filed to protect the plaintiff from illegal and baseless threats and frivolous and vexatious legal proceedings. That the plaintiff has also filed a Rectification Petition, i.e., C.O.No.17/99 under Section 46 & 56 of the Trade & Merchandise Marks Acts, 1958 (hereinafter referred to as the 'Act') before this Court praying that the Registration No. 313337 of the defendants either be expunged from the Register of Trade Marks or the defendants be directed to enter an express condition on the Register of Trade Marks that all disclaimers and conditions operating on earlier Registration No. 158747 will operate on their subsequent Registration No. 313337.
3. The defendant has contended as under: (i) That the plea of the plaintiff that the registration of associated trade mark is completed without following the due process of law by cutting short the process is wrong because Section 15 of the Act provides that if proprietor of a trade mark claims to have been entitled to the exclusive use of any part of trade mark separately, he may apply to register the whole and part as separate trade marks and that Section 2 of the Act states that each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark. (ii) That under the existing law the name of God is registrable and has been registered in favor of the defendant. 'Gopal' does not fall within Appendix 6 & 7 of the Act which contains the names which are prohibited from registration. Several registrations exist for 'Gopal' without any disclaimer. The name 'Gopal' has been used by the defendant since 1953 openly and externally. (iii) That the first registration of defendants' trade mark label under No. 158747 applied on 12.5.1953 was subject to the disclaimer attached to the word 'Gopal'. However, the defendant filed another application under No. 313337 on 22.3.1976 seeking to register the word 'Gopal which was disclaimed in previous registration as a separate trade mark claiming rights in the word 'Gopal'. The second application was examined by the Registrar who granted the registration after having satisfied about the distinctiveness of trade mark which was advertised in the trade mark journal dated 1.10.1977 for public objections and there was no public objection for the mark being registered and as such there was no cut short method adopted. (iv) That the plea of the plaintiff that associated trade marks are subject to the same conditions is misleading and has no legal basis. That a plain reading of Sections 15, 16, 17, 31, 32 and 43 of the Act shows that the above plea of the plaintiff is unsustainable. (v) That the purpose and true meaning of associating the trade mark with another trade mark is to avoid multiple rights being created in similar trade marks being assigned to different people after registration. that if not associated, the plaintiff's first and second registration for 'Gopal' Label with disclaimer of Gopal and the second registration in 'Gopal' without any disclaimer condition could be assigned to different parties if they were not associated and would have created confusion and deception. The only requirement of associating trade mark is that they must be assigned only to one party. (vi) That the firs registration of the trade mark label containing word 'Gopal' and picture of Lord
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Krishna was registered in the name of defendant in the year 1953. That on the date of the registration the defendant had no used the mark. That the defendant continued the use of the mark and in the year 1976 after 23 years of first registration applied to claim exclusive rights over the word 'Gopal' which was disclaimed as part of previous registration. That the Registrar having been satisfied about the distinctiveness of the trade mark 'Gopal', now in the name of defendant, proceeded and advertised the mark in the trade mark journal and since none opposed the registration and in due process of law the mark was registered in the name of defendant without any condition of disclaimer. Thus the second registration was an independent registration. The condition of association was imposed as both the trade marks contained GOPAL and could not be assigned to different person. That there have been instances where disclaimed feature have became distinctive and have been allowed registration subsequently. (vii) That the disclaimer in registration of one party does not confer a right in the rival trader and for this purpose reliance has been placed upon a judgment of the Hon'ble Supreme Court in Registrar, Trade Marks Vs Ashok Chandra Rakhit MANU/SC/0052/1955 : [1955]2SCR252 . Reliance has also been placed on Godfrey Phillips India Ltd. Vs . Girnar Good & Beverages Pvt. Ltd. MANU/SC/1566/1998 : (1998)9SCC531 wherein it was held that mere disclaimer in registration does not disentitle the plaintiff a relief in passing off action. (viii) That the defendant's case is on a much stronger footing and 'Gopal' per se is registered in its name form 1976 without any disclaimer condition. Consequently there is clear infringement of the registered trade mark 'Gopal' by the plaintiff. (ix) That in so far as Section 120 is concerned initiation of legal process cannot tantamount to a threat under Section 120 of the Act. Furthermore the provisions of Section 120(1) do not apply as the defendant had initiated the proceedings with due diligence. The suit is specifically barred under the provision of Section 120 (2) of the Act and since the defendant had not issued any letter, circular, notice etc. and only initiated a legal process, the present action under Section 120 (1) is not maintainable by virtue of Section 120 (2). In any case the only issue to be decided under Section 120 (2). In any case the only issue to be decided under Section 120 (1) is if the threat issued is groundless or not and Court is not required to decide whether there is infringement or not. In fact a case where infringement is alleged by the defendant is pending and the issue is required to be decided only in that case. For this purpose reliance has been placed on Madura Coats Ltd. Vs Chetan Dev MANU/PH/0160/1985 wherein it was held that infringement is to be determined in the proceedings under Section 29 of the Act. (x) That the defendant has been using different labels and proceeding for registration in respect of such labels. Reliance is also placed upon Section 54(2) of the Act providing that the use of whole label is considered use of part thereof though separately registered. (xi) In respect of plaintiff's plea that Section 41(A) of Specific Relief Act applies, reliance is placed upon Section 41(B) of the Specific Relief Act. (xii) That the suit filed by the defendant is prior and is pending against the plaintiff and the issues in both the suits are the same. This has been stated by the plaintiff itself in Para 17 of the plaintiff's application under Section 24 for transfer of the suit from the District Court to this Court. Consequently under Section 10 CPC the plaintiff's suit is liable to be stayed. (xiii) That the present cases is a clear case of infringement of defendants' registered trade mark by the plaintiff. plaintiff is a new entrant in the trade whereas the defendant has been in the field for the last 50 years and has generated goodwill and reputation for the trade mark 'Gopal' and plaintiff to cash in on defendant's reputation added the well-known trade mark 'Gopal' of the defendant to its trade mark. This amounts to infringement as per the law laid down by this Court in Jagan Nath Vs B.D. Karyalaya MANU/DE/0148/1975 : AIR1975Delhi149 . (xiv) That the suit of the plaintiff seeks to challenge in effect the validity of registration of the defendant's trade mark which is not permissible even in the infringement action. Reliance has been placed upon the judgment of the Supreme Court in S.M. Dyechem Ltd. V. Cadbury (India) Ltd. 2000 Ahuja's IP Cases 189 where the Supreme Court held that the Court would not go into the question of validity or distinctiveness of the plaintiff's trade mark as these issues are to be decided int eh rectification proceedings. (xv) That in fact the plaintiff has adopted this process of rectification under Section 107 by filing C.O.No. 17/1999 which raises the same question which is raised in the present suit. Such rectification proceedings are the appropriate proceedings for the decision of the issues raised in the present suit. (xvi) That the present suit is an attempt to over each the jurisdiction of the subordinate Courts where prior proceedings were initiated by the defendant. No interim order has been passed against the plaintiff. Furthermore in criminal proceedings an order to seize the goods was passed
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and plaintiff without approaching the Criminal Court obtained an interim stay of proceedings before subordinate courts in the present suit by a misrepresentation to this Court that the registration of the trade mark 'Gopal' was associated with the earlier registration subject to the condition of disclaimer. Thus the suit has become infructuous under Section 120(2) of the Act and the interim order deserves to be vacated.
