1.Leave Granted.
2.Before adverting to the core issue it would be apposite to note down the
genesis of the dispute. JUDGMENT
3.The appellant herein is the proprietor of a concern by the name of Kundan
Cables which is engaged in the manufacture of electric accessories and fittings
including electrical switches, main switches, fuse units, wires and cables and
electrical irons. Since 1980 the petitioner has been using the trademark Kundan/
Kundan Cab and the trade name Kundan Cables India in respect of the said
goods. The appellant has also been supplying the said goods under the aforesaid
trade marks and names to Respondent No. 1.
4.Sometime in the year 1994, the appellant came to know that Respondent No. 1
was using the Trade Mark 'KUNDAN'. The appellant immediately filed a suit
for injunction in the District Court at Delhi which was registered as Suit No.
102 of 1994. During the pendency of the said suit, Respondent No. 1 obtained
registration of the said Trade Mark in its favour. The registration was obtained
by Respondent No. 1 by virtue of an assignment deed executed by Respondent
No. 2 in respect of a pending application for registration. This prompted the
appellant to file an application under Sections 46 and 56 of the Trade and
Merchandise Marks Act in the High Court of Delhi for rectification of the
registered Trade Mark No. 507445 in class 9 and for cancelling/ expunging the
same. It was filed on 2.5.1995. In the said proceedings an objection was raised JUDGMENT by Respondent No. 1 as to the territorial jurisdiction of the Delhi High Court to
entertain the said petition.
5.Vide orders dated 10.10.2001, a single Judge of the Delhi High Court upheld
the objection regarding territorial jurisdiction and directed that the petition be
returned for presentation before the appropriate Court. This order was upheld by
the Division Bench. A Special Leave Petition against the order of the Division
Bench being Special Leave Petition (Civil) No. 16800 of 2002 was also
dismissed vide order dated 20.9.2002.
6.As per the aforesaid orders of the High Court, which was upheld by this Court
also, the appellant was supposed to file the petition for rectification of the
registered trade mark before the appropriate Court, as Delhi High Court did not
have the territorial jurisdiction to adjudicate the matter. The petition filed in
Delhi High Court was, thus, directed to be returned for presentation before the
appropriate Court. However, before the application for rectification could be
returned by the Registry of Delhi High Court, the Intellectual Property Appellate
Board (hereinafter to be referred as 'IPAB') was constituted on 15.9.2003. On
the establishment of this IPAB, such rectification applications are now to be
entertained by the IPAB which has the exclusive jurisdiction to deal with such
applications. The Registrar of Delhi High Court passed the orders dated JUDGMENT 29.10.2004 directing return of the Rectification Petition to the Counsel for the
appellant and it was finally returned on 2.11.2004. On same date, the appellant
presented the petition before the IPAB.
7.Notice was issued by the IPAB to the Respondent Nos. 1 & 2 who filed their
replies. The Respondent No. 1 filed a miscellaneous petition, being M.P. No. 31
of 2005 on the ground that the Rectification Petition could not have been filed
as a continuity of the earlier proceedings before the Delhi High Court. For
uncertain reasons, the matter dragged on before the IPAB for quite sometime
and ultimately vide orders dated 9.3.2012 the IPAB dismissed the Rectification
Petition on the ground that it was filed after a lapse of about 10 years from the
date when registration was obtained by Respondent No. 1. The IPAB took the
view that Rectification Petition was wrongly filed in the Delhi High Court as
jurisdiction vested in the Madras High Court. Therefore, presentation of the
petition before the IPAB on 2.11.2004 was taken as the date of filing the petition
wherein rectification order was challenged. Since the registration was granted in
the year 1995, on this basis the IPAB took the view that Rectification Petition
was filed after a period of almost 10 years from the date of registration and
therefore it was belated.
8.Aggrieved by the order of the IPAB dismissing the petition, the appellant filed JUDGMENT Writ Petition before the High Court which has also been dismissed, as the view
taken by the IPAB has found favour with the High Court.
9.A perusal of the order of the IPAB would disclose that as per the Appellate
Board though there is a delay of 10 years, no reason has been assigned by the
appellant for the said delay and the Rectification Petition was not presented
within time before the Madras High Court. In the Writ Petition challenging this
order the appellant had submitted that the appellant had pursued its remedy by
filing the petition before the Delhi High Court on 2.5.1995 itself that is
immediately after the grant of registration of the trade mark Kundan in favour of
Respondent No. 1. However, this argument is brushed aside by the High Court
with the remarks that the petition was filed before a Court viz. the High Court
of Delhi which did not have territorial jurisdiction and therefore the appellant
cannot take advantage of filing such a peititon before the Court which lacked
the requisite jurisdiction.
10.We are of the view that the aforesaid line of action taken by the IPAB as well
as the High Court in dismissing the Rectification Petition filed by the appellant
on the ground of delay is wholly erroneous, and it has prejudiced the rights of
the appellant to have the case adjudicated on merits.
11.From the events disclosed above, it is manifest that the appellant has been JUDGMENT
pursuing its remedy with due diligence, without brooking any delay. The
appellant claims that he has been using the trade mark KUNDAN/ KUNDAN
CAB and the name Kundan Cables India since 1980. In fact he was the supplier
of these goods to Respondent No. 2. When the appellant came to know that
Respondent No. 1 was using the trade mark Kundan, he immediately filed the
suit for injunction against Respondent No. 1 in the District Court of Delhi which
shows that in all earnestness, it wanted to protect his interest in the said trade
mark.
12.During the pendency of this suit Respondent No. 1 had obtained registration
of trade mark 'KUNDAN' in its favour. This happened in the year 1995. The
appellant prompltly filed the petition under Section 45 and 46 of the Trade and
Merchandise Marks Act for rectification of the said registered trade mark and
for cancelling/ expunging the same. This petition was filed on 2.5.1995.
Therefore as far as the appellant is concerned, there was not even a slightest
delay in challenging the validity of the trade mark obtained by Respondent No.
1. It is a different matter that this petition was returned for want of territorial
jurisdiction. However, the moment this petition was returned by the Registrar
i.e. on 2.11.2004, it was presented before the IPAB on the same day. Having
regard to all these facts we fail to understand as to how the Appellate Board JUDGMENT could dismiss the petition on the ground that it was filed after a delay of 10
years. The appellant had pursued his remedy in a bonafide manner and if it was
filed in a wrong court and if he has pursued his remedy wrongly by filing it in
Delhi High Court, instead of Madras High Court, principles enshrined in
Section 14 of the Limitations Act clearly get attracted.
13.We are, therefore, of the opinion that impugned order of the IPAB as well as
High Court are liable to be set aside. These appeals are accordingly allowed. As
a consequence the matter is remitted back to IPAB to decide the Rectification
Petition on merits.
14.No costs.
[A.K. SIKRI]
New Delhi JUDGMENT November 27, 2013.