T.T.K.Pharma Limited v. Robapharam AG

IN THE HIGH COURT OF JUDICATURE AT MADRASDATED: 12.10.2007CORAM:THE HONOURABLE MR.JUSTICE P.K.MISRAandTHE HONOURABLE MR.JUSTICE K.MOHAN RAMO.S.A.No.176 of 2001T.T.K.Pharma Limited,No.6, Cathedral Road,Chennai-600 006.... Appellant vs.Robapharam AG,St.Alban Rheinweg,174, CH 4006, Basel,Rep.by its Power of Attorney Rajendrakumar ... RespondentsAppeal under Clause 15 of Letters Patent and Order 36Rule 11 of Original Side Rules against the order dated 31.07.1998passed by the learned Single Judge in Application No.368/1994 inC.S.No.1148/1993. For Appellant ... Mr.A.A.Mohan Mr. N. A. K. Sharma, Sr Counsel For Respondent ... Sathya Rao JUDGMENTP.K.MISRA,JThe present appeal is filed against the order of thelearned single Judge in Application No.368/1994 arising out ofC.S.No.1148/1993, wherein the learned single Judge has rejectedthe application filed by the present appellant and refused tostay the proceedings in such suit. C.S.No.1148/1993 was filed bythe present respondent claiming for the following reliefs."(a)granting a permanent injunctionrestraining the defendants by themselves, theirservants, agents, their men of anyone claimingthrough them from manufacturing, marketing,distributing, offering and advertising for saleany pharmaceutical veterinary and sanitarysubstances, children and invalid foods, plasters https://hcservices.ecourts.gov.in/hcservices/ materials for bandaging, material for staffingtooth dental wax, disinfectant, preparations forkilling weeds and disharming vermin, using thename 'OSSOPAN" or any other name/Trade Mark whichis in any way deceptively/phonetically similar tothe Plaintiff's registered Trade Mark"OSSOPAN"registered under Registration No.129304in Class-5, dated 13-5-1947 in part-A or in anymanner infringing the plaintiff's registeredTrade Mark "OSSOPAN".(b)directing the Defendants to render atrue and faithful account of profits earned bythem through the manufacture and sale or all thepharmaceutical goods and directing such profitsto be paid to the Plaintiff for the infringementcommitted by the Defendants.(c)directing the Defendants to surrenderto the Plaintiffs all the cartons, containers,labels, packers and any other printed materialscontaining the impugned name "OSSOPAN" togetherwith the blocks used for the purpose of printingthe same for destruction."2.The main allegation in the suit was to the effectthat the plaintiff (the present respondent) was the owner of theregistered Trade Mark "OSSOPAN" and there was violation by thedefendants (the present appellant). Apart from injunction, theplaintiff had also prayed for rendering of accounts and paymentof compensation.3.The present appellant in its written statement hadtaken the plea that an Application has been filed under Chapter-VII of the Trade and Merchandise Marks Act, 1958, hereinafterreferred to as "the Act", which had been registered by theRegistrar of Trade Marks, Calcutta. The main contention whichhad been raised therein was to the effect that Trade Mark hasbeen registered without any bonafide intention on the part of theplaintiff for using the same and the same has not been usedcontinuously for a period of five years or more. There was nobonafide use of such Trade Mark and therefore the registeredTrade Mark should be taken off the register as contemplated inSection 46 of the Act. 4.The defendant had filed an application under Section111 of the Act for stay of the suit as, according to thedefendant, validity of registration was in question. The learnedsingle Judge has rejected such an application and refused to staythe suit mainly on the footing that such application before theOffice of the Registrar of Trade Marks, Calcutta, had been filedon 2nd November, 1992; whereas such defendant itself had filed asuit before the Madras High Court on 3rd November, 1992 andtherefore the statement made in the application before the https://hcservices.ecourts.gov.in/hcservices/ Registrar that no proceedings was pending relating to Trade Markin question was not a correct statement, inasmuch as thedefendant had verified the plaint on 03.11.1992 which waspresented in the Court on the same day and therefore there wassuppression of material fact. Such order is being impugned inthe present appeal.5.Learned counsel for the appellant has contended thatthe provisions contained in Section 111(1)(a) of the Act issquarely applicable and therefore the learned single Judge had nodiscretion in the matter and stay should have been granted.6.Learned counsel appearing for therespondent/plaintiff on the other hand submitted that thequestion of stay would arise only when the defendant pleads thatthe registration of the plaintiff's trade mark is invalid. Butsuch a provision may not apply to a case where the defendant isseeking for rectification on the basis of grounds contemplated inSection 46 of the Act. It is further submitted by him that thequestion as to whether stay should be granted or not isessentially a matter of discretion and since the learned singleJudge has exercised the discretion on account of suspiciousconduct of the defendant, such order does not call for anyinterference. Learned counsel for the respondent has placedreliance upon the decision of the Calcutta High Court in FosrocInternational Limited and another vs. The StructuralWaterproofing Co.Pvt.Ltd., reported in 1993(13) PTC 61 (Cal.) insupport of his contention.7.Section 111 of the Act is extracted here under:-"111.Stay of proceedings where thevalidity of registration of the trade mark isquestioned, etc.(1)Where in any suit for theinfringement of a trade mark--(a)the defendant pleads that theregistration of the plaintiff's trade mark isinvalid; or(b)the defendant raises a defence underclause (d) of sub-section (1) of section 30 andthe plaintiff pleads the invalidity of theregistration of the defendant's trade mark;the court trying the suit (hereinafter referredto as the court), shall--(i)if any proceedings for rectificationof the register in relation to the plaintiff'sor defendant's trade mark are pending beforethe Registrar or the High Court, stay the suitpending the final disposal of such proceedings;(ii)if no such proceedings are pendingand the court is satisfied that the plearegarding the invalidity of the registration ofthe plaintiff's or defendant's trade mark is https://hcservices.ecourts.gov.in/hcservices/ prima facie tenable, raise an issue regardingthe same and adjourn the case for a period ofthree months from the date of the framing ofthe issue in order to enable the partyconcerned to apply to the High Court forrectification of the register.(2)If the party concerned proves to thecourt that he has made any such application asis referred to in clause (b)(ii) of sub-section(1) within the time specified therein or withinsuch extended time as the court may forsufficient cause allow,the trial of the suitshall stand stayed until the final disposal ofthe rectification proceedings.(3)If no such application as aforesaidhas been made within the time so specified orwithin such extended time as the court mayallow, the issue as to the validity of theregistration of the trade mark concerned shallbe deemed to have been abandoned and the courtshall proceed with the suit in regard to theother issues in the case.(4)The final order made in anyrectification proceedings referred to in sub-section (1) or sub-section (2) shall be bindingupon the parties and the court shall dispose ofthe suit conformably to such order insofar asit relates to the issues as to the validity ofthe registration of the trade mark.(5)The stay of a suit for theinfringement of a trade mark under this sectionshall not preclude the court making anyinterlocutory order (including any ordergrating an injunction, directing accounts to bekept, appointing a receiver or attaching anyproperty), during the period of the stay of thesuit."8.In the present case, the appellant is relying on theprovisions contained in Section 111(1)(a) of the Act. Chapter-VII of the Act contains provisions relating to rectification andcorrection of the register. Under Section 56(1) of the Act, theHigh Court or the Registrar may cancel or vary the registrationof a trade mark on the ground of any contravention or failure toobserve a condition entered on the register in relation thereto.The power under Section 56(1) or (2) of the Act can be exercisedon the basis of the application of the person aggrieved or suo-motu as contemplated in Section 56(4) of the Act. Similarlyunder Section 57, the Registrar may correct any error in the nameof the registered proprietor of a trade mark or any other entryrelating to the trade mark or even cancel the entry of a trademark. https://hcservices.ecourts.gov.in/hcservices/