3. In my view the question which needs determination in this application is whether the initiation of & legal proceeding can amount to a 'threat' within the meaning of Section 120 of the Act and whether the filing of a suit by the defendant as a registered user for the infringement of its registered mark brings into operation S. 120(2) marking S. 120(1) inapplicable. 4. The relevant portion of Section 120(1) & (2) of the Act reads as follows:-
"Groundless threats of legal proceedings. - (1) Where a person, by means of circular, advertisements or otherwise, threatens a person with an action of proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceedings, a person aggrieved may, whether the person making the threats is or is not registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceeding were threatened constitute, or, if done, would constitute, an infringement of the trade mark. (2) The last proceeding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 51, with due diligence commences and prosecutes an action against the person threatened for infringement of trade mark." 5. By a decision reported as Sidharth Wheels Pvt. Ltd. Vs Bedrock Ltd. & Another AIR 1988 DELHI 228 this Court held as follows:"In other words, according to him, any action "action" in respect of the Trade Mark commenced by the registered proprietor could knock off applicability of sub-section (1) of s.120. This contention cannot stand scrutiny of the nature and the apropos of the provision made by the Legislature in statutes like S. 120 of the Act. To give effect to both sub-sections (1) and (2) of S. 120 and to harmoniously construe them, it has to be appreciated, the subject matter of both the sub-section must be the same. Sub-section (1) provides the cause of action for the person threatened and requires the Defendants to satisfy the Court that the acts in respect of which proceedings were threatened constitute, or if done, would constitute an infringement of the Trade Mark. Sub-section (1) provides for relief by a declaration to the effect the threats are unjustifiable, and, if it is so established, it also provides for protection to the person threatened, by an injunction against the continuance of groundless threats, as well as for recovery of such damages, if any, as he has sustained. Loosely speaking, sub-section (1) can be described as a provision for action against groundless threats. Sub-section (2) preserves the predominating effect of an action for infringement of trade mark under S. 29 of the Act. It would be in that suit where it could be shown as to whether there was any infringement of the trade mark of the Defendants or not; Madura Coats Ltd. v. Chetan Dev, MANU/PH/0160/1985. To avoid possible conflict of decision on the same issues in respect of the same subject matter in a threat action and in another action for infringement of trade mark, the Legislature provided in sub-section (2) of S. 120 of the Act that sub-section (1) thereof does not apply if an action for infringement of Trade mark is commenced and is prosecuted with due diligence against the person threatened." .....
".....that the Defendant in a threats action may counter claim suing the plaintiff for infringement of the mark. It would also seem that the plaintiff may then deliver a counter-claim to the counterclaim claiming for variation for cancellation of the registration." These observations describe the true nature of action intended by subs-section 92) to exclude applicability of subsection (1) of S. 120 of the Act. Although, it may not be possible to restrict the action in subsection (2) in the strict legal sense of a "counterclaim" which must, necessarily, be in the same proceedings and in the same Court where the person threatened may have initiated proceedings under sub-section (1) for want of an express provision to that effect in sub-section (2) of S. 120 of the Act, yet that may be said to be a fair, reasonable and desirable course to be followed by parties wanting a bona fide determination of all their disputes in respect of trade mark. That apart, there can be no doubt that the subject matter of the action under sub-section (2) must be the same as that of the proceedings threatened and forming part of the cause of action under subsection 91) of S. 120 of the Act. Otherwise, the very purpose and objection sought to be achieved by the Legislature by enacting the two sub-section together in S. 120 of the Act would be
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frustrated."
