Safari Cycles Pvt. Ltd. Vs. R.D. Sharma - Court Judgment

SooperKanoon Citationsooperkanoon.com/695832
SubjectIntellectual Property Rights;Civil
CourtDelhi High Court
Decided OnMay-22-2003
Case NumberIA No. 3847/99 in Suit No. 394/1999
Judge Mahmood Ali Khan, J.
Reported in2003(27)PTC72(Del)
ActsCode of Civil Procedure (CPC) , 1908 - Order 1, Rule 10; Trade and Merchandise Marks Act, 1958 - Sections 111 and 111(5)
AppellantSafari Cycles Pvt. Ltd.
RespondentR.D. Sharma
Appellant Advocate Neeraj Grover, Adv
Respondent Advocate Shellen Bhatia, Adv.
Cases Referred and Forsoc International Ltd. and Anr. v. Structural Waterproofing Co. Pvt. Ltd.
Excerpt:
(i) intellectual property rights - trade mark - sections 111 and 111 (5) of trade and merchandise marks act, 1958 - defendant application under section 111 for stay of proceedings in suit till rectification proceedings in respect of trade mark - section 111 attracted only if rectification proceedings were on ground of invalidity of registered trade mark - suit still in initial stages and issues have not been framed - suit so far as relates to cause of action of infringement shall remain stayed. (ii) impleadment - order 1 rule 10 of code of civil procedure, 1908 - plaintiff application under order 1 rule 10 for impleading 's' as co-plaintiff - person could be imp leaded when he had legal right in subject-matter of suit and his presence is necessary for deciding suit - person cannot be imp leaded simply because he will be affected by final decision - impleading of 's' will not change nature and complexion of suit - impleading of 's' as co-plaintiff does not cause such prejudice to defendant - application allowed. - - (i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trademark are pending before the registrar or the high court 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 plaintiff's or defendant's trademark in 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. (supra) it was observed that the cause of action for infringement and passing of are distinct and separate and one of them may fail while the other may succeed on the same evidence and that where these two causes of action are combined and the defendant seeks to invoke the provisions of section 111, the court has the power and duty to stay the suit so far as it relates to infringement of trademark. it is argued that the rectification of the infringement in the registered trademark was sought on the ground that the plaintiff had not been using the registered trademark continuously since 1985. 11. clause (a) of sub-section (1) of section 111 of the act read with the head note clearly spelt out that the provision will be attracted only in those cases where the rectification proceedings were on the ground of invalidity of the registered trademark. in the alternative counsel for the plaintiff has argued that this suit is filed on the basis of cause of action for the infringement of the registered trademark as well as the cause of action accrued on account of the passing off the defendant's goods as that of the plaintiff and the cause of action for both these are distinct and separate so even if the proceedings relating to the infringement of registered trademark are stayed during the pendency of the appeal the suit may proceed to decide the case on the basis of passing off. ' the plaintiff goods manufactured under the said registered trademark and the label had established a good reputation in the market. there are other pleas like infringement of the copyright labels and also passing off of the defendant's goods as that of the plaintiff. however, in the plaint itself it has been clearly stated that that the plaintiff was initially a sale proprietorship concern of mr.malimood ali khan, j. 1. the defendant has filed this application for stay of the proceedings in the suit till the rectification proceedings no. del 721 in respect of the trademark no. 34820 in clause 12 are finally disposed of as required by section 111 of trade and merchandise marks act, 1958 (for short the act).2. in the application it is alleged that the suit is filed by the plaintiff on the allegation of infringement of its registered trademark no. 34820 in clause 12 which in the name of one subhash gupta who was trading as m/s. safari cycles. subhash gupta is not a party to this suit. the defendant no. 3 m/s. safari international of which the defendant no. 1 and smt. rekha are partners had filed a rectification petition under sections 46 and 56 of the act. this business was constituted in the year 1994-95 and soon thereafter they filed a rectification application against the aforesaid registered trademark on 24.2.1995 before the registrar of trademarks, new delhi which is pending. the rectification is sought, inter alia, on the ground of non user in terms of section 46 of the act. the present suit was filed after the filing of the rectification application and the plaintiff has a distinct and separate legal entity from that of mr. subhash gupta who was the registered proprietor of the said trademark in question.3. the plaintiff contested this application and stated that the rectification proceedings came to the notice of the plaintiff only after the written statement was filed by the defendant. the suit of the plaintiff is bona fide. section 111(1)(b)(i) of the act provided for stay of the suit if there was prior rectification. sub-section (5) of the said section however did not prohibit the grant of interlocutory order, even if the proceedings in the suit are stayed. other allegations were also traversed.4. at the hearing of arguments it was submitted on behalf of the defendant that the rectification application filed by the defendant has since been allowed by the registrar of trademarks and necessary rectification in the register of trade marks has been carried out which has been challenged by the plaintiff before the high court in an appeal which is still pending. accordingly it is submitted that in