ORDER
P.S. Narayana, J.
1. The controversy between the parties is in relation to the stay of suit praying for the relief of perpetual injunction in relation to a Trade Mark Azam Jadi Beedi.
2. Respondents in the civil revision petition moved C.M.P. No. 37/2004 in C.M.P. No. 19983/2003 in the present civil revision petition to vacate the interim suspension made in C.M.P.No. 19983/2003. At that stage, with the consent of both the Counsel, the civil revision petition itself was heard finally.
3. The Revision petitioners/respondents in I.A. No. 163/2003 in O.S. No. 88/2001 on the file of XIV Additional Chief Judge, City Civil Court, Hyderabad-Fast Track Court, as plaintiffs filed the suit O.S. No. 88/2001 praying for the relief of permanent injunction in favour of plaintiffs restraining the defendants, their men, agents, servants, employees or any one claiming under or through them from in any way manufacturing, selling, supplying and dealing with the plaintiffs proprietary Registered Trade Mark Azam Jadi Beedi from any territory by taking police assistance and for costs of the suit. It is available on record that the said plaintiffs also moved an application I.A. No. 1000/2001 for temporary injunction which was dismissed on 12-7-2001. The defendants in the suit Yousufuddin Mansoor and Smt. Saleha Begum filed the application I.A. No. 163/ 2003 in O.S. No. 88/2001 on the file of XIV Additional Chief Judge, City Civil Court, Hyderabad-Fast Track Court as against Mohd. Zaheeruddin, Mohd. Basheeruddin, Mohd. Muneeruddin and Mohd. Naseeruddin - respondents in the said application/plaintiffs in the suit, under Section 111 of the Trade and Merchandise Marks Act, 1958 read with Sections 10 and 151 of the Code of Civil Procedure for stay of further proceedings in the suit. The learned Judge ultimately framed an Issue : 'Whether the trade mark registration Certificate issued by the Registrar is invalid' and the defendants were given three months time to approach the High Court for rectification of the Register and had adjourned the suit to 13-10-2003 for further hearing, if any. Aggrieved by the said order, the respondents in the said application/ plaintiffs in the suit, preferred the present civil revision petition.
4. Sri Radha Krishna Murthy, Counsel representing the petitioners would maintain that the learned Judge had not understood the scope and ambit of Section 111 of the Trade and Merchandise Act, 1958 and the relief granted cannot be sustained. The learned Counsel also had taken this Court through different provisions of the Trade and Merchandise Act, 1958 hereinafter referred to as 'old Act', and had submitted that the provisions of the said Act alone are applicable to this litigation. The learned Counsel also had drawn the attention of this Court to Section 107 of the old Act. The Counsel would maintain that there is lot of difference between Form TM 26 and Form TM 24 and the observation made by the learned Judge that it does not matter as the Court is directing the defendants to approach the High Court, definitely cannot be sustained. The Counsel also would maintain that in fact issues were settled long back and at the appropriate time within the period specified this objection was not raised but the same was moved by way of an interlocutory application after the lapse of time and hence framing of additional issue and issuing a direction of the nature referred to supra definitely cannot be sustained under the old Act. The Counsel also would maintain that the corresponding provision i.e., Section 124 of the Trade Marks Act, 1999, Act 47 of 1999, hereinafter referred to as the 'present Act' also is substantially the same and the only difference between Section 124 of the present Act and Section 111 of the old Act is the substitution of the expression 'Appellate Board' for the words 'High Court'. At any rate, the Counsel would maintain that inasmuch as the Certificate in controversy had been issued under the old Act the said provisions alone are applicable. The Counsel also would maintain that there is no specific plea relating to the validity of the Certificate as such and in fact the stand taken by the defendants is that they should also be shown or impleaded in the Certificate so that they would also be entitled to the benefits of the Trade Mark and in this view of the matter, Section 111 of the old Act is not applicable at all and hence the learned Judge had misdirected himself in framing the additional Issue and making such directions referred to supra.