6. In Dolphin Laboratories Pvt. Ltd. Vs Kaptab Pharmaceutical MANU/WB/0021/1981 : AIR1981Cal76 it was held as follows:-
"I am unable to accept the contention of the plaintiff that while restraining a person form making unjustified threats it is also open to the Court to restrain him form taking the matter to a Court of Law and from agitating his rights there. The right to institute a suit is an important and vital right and it is settled law that unless there is an express statutory bar the right of a person to institute a suit should not normally be interfered with. If the contentions of the plaintiff are accepted then the Court is called upon the pass an order restraining the defendant from instituting a suit. this order cannot be made directly in terms of Section 120." 7. In Madura Coats ltd. & Others Vs Chetan Dev MANU/PH/0160/1985 it is held as follows:-
"Simply because the plaintiff immediately after the receipt of the letter dated October 7, 1981, Exh. P.6, filed the present suit on October 17, 1981, it could not debar the defendants form filing a suit under S. 29 of the Act. It is not denied that the trade mark of the defendants is a registered one and as such they were competent to file a suit as contemplated under S. 29 of the Act. It would be in that suit where it could be shown as to whether there was any infringement of the trade mark of the defendants or not. In somewhat similar situation, it was held in Dolphin Laboratories MANU/WB/0021/1981 : AIR1981Cal76 , that while restraining a person form making unjustified threats it is not open to the Court to restrain him form taking the matter to a Court of law and form agitating his rights there. Section 120 is not intended to prevent a person form instituting a suit alleging passing off. Section 27(2) clearly upholds the right of a person to file a suit for passing off irrespective of any other provision in the Act. Similarly, in the present case, the suit under S. 120 of the Act could not debar the defendants form filing a suit under S. 29 of the Act because their trade mark is a registered one." 8. In the averments made in Para 17 of IA. 8591/99, which is filed under Section 24 CPC for transfer, the plaintiff itself while referring to Suit No. 112/99 filed by the defendant pleaded : "that the applicant respectfully submits that the subject matter of suits and the issues for adjudication in both the suits would be the same. It is submitted that the issues arising in these two suits substantially the same and in fact would be overlapping". 9. On a reading of the aforesaid provisions of Section 120 (1) & (2) of the Act and position of law laid down in the aforesaid judgments, the predominant position of S. 120(2) becomes evident. In particular the judgment in Sidharth Wheels Pvt. Ltd.'s Case (supra) lays down very clearly the remedy of Section 120(1) is available only when a proceeding is threatened and ceases to operate once a proceeding in a Court of Law has been instituted as is clear form the language of the Sub-section (2) of Section 120 which is predominant in nature and which prohibits the operation of Sub-section (1) in a situation where an action is commenced by the registered user under Section 51 of the Act. Sidharth Wheel's Judgment (supra) further holds that the only qualification for the applicability of S. 120 (2) is that the suits under S. 120 (1) & S.120 (2) must have the same subject matter. The above test of similarity of the matter is fully satisfied by the plaintiff's own pleading in is 8591/99, filed under Section 24 of CPC. Therefore, if the Registered Proprietor of the trade mark commences and prosecutes an action against the person threatened, for infringement of the trade mark, then S. 120(1) ceases to apply and action under it cannot be maintained. There is no dispute in the present case that not only a criminal complaint has been filed under Section 200 of Cr.P.C. by the defendant in the month on August, 1999 against the plaintiffs for committing offences under Section 77, 78 and 89 of Trade & Merchandise Marks Act, 1958 read with Section 420/34 of IPC Along with an application under Section 93 Cr.P.C. for issuance of warrants for search & seizure of goods bearing false trade mark, labels, etc.; but prior to the date of the filing of the present suit, ie.e, 25th of August, 1999; a Civil Suit had also been filed by the defendants on 19th of August, 1999. Thus the two proceedings, i.e., criminal complaint and civil suit filed by the defendants could constitute a cause of action under Sub-section(1) such cause of action ceases to be available once proceedings specified under Section 120(2) are initiated. 10. The prayer made in the Criminal Complaint, filed by the defendants before the Chief Metropolitan Magistrate, Delhi reads as follows:-
"It is, Therefore, most respectfully prayed that this Hon'ble Court may be pleased to take action against the accused persons, their partners, proprietors, directors, officers as well as against the unknown persons whose names may be added or submitted in due course for having committed offences punishable under Section 78 & 79 of the Trade & Merchandise marks Act, 1958 read with Section 420/34 of the Indian Penal Code and
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suitable punishment be awarded according to the law to the accused persons."