9.A careful perusal of the provisions contained inSection 111 makes it clear that the question of stay would arisewhere in a suit for infringement of a trade mark the validity ofregistration of the trade mark is questioned and the proceedingsfor rectification by the Registrar in respect of such trade markis pending before the Registrar or the High Court as the case maybe. Chapter-II of the Act relates to the Register and conditionsfor registration. Section 9 contains the provision laying downthe requisites for registration. Section 11 contains provisionsprohibiting registration of certain marks. Sections 12 and 13contain certain other prohibits. If there is registration incontravention of such provisions, one may contend that suchregistration is invalid.10.In the present case, the contention of the defendantis not that the registration of the trade mark is invalid onaccount of contravention of any of the provisions contained inthe Act. The main contention is to the effect that theregistration should be removed from the register on account of asubsequent event, namely the fact that the owner of theregistered trade marks has not used the trade mark for acontinuous period of five years before the filing of theapplication. It is therefore rightly contended that the validityor invalidity of the registration is not in question as such, butthe question is as to whether such trade mark should be removedfrom the register because of the subsequent event. The saidcontention raised by the counsel for the respondent receivesconsiderable support from the decision of the Calcutta High Courtreferred to supra.11.Learned counsel for the appellant had contended thatin fact the learned Single Judge was under misconception that theapplication for rectification was filed on 2nd November, 1992;whereas, in fact, such application was sent on 29.10.1992 andsuch application was taken on file and registered in the officeonly on 2nd November, 1992 and therefore the learned single Judgewas not correct in his observation that on the date of filing ofsuch application for rectification, the defendant was aware ofthe filing of a suit by itself. Even though this contention isfactually correct, as, we have found, the application was signedon 29.10.1992 and sent by post, which was registered only on 2ndNovember, 1992. But this ground may not come to in aid of thepresent appellant. It is apparent that the suit filed by thepresent appellant in 1992 is very much interconnected with thesuit filed by the present respondent in 1993. In the applicationfor stay, the present appellant had only moved for stay of thesuit filed by the present respondent. In other words, theappellant wants its suit to continue, whereas the suit filed bythe present respondent, which is very much interconnected, shouldbe stayed. Such a course cannot be permitted. https://hcservices.ecourts.gov.in/hcservices/

12.For the aforesaid reasons, we do not find any meritin this appeal, which is accordingly dismissed. However, therewill be no order as to costs.gb/dpkSd/Asst.Registrar/true copy/Sub Asst.RegistrarTo:The Sub Asst Registrar,OS, High Court, Madras.+ 1 cc to Mr. Sathya Rao, Advocate SR No. 63420+ 1 cc to mr. A. A. Mohan, Advocate SR No. 63095RA(CO)SR/23.10.2007Judgment in O.S.A.No.176/2001