5. On the contrary, Sri Dhanunjaya, Counsel representing the respondents/ defendants in the suit had taken this Court through the written statement and the additional written statement filed and had pointed out that there is specific denial and the genuineness of the Certificate in controversy had been questioned. The Counsel also had drawn the attention of this Court to Section 111 of the old Act. Attention also had been drawn to Section 107 of the old Act which was omitted in the present Act, and to Section 56 of the old Act. The learned Counsel in detail had explained the object and ambit of different provisions of the old Act and the present Act and had submitted that on a careful reading of the provisions of both the old Act and also the present Act as well, there is no illegality or any legal infirmity committed by the learned Judge while making the impugned order and hence the civil revision petition is liable to be dismissed.
6. Heard both the Counsel.
7. The respondents/defendants as petitioners moved I.A. No. 163/2003 in O.S. No. 88/2001 on the file of XIV Additional Chief Judge-Fast Track Court, City Civil Court, Hyderabad under Section 111 of the old Act for stay of all proceedings in O.S. No. 88/2001 and for such other suitable orders. Several facts in detail were narrated in the affidavit filed in support of the said application and equally a counter in detail was filed opposing the said application. The learned Judge after iraming the Point for consideration : Whether there are sufficient grounds to stay the trial of suit O.S. No. 88/2001' having marked Exs.A-1 to A-14 recorded findings in detail at Paras 8 to 16 and ultimately framed an Issue: 'Whether the trade mark registration Certificate issued by the Registrar is invalid' and granted the defendants three months time to approach the High Court for rectification of the Register. The said order is impugned in the present civil revision petition.
8. At the outset, it may be stated that I.A. No. 1000/2001 was moved for temporary injunction and the same was dismissed on 12-7-2001. The learned Judge had taken into consideration the aspects specified infra while making such an order:
(i) The plaintiffs plead that there was a dissolution of the partnership firm on 14-11-1969, but the dissolution deed is not filed;
(ii) The mother of the plaintiffs as second defendant in O.S. No. 1025/93 pleaded that Moinuddin took away his share by virtue of an agreement and an affidavit dated 21-10-1985;
(iii) The second defendant gave a legal notice to the plaintiffs and they gave a reply stating that Mahamood Ahmed was a partner till 1970;
(iv) Mohd. Ismail, the younger brother of Moinuddin and Mohammod Ahmed pleaded that the Mohamood Ahmed took his share in 1985 and gave up his rights;
(v) The first defendant herein filed a counter-affidavit in the petition LA, No. 349/02 for appointment of receiver in the suit O.S. No. 1025/93, contending that Mohamood Ahmed has swore to an affidavit on 25-10-1885 after taking his share under agreement dated 28-10-1985. This affidavit appears to have been filed before the Registrar to obtain the trade mark and also before the Criminal Court;
Section 111 of the old Act reads as hereunder:
Stay of proceedings where the validity of registration of the trade mark is questioned, etc.:--(1) Where in any suit for the infringement of a trade mark--
(a) the defendant pleads that the registration of the plaintiffs trade mark is invalid; or
(b) the defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendant's trade marie,
the Court trying the suit (hereinafter referred to as Court), shall--
(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;
(a) if no such proceedings are pending and the Court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.
(2) If the party concerned proves to the Court that he has made any such application as is referred to in Clause (b)(ii) of Sub-section (1) within the time specified therein or within such extended time as the Court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the Court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in Sub-section (1) or Sub-section (2) shall be binding upon the parties and the Court shall dispose of the suit conformably to such order insofar as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this Section shall not preclude the Court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.
Section 124 of the present Act dealing with Stay of proceedings where the validity of registration of the trade, mark is questioned, etc. reads as hereunder:
(1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under Clause (c) of Sub-section (2) of Section 30 and the plaintiff pleads the invalidity or registration of the defendant's trade mark,
the Court trying the suit (hereinafter referred to as the Court), shall--
(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendant's trade mark are pending before the Registrar of the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the Court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register,
(2) If the party concerned proves to the Court that he has made any such application as is referred to in Clause (b)(ii) of subsection (1) within the time specified therein or within such extended time as the Court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings,
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the Court shall proceed with the suit in regard to the other issues in the case,
(4) The final order made in any rectification proceedings referred to in Sub-section (1) or Sub-section (2) shall be binding upon the parties and the Court shall dispose of the suit conformably to such order insofar as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this Section shall not preclude the Court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.
A careful scrutiny and the comparative study of the provision under the old Act and the provision under the present Act would go to show that the only difference between Section 124 of the present Act and Section 111 of the old Act is the substitution of the expression 'Appellate Board' for the words 'High Court'. Section 159 of the present Act dealing with Repeal and Savings reads as hereunder:
(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, Certificate, notice, decision, determination, direction, approval, authorization, consent, application, request or thing made, issued, given or done under the Trade and Merchandise Act, 1958 (43 of 1958), shall, if in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.
(3) The provisions of the Act shall apply to any application for registration of a trade mark pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.
(4) Subject to the provisions of Section 100 and notwithstanding anything contained in any other provision of this Act, any legal proceeding pending in any Court at the commencement of this Act may be continued in that Court as if this Act had not been passed.
(5) Notwithstanding anything contained in this Act, where a particular use of a registered trade mark is not an infringement of a trade mark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act.
(6) Notwithstanding anything contained in Sub-section (2), the date of expiration of registration of a trade mark registered before the commencement of this Act shall be the date immediately after the period of seven years for which it was registered or renewed: Provided that the registration of a defensive trade mark referred to in Section 47 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall cease to have effect on the date immediately after the expiry of five years of such commencement or after the expiry of the period for which it was registered or renewed, whichever is earlier.
The provisions of the present Act will apply to any application for registration of a trade mark pending at the commencement of the said Act and to any proceedings consequent thereon and to any registration made in pursuance thereof. Section 107 of the old Act dealing with Application for rectification of the register to be made to High Court in certain cases had specified as hereunder:
(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under Clause (d) of Sub-section (1) of Section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in Section 46, Sub-section (4) of Section 47 or Section 56, such application shall be made to the High Court and not to the Registrar.
(2) Subject to the provisions of Sub-section (1) where an application for rectification of the register made to the Registrar under Section 46 or Sub-section (4) of Section 47 or Section 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court.'
The said provision was omitted in the present Act Section 56 of the old Act specifies:
Power to cancel or vary registration and to rectify the register:
(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The Tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The Tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in Sub-section (1) or Sub-section (2).
(5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
(6) The power to rectify the register conferred by the section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.
Likewise, Section 47 of the Act deals with Defensive registration of well-known trade marks and Section 47(4) reads as hereunder;
'On application made in the prescribed manner to a High Court or to the Registrar, by any person aggrieved, the registration of a trade mark as a defensive trade mark, may be cancelled on the ground that the requirements of Sub-section (1) are no longer satisfied in respects of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects, any goods in relation to which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in Sub-section (1).'
Section 46 of the old Act dealing with Removal from register and imposition of limitations on ground of non-use also may be looked and the same reads as hereunder:
(1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered, on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either--
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or
(b) that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:
Provided that, except where the applicant has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Clause (a) or Clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) Where in relation to any goods in respect of which a trade mark is registered--
(a) the circumstances referred to in Clause (a) of Sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and
(b) a person has been permitted under subsection (3) of Section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the Tribunal is of opinion that he might properly be permitted so to register such a trade mark,
on application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of Clause (b) of Sub-section (1) or for the purposes of Sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.'
Section 100 of the present Act dealing with Transfer of pending proceedings to Appellate Board reads as hereunder:
All cases of appeals against any order or decision of the Registrar and all cases pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate Board from the date as notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo from the stage it was so transferred.