11. The prayers made in the civil suit, filed by the defendant/plaintiff in the Court of District Judge, Delhi are as follows:"(i) For perpetual injunction, restraining the defendants, their servants, agents, dealers, distributors, stockist, representatives and all other persons on their behalf from manufacturing, marketing, selling, offering for sale, stocking, advertising or otherwise dealing in : dhoop, agarbatti, hawan samagri and any other cognate or allied gods under the trade mark GOPAL and/or any other trade mark which may be identical and/or deceptively similar to the plaintiff's registered trade mark GOPAL and from doing any other act amounting to infringement of registered trade mark GOPAL of the plaintiff; (ii) For perpetual injunction restraining the defendants, their servants, agents, dealers, distributors, stockist, representatives and all other persons on their behalf from passing off their dhoop, agarbatti & hawan samagri and any other cognate of allied goods and/or their business as and for those of or connected or associated with the plaintiff in any other manner; (iii) For delivery upon affidavit by the defendant to the plaintiff of all the offending, infringing, counterfeiting dhoop, agarbatti, hawan samagri, labels, stickers, packing an stationery materials advertisement materials and all other incriminating materials bearing the trade mark GOPAL under the possession and/or control of the defendants for destruction and/or erasure purposes; and (iv) For rendition of accounts of profits earned by the defendant on the sales of dhoop, agarbatti, hawan samagri any other cognate or allied goods under the trade mark GOPAL and a decree for the amount so found due on the basis of sales made during the past 3 years prior to the filing of the suit till the date of injunction order/decree." Thus it would be seen that the position of law is clear as per the law laid down in the cases of Dolphin Laboratories (Supra) & Madura Coats (supra) that the mere pendency of an action under Suction 120 (1) of the Act is no bar to the filing of the suit by the defendant for asserting his rights as a registered user. In fact in the present case the suit, filed by the defendant is prior in point of time. Thus the question whether or not thee is an infringement by the plaintiff is a question which is essentially required to be decided in the suit filed by the defendant. 12. In the light of the above, it is very clear that in accordance with the position of law laid down by this Court in Sidharth Wheels Pvt. Ltd.'s Case (Supra) the present suit filed by the plaintiff under S. 120(1) cannot bar the continuance of Suit No. 112/99 filed by the defendants as the subject matter of the two suits even on the plaintiff's own averments is the same in so far as Civil Suit No. 112/99, filed by the defendant is concerned. Furthermore the issue as to infringement has to be determined in the suit filed by the defendant. Operation of Section 120(2) would operate as a bar for continuance of the present proceedings qua Suit No. 112/99 and there cannot be any continuance of the interim order in the light of the suit filed by the defendant which was in fact prior in point of time. 13. Accordingly, the provisions of 12(2) would clearly apply to such a suit which would bar the plaintiff's suit in so far as the Suit No.112/99 is concerned. However, in so far as the Criminal Complaint filed by the defendant under Section 200 of Criminal Procedure Code in August 1999 and under Section 77, 78 & 79 of the Act is concerned, that does not come within the bar contemplated by Section 120 (2) in view of the fact that subject matters are different. I am satisfied that in the interest of justice it would be expedient that he criminal complaint filed by the defendant is stayed under S. 120(1) of the Act as it is appropriate that the assertion of conflicting claims be determined in a Civil Suit No. 112/99 filed by the defendant. Consequently it will be in the interest of justice if the interim order dated 25.8.1999 passed in IA. 8429/99, filed by the plaintiff is vacated in so far as stay was granted by this Court on 25.8.1999 qua Suit No. 112/99 pending before the Additional District Judge is concerned. It is further directed that the interim order dated 25th of August, 1999 would continue to operate qua the criminal proceedings filed by the defendant under Section 77, 78 & 79 of the Trade & Merchandise Marks Act, 1958 read with Section 420/34 of IPC. 14. I.A.No. 8591/99 : In the light of the above discussion and findings it is clear that the subject matter of the present suit and Suit No. 112/99, filed by the defendant in the Court of Additional District Judge is the same. I am further satisfied that the suit filed by the defendant in the Court of Additional District Judge deserves to be transferred to this Court under Section 24 of Civil Procedure Code to be tries Along with the present suit as the subject matter of the two suits is same. Ordered accordingly. The District Judge is directed to send the record of the Suit No. 12/99 within 4 weeks form today in this Court. IAs stand disposed of. Suit NO. 1886 of 1999 List the suit as well as the Suit No. 112/99 (as transferred above) before the appropriate Court on 18th July,
2001 for directions, subject to the orders of the Judge-In-Charge (Original Sides).
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