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In the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive and the same was upheld by High Court of Delhi through the learned bench led by JUSTICE PRATHIBA M. SINGH in the case of KORES (INDIA) LIMITED vs. DOMS INDUSTRIES PRIVATE LIMITED [CM APPLs. 10457/2022] on 03.03.2022.

The facts of the case are that the suit was filed by the Plaintiff for permanent injunction restraining infringement of trademarks, unfair trade practice, damages, etc. with regard to the mark “NEON” on the packaging of defendant’s pencils. The case of the Plaintiff is that the Defendant’s products being, “Kores Funcils Neon” is an infringement of the Plaintiff’s trademarks as they are identical to the Plaintiff’s, “DOMS NEON” pencils. A perusal of the registered trademarks shows that they are in respect of pencils which are in different colour combinations. The present petition challenges the impugned order under Order XIV Rule 5 CPC.

The defendant’s counsel submitted that the suit in this case was filed by the Plaintiff for permanent injunction restraining infringement of trademarks, unfair trade practice, damages, etc. Further, when the initial issues were framed, neither of the parties were present and so the issues relating to validity of the said trademarks and some other issues, could not be placed before the Commercial Court at that time. Accordingly, a fresh application is moved under Order XIV Rule 5 CPC read with Section 15 CPC, seeking inclusion of additional issues.

The plaintiff’s counsel submitted that the Plaintiff has already filed the evidence by way of affidavit and these additional issues are being sought to be canvassed at a very late stage. This ought not to be permitted.

In view of facts and circumstances, the Court held that if the Commercial Court grants Defendant permission to challenge the trademark registrations, the Defendant may then avail of its remedies for seeking rectification of the trademarks in accordance with law.

The Court observed that, “In a situation where a suit is pending whether instituted before or after the filing of a rectification application, the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. In the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive.”

Click here to read the Judgment

Judgment reviewed by – Shristi Suman