9. The present Act, Act 47 of 1999, is an Act to amend and consolidate the law relating to trade mark, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. Trade Marks Act, 1940, Act 5 of 1940, was the first statute law on the subject in India. The said Enactment was amended subsequent thereto. The Trade and Merchandise Act, 1958, Act 43 of 1958, was brought into force on 25-11-1959 and subsequent thereto the same was amended by Act 58 of 1960 and Act 37 of 1970. There is no serious controversy between the parties relating to the applicability of the old Act to the present litigation in view of the Certificate which was granted under the provisions of the said old Act. A contention was advanced that there is no specific denial relating to the genuineness of the Certificate as such and the plea in the written statement is only to include the defendants also in the said Certificate for the purpose of deriving benefit and hence Section 111 of the old Act is not applicable. It may be essential to have a look at the relevant portions of the respective pleadings of the parties. The Revision petitioners as plaintiffs pleaded in Paras 1 to 4 as hereunder:
'The plaintiffs submit that they are the manufacturers, wholesalers and retailer merchants of the Azam Jadi Beedi (Registered Trade Mark owner) with Registration No. 391045 for the 20 Beedi Pack label and Registration No. 117778 for the 10 beedi pack label. Both the labels are registered under the Trade and Merchandise Marks Act, 1958 before the Trade Marks registry and Authority at Mumbai. Originally the plaintiffs father Shri S.M. Mohiuddin was the sole proprietor of the said Azam Beedi and trading as M/S. S.M. Moinuddin, Md. Azam Beedi Factory and also as Azam Beedi Factory at Village Chintakunta, Dist. Mahaboobnagar, A.P. However, after the death of the plaintiffs father S.M. Mohiuddin, the business got devolved upon the four survivors legal heirs and sons namely:
(1) Md. Basheeruddin
(2) Md. Muneeruddin
(3) Md. Zaheeruddin
(4) Md. Naseeruddin who inherited the mantile of M/s. S.M. Moinuddin, Md. Azam Beedi Factory and also Azam Beedi are registered as subsequent proprietor of this Trade Mark as from 3-4-1992 by virtue of Dissolution deed dated 14-11-1969, partnership deed dated 3-4-1992 and Death Certificate of late S.M. Moinuddin and Smt. Ahmadi Begum. The Notarised copy of Trade Mark Registration letter mentions Registration Numbers as 391045 and 117778 in the plaintiff hereditary name and trading at Mahaboobnagar and Hyderabad Districts as manufacturers, wholesalers and retail merchants in the original registration on 7-1-1946, 20-3-1949 and renewal date as 7-1-1996, 20-3-1999 for a period of 7 years starting on 7-1-1996, 20-3-1999. The status is described; as 'Registered' by the Trade Marks Registry and Authority. In the same registration letter plaintiffs names are shown as one of the brother and legal heir and subsequent proprietor of the Registered Trade Mark Azam Jadi Beedies.
As per the Amended Trade Marks Act, 1999 (Previous Act of 1958) Section 137 States 'Evidence of Entries in Register etc., and things done by the Registrar (1) A copy of any entry in the Register or of any document referred to in Sub-section (1) of Section 148 purporting to be certified by the Registrar and sealed with the seal on Trade Marks, Registry shall be admitted in evidence in all Courts and in all proceedings without further proof or production of the original.
A Certificate purporting to be under (he hand of the Registrar as to any entry matter of thing that he is authorized by this Act or the rules to make on do shall be prima facie evidence of the entry having been made and of the contents thereof or of the matter or thing having been done or not done.
Comments: This Section provides that Certificate issued by the Registrar shall be prima facie evidence in all proceedings without further proof or production of the original. The Trade Marks Act of 1958 also provided similar sections and rule position.
While this is so, the Defendant No. 1 herein, an unknown figure, has suddenly stepped into the market supplying the same brand of Beedies and imitating the same labels, colour, material, etc., as that belonging to the plaintiffs, the original owners of the Registered Trade Mark. It is brought to the notice of this Hon'ble Court that the plaintiffs beedi is well reputed and popular brand in the State of Andhra Pradesh and elsewhere and as such the importer defendants are hell bent upon cashing on the popularity of the plaintiffs brand, by pushing into the market their spurious and duplicate beedies sticks of inferior quality and thereby running the 5 decade old business of this plaintiffs. The plaintiffs got knowledge and information that even as on the date of filing this permanent injunction suit the defendants are moving into the markets of Hyderabad and Secunderabad and other parts of Andhra Pradesh, selling the spurious beedies under the name and style of M/ s. Azam Jadi Beedi.
The wife of the first defendant issued advertisement in the Siasat Daily Newspaper dated 8th November, 2000 calling for Salesmen, Agents and investors for the Azam Jadi Beedi. Copy of the advertisement is filed as Document No. 3. Alarmed at the illegal and high handed acts of the defendant's wife, the plaintiff got issued a reply notice from pubic notice in the same Siasat Daily dated 13th Nov. 2000 disputing and denying that the defendants are in anyway connected to the Azam Jadi Beedies, much less, proprietor of the said Beedi. Copy of the reply notice is filed as Document No. 4.
Further, these plaintiffs had also filed a criminal case of cheating against the said Defendant No. 1 before the Hon'ble IX Metropolitan Magistrate under C.C. No. 117/ 98 under Section 420 of the Indian Penal Code. The said criminal case is pending trial. Accused is arrested by police red handed. He obtained bail and again committing offence. Hence the permanent injunction.'
10. In the written statement of the 2nd defendant in Para 1 itself it was specifically pleaded:
'In reply to Para 1 of the plaint it is denied that the plaintiffs alone are exclusive manufacturers, wholesalers and retail merchants of Azam Jadi Beedi with Registration No. 391045 for the 20 Beedi Pack Label and Registration No. 117778 for 1 Beedi Pack label. It is denied that they are the only Registered Trade Mark owners. It is true both the labels are registered under the Trade Marks Act before the Trade Marks Registry and Authority at Mumbai. It is denied that originally the plaintiffs' father S.M. Moinuddin was the sole proprietor of the said Azam Beedi. It is denied that after the death of plaintiffs' father the business devolved upon the four survivor legal heirs and sons namely Mohd. Naseeruddin, the plaintiffs herein. The Trade Mark Registration Certificate issued by the Registry of Trade Mark, Mumbai showing the plaintiffs as subsequent proprietors of the Registered Trade Mark Azam Jadi Beedi has been obtained by filing forged and fabricated documents. For summoning the original of those documents the husband of this defendant who is the first defendant herein has already filed I.A. No. 213 of 2002 before this Hon'ble Court. The Dissolution Deed dated 14-11-1969 referred to herein is patently a false document created for obtaining the Registration Certificate from Registrar of Trade Marks, Mumbai. The Partnership Deed dated 3-4-1992 referred to in this para of the plaint is a forged and self serving document created for obtaining the Registration Certificate. The other contents in this para of plaint are matters of record and the plaintiffs may be called upon to prove the same.
It is submitted that the plaintiffs just before filing of this suit, managed to secure from the Trade Marks Authority, Mumbai Certificates to show them as subsequent proprietors of the aforesaid Trade Marks by filing self-serving affidavits of some of the legal heirs of the joint owners (since deceased) whose details are given in the additional paras of this written statement, and also by filing a forged and fabricated affidavit dated 27-12-1985, of this defendant's father Mahmood Ahmed which documents have not undergone any security regarding their genuineness or otherwise by the Trade Marks Authority before issue of the Certificates. This defendant submits that Sri Mahmood Ahmed whose affidavit dated 27-12-1985, the plaintiffs have filed before the Trade Marks Authority is this defendant's father and he died on 6-12-1992. To the knowledge of this defendant her father Mahmood Ahmed has not given any such affidavit as the one dated 27-12-1985 and the said affidavit is certainly a forged one which the plaintiffs filed before the Trade Marks Authority and maneuvered to obtain the Certificates showing them as subsequent proprietors. The said Certificates are not genuine and the plaintiffs are not entitled to lay any action on the basis of the said documents. Summoning of the said affidavit dated 27-12-1985 of late Sri Mahmood Ahmed from the Registrar of Trade Marks Mumbai is absolutely essential to decide this suit because the Trade Mark Certificates have been issued on the strength of the said affidavit. The plaintiffs suppressed all real and material facts and came up with a false story that the business of Azam Jadi Beedi is the sole proprietary concern of their late father S.M, Moinuddin. Therefore the claim of the plaintiffs that they are described as subsequent owners of the Trade Marks by the Trade Marks Registry and Authority is fraught with deception and cheating.'
Likewise, the 1st defendant in the additional written statement also had specifically pleaded:
'It is submitted that the plaintiffs just before filing of this suit, managed to secure from the Trade Marks Authority, Mumbai, Certificates to show them as subsequent proprietors of the aforesaid Trade Marks by filing self-serving affidavits of some of the legal heirs of the joint owners (since deceased) whose details are given in the additional paras of this written statement and also by filing a forged and fabricated affidavit dated 27-12-1985 of their uncle Mahmood Ahmed which documents have not undergone any scrutiny regarding their genuineness or otherwise by the Trade Marks Authority before issue of the Certificates. This defendant submits that Shri Mahmood Ahmed, whose affidavit dated 27-12-1985 the plaintiffs have filed before the Trade Marks Authority is the defendant's father-in-law who died on 6-12-1992. To the knowledge of this defendant his father-in-law Mahmood Ahmed had not given any such affidavit as the one dated 27-12-1985 and the said affidavit is definitely a forged one which the plaintiffs filed before the Trade Marks Authority and maneuvered to obtain the Certificates showing them as subsequent proprietors. The said Certificates are not genuine and the plaintiffs are not entitled to lay any action on the basis of the said documents. The plaintiffs be called upon to produce the original of the said affidavit dated 27-12-1985 of late Shri Mahmood Ahmed, before this Hon'ble Court. Thus the plaintiffs suppressed all real and material facts and came up with a false story that the business of Azam Jadi Beedi is the sole Proprietary concern of their late father S.M. Moinuddin. Therefore, the contention of the plaintiffs that they are described as subsequent owners of the Trade Marks by the Trade Marks Registry and Authority is fraught with deception and cheating.'
11. In the light of the respective pleadings of the parties, it cannot be said that the genuineness of the Certificate is not disputed by the respondents in the civil revision petition/defendants in the suit. No doubt there is some controversy to the effect that an additional Issue was framed and the issues were settled long back and in this view of the matter, the framing of additional Issue and also the direction given by the learned Judge cannot be sustained. Yet another contention also was raised that there is some difference in Form TM 26 and Form TM 24. The said contentions also cannot be sustained for the reasons specified infra. The learned Judge in detail had appreciated the certified copy of the plaint in O.S. No. 1025/93 - Ex.A-i, written statement - Ex. A-2, counter-affidavit in I.A. No. 1023/93 in O.S. No. 1025/93 -Ex.A-3, legal notice - Ex. A-4, petitions before the Registrar of Trade Marks -Exs.A-5, A-6, A-7, postal returned covers - Exs.A-8 and A-9, postal receipts - Exs.A-10 to A-13 and petition before the Registrar, Trade Marks, Mumbai - Ex. A-14. In S.M. Dyechem Ltd. v. Cadbury (India) Ltd., AIR 2000 SC 2114, the infringement of trade marks and proof thereof had been considered by the Apex Court. In Kedar Nath v. M.P.&F.; Mills, AIR 1974 Del. 12, it was held:
'Clause (i) applies where proceedings under Section 107 i.e., Rectification of the Register of trade marks are pending before the Court at the time of institution of a suit for infringement of a trade mark.
Clause (ii) and not Clause (i) will apply where after the institution of such suit the defendant has applied or wants to apply for rectification. In such case the Court may, on being satisfied that defendant's plea of invalidity of registration of the trade mark is prima facie tenable, adjourn the suit. In the present case, the defendant had already applied for rectification of the transfer after the filing of the suit. His plea that Clause (1) was applicable was rejected. On merits the Court not being satisfied as required under Clause (ii) refused to stay the suit.'
In Chandra Bhan v. Arjun Das, : AIR1979Cal280 , it was held;
'The powers of the High Court under subsection (1) of Section 107 of the Act where the validity of registration of the trade mark is called in question, are wide enough to direct rectification of the Register by cancellation of the registration of the trade mark or by imposition of such limitation or disclaimer as may appear to the High Court to be appropriate in the circumstances. In dealing with an application under Section 107, the Court has to take into consideration the relevant provisions of law in the background of the evidence already adduced before the Registrar or as may be adduced or available before the Court by affidavit or otherwise. By Section 112 the Registrar has been given the right to appear and be heard in any legal proceeding before the High Court in which the relief sought for includes alteration or rectification of the Register in respect of any trade mark. It is however not essential that he should be made a party to the proceeding and it will be sufficient compliance of the provisions of the Section if he is given the requisite notice and opportunity to appear before the Court and present his case if so advised.'
In Formica International Ltd. v. Caprihans (India) Pvt. Ltd. and Ors., : AIR1966Cal247 , while dealing with the aspect of stay of suit and interlocutory application for stay it was held by the Calcutta High Court as hereunder:
'Section 111 seeks to prevent parallel enquiries in the same matter and as such if the defendant even before the filing of the written statement and before the trial pleads in any petition or affidavit that the registration of the plaintiffs trade mark is invalid he would be entitled to ask for a stay of the suit if the other conditions specified in the section are satisfied. The word 'pleads' is not necessarily confined to averments made in plaints and written statements and can be and is given an extended meaning. The words 'That Court trying the suit' do not mean 'actually trying' that is at the trial itself. The words 'trying Court' cannot be in the context of the purpose the Legislature seeks to enforce in this section, the Court before which the suit is pending, the Court charged with the duty of the trying the action. A suit can, therefore, be stayed on an interlocutory application.'
In C.B. Damblg Trading v. Bharat Sewin Machine Co., Bikanei, AIR 1982 Del. 230, the Delhi High Court held:
'A suit for infringement of trade marks in which the contest between the parties is with regard to validity of registration of each other, can be stayed under Section 111, when rectification proceedings regarding the trademarks are pending. The fact that such proceedings are filed after the institution of the suit, would in view of subsection (2) of Section 111, be immaterial for the purpose of stay.'
In Elofix Industries (India) v. Steel Bird Industries, : AIR1985Delhi258 , while dealing with the aspect of application of stay under Section 111 of the old Act it was held:
'Where in the rectification proceedings, the defendants had raised so many grounds for the rectification of trade mark of plaintiff, which were prima facie good, valid and tenable and the defendants to the knowledge of the plaintiff had adopted the impugned trade mark for more than twenty years, the application for stay of the plaintiffs suit for perpetual injunction restraining defendants from using the impugned trade mark, was held liable to be allowed. In such a case, it could not be said that as the defendant's trade mark was disallowed by the Registrar while disposing of the application of defendants for registration of the trade mark, the defendants cannot be allowed to raise the same objections for the stay of the suit. Registration of a trade mark or its cancellation prima facie is quite a different and distinct aspect than that of the user of the trade mark. The Registrar under no circumstances can deprive the defendants of their right to use the trade mark which they in fact were continuously using for more than 20 years. Moreover, it is settled law that the order of Registrar refusing an application for registration of the offending mark may not affect the issue in an infringement action.'
In Fosroc International Ltd. v. Structural Waterproofing Co. Pvt. Ltd., 0043/1992 : AIR1992Cal300 , where the validity of Trade Mark was not challenged in proceedings pending before Registrar and the Trade Mark was assailed on the ground of non-user for more than five years, it was held that the suit cannot be stayed under Section 111 (a) of the old Act. In Whirlpool Corporation v. Registrar of Trade Marks, Mumbai, : AIR1999SC22 , the Apex Court held at Paras 59, 60 and 61 as hereunder:
'The extent of jurisdiction conferred by Section 56 on the Registrar to rectify the Register, is, however, curtailed by Section 107 which provides that an application for rectification shall, in certain situations, be made only to the High Court. These situations are mentioned in Sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been ' specified, and the plaintiff in reply to this defence questions the validity of the defendant's Trade Mark. In these situations, the validity of the registration of the Trade Marks can be determined only by the High Court and not by the Registrar,
Section 107 thus impels the proceedings to be instituted only in the High Court. The jurisdiction of the Registrar in those cases which are covered by Section 107 is totally excluded. Significantly, Section 107(2) provides that if an application for rectification is made to the Registrar under Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that application, at any stage of the proceeding to the High Court.
Similarly, under Section 111 of the Act, in a pending suit relating to infringement of a Trade Mark, if it is brought to the notice of the Court that any rectification proceedings relating to plaintiffs or defendant's Trade Mark are pending either before the Registrar or the High Court, the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar. Even if such proceedings are not pending either before the Registrar or the High Court, the Trial Court, if prima facie satisfied that the plea regarding invalidity of plaintiff s or defendant's Trade Mark is tenable, may frame an issue and adjourn the case for three months to enable the party concerned to apply to the High Court for rectification of the Register. If within three months, the party concerned does not approach the High Court, the plea regarding invalidity of Trade Mark would be treated as abandoned but if such an application has been given hearing, the suit would be stayed awaiting final decision of the High Court. The finding of the High Court would bind the parties and the issue relating to the invalidity of the Trade Mark would be decided in terms of those findings.'
12. The respondents herein/defendants in the suit and petitioners in I.A. No. 163/ 2003, claim Trade Mark as joint owners by late Moinuddin and his brother Mohammed Ahmed, the father of 2nd defendant. No doubt, the Revision petitioners/plaintiffs are relying on dissolution deed dated 14-11-1969. The 2nd defendant filed O.S. No. 1025/93 on the file of VI Senior Civil Judge, City Civil Court, Hyderabad for partition of properties including the business in Azam Jadi Beedi and its Trade Mark against the Revision petitioners/plaintiffs, their mother and their sisters. Thus, the 2nd respondent in the civil revision petition/2nd defendant is claiming right in the Trade Mark through her father. It is the stand taken by them that the plaintiffs obtained the Certificate of registration by playing fraud upon the Registrar. The mother of the plaintiffs in I.A. No. 2023/93 in O.S. No. 1025/93 filed a counter to the effect that the father of the 2nd defendant had taken away his share in Azam Jadi Beedi and its Trade Mark by virtue of an agreement dated 21-10-1985., alleged to have been executed by him and also affidavit given by him on the same day. Likewise, the 1st plaintiff filed & counter in application I.A. No. 349/2002, filed for appointment of Receiver stating that Mohd. Ahmed sworn to an affidavit on 25-10-1985 after taking his share as per the agreement dated 21-10-1985 and the said affidavit was filed in C.C. No. 117/98. It was further stated that they filed a forged and a fabricated document dated 27-12-1985 before the Registrar and got a Certificate issued in their name and the said affidavit is not mentioned in other proceedings. It was also stated that when Mohd. Ahmed executed the dissolution deed dated 14-11-1969, the question of executing an agreement dated 21-10-1985 would not arise at all since it would amount to taking the share twice and hence all these aspects definitely do point out that these documents are all forged and fabricated documents. The exchange of notices and all other aspects also had been narrated in detail in the affidavit filed in support of the application. Equally a counter-affidavit in detail was filed that the 2nd defendant has nothing to do with Azam Jadi Beedi and she is not at all co-owner as her father ceased to be a partner of the firm. The details relating to the filing of O.S.No. 1025/93 also had been narrated. It was also stated that the said Court cannot decide whether the Certificate filed by them is valid or not and it is to be decided only by the High Court under Section 107 of the old Act and the defendants had not approached the High Court so far and hence they cannot take shelter under Section 111 of the old Act and they had also relied upon the dissolution deed dated 14-11-1969 executed by the father of the 2nd defendant. It was also stated that the said Court has no jurisdiction to decide whether the documents filed before the Registrar are valid documents and the plaintiffs are not aware whether the 2nd defendant approached the Registrar and submitted her applications on 12-3-1999, 25-5-2001 and 19-5-2002. Yet another stand was taken that the 2nd defendant filed Form TM 24 and not TM 26 though it is mandatory under Rule 94 of the Trade and Merchandise Act, 1959 to file Form TM 26 along with concise statement and that too before filing the suit.
13. As can be seen from the material available on record, it is clear that a specific stand was taken by respondents in the civil revision petition, the defendants in the suit, relating to the genuineness of the Certificate and on appreciation of all the facts and circumstances, the learned Judge came to the conclusion that it is a fit matter where an additional issue has to be framed and a direction has to be issued giving three months time to the defendants to approach the High Court for rectification of the Register.
14. As already referred to supra, both the Counsel had advanced arguments on the premise that the Certificate being one granted under the old Act, the provisions of the old Act alone are applicable. In the light of the reasons recorded in detail and also in view of the specific stand taken by the defendants in their respective written statements disputing the genuineness of the Certificate as such and several of the circumstances which had been recorded by the learned Judge, definitely it cannot be said that the learned Judge had not appreciated the facts and circumstances of the case properly and had recorded erroneous findings in any way warranting any interference at the hands of this Court. Hence, it is needless to say that the impugned order does not suffer from any illegality whatsoever and hence the civil revision petition shall stand dismissed, with costs.