view of sub-section (1) of section 111 of the act the proceedings in the suit are liable to be stayed till the said appeal is decided. it is canvassed that sub-clause (i) of clause (b) of sub-section (1) of section 111 of the act would apply to the case since rectification application was pending when the instant suit was instituted. support of this argument is sought from the judgments in patel field marshal agencies v, p.m. diesels ltd., 1999 ptc (19) 718. mohd. rafiz mohd. shafiq v. modi sugar mills ltd. modinagar, (1970) 2 delhi 47 and whirlpool corporation v. registrar of trade marks, mumbai and ors., : air1999sc22 .5. the counsel for the plaintiff has not disputed that the application for rectification of the entries in register of trademark has been allowed by the registrar of trademarks and that an appeal against the order of rectification was preferred in the high court which is pending. however, it is argued that section 111 of the act is not attracted in this case because the rectification was sought on the ground of non-user of the registered trademarks since 1985 and not on the ground of it being invalid drawing attention to the head note of section 111 it was submitted that the section required stay of the proceedings in the suit where the validity of the registration of the trademarks was questioned and since there was no dispute about the validity of the registration of trademark in the name of mr. subhash gupta so proceedings in this suit are not liable to be stayed. in the alternative it is submitted that the suit is filed for infringement of the trademark and passing off the defendant's goods as that of the plaintiff and the cause of action is distinct and separate, thereforee, even if the proceedings relating to the infringement of the registered trademark are stayed the suit may proceed to decide on the cause of action of passing off. further argument is that even otherwise sub-section (5) of section 111 has provided that the stay of the suit for the infringement of the trademark shall not preclude the court from making any interlocutory order which included an order granting an injunction directing accounts to be kept appointing a receiver or attaching any property during the pendency of the said suit. he, thereforee, submitted that the interlocutory injunction application filed by the parties could be decided even if the proceedings are stayed. support is sought to the arguments by the judgment of this court in metropol india (p) ltd. v. praveen industries india, 1996 ptc (16) : m/s. mayor brothers v. vijay industries and anr., 1985 ptc 208 : formica international ltd. v. caprihans (india) pvt. ltd. and ors., : air1966cal247 and forsoc international ltd. and anr. v. structural waterproofing co. pvt. ltd., (1) ptc 653 supp (cal).6. before adverting to the facts of the present case it will be of advantage to refer to the provisions of section 111 of the act and the case laws cited at the bar section 111 has provided as under :-7. stay of proceedings where the validity of registration of the trademark is questioned etc :-1) where in any suit for the infringement of a trade mark. a) the defendant pleads that the registration of the plaintiff's trademark is invalid; orb) the defendant raises a defense under clause (d) of sub-section (1) of section 30 and the plaintiff pleads the invalidity of the registration of the defendant's trademark, the court trying the suit (hereinafter referred to as the courts shall. (i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trademark are pending before the registrar or the high court 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 plaintiff's or defendant's trademark in 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 trademark 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 trademark.5) the stay of a suit for the infringement of a trademark 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. 8. the supreme court in whirlpool corporation (supra) has held that if in a suit relating to infringement of trademark it is brought to the notice of the court that rectification proceedings relating to the plaintiffs' or defendants' trademark are pending either before the registrar of trade marks or the high court the proceedings in the suit shall be stayed pending final decision of the high court or the registrar in m/s. mohd. rafiq mohd. shafiq (supra) this court also held that the defendant in an infringement action can obtain stay of the suit only either by having rectification proceedings initiated prior to the institution of the suit under clause (i) or by moving the court in infringement action under clause (ii) and going through the procedure prescribed therein. in patel field marshal agencies (supra) gujarat high court (counsel for the defendant has pointed out that it is a division bench judgment and that it has been wrongly published in the report that it is a single bench judgment held that section 111 envisages that if proceedings for rectification of the register in relation to plaintiffs' or defendant's trademark, as the case may be are pending before the registrar of trade marks or the high court, further proceedings in the suit shall be stayed, until final disposal of rectification proceedings. in forsoc international ltd. and anr. (supra) it was observed that the cause of action for infringement and passing of are distinct and separate and one of them may fail while the other may succeed on the same evidence and that where these two causes of action are combined and the defendant seeks to invoke the provisions of section 111, the court has the power and duty to stay the suit so far as it relates to infringement of trademark.9. in m/s. mayor brothers (supra) this court on the question of stay of proceedings under section 111 of the act observed 'the present suit is not only for infringement of trademark but is also for passing off. section 111 of the act thereforee does not fully cover this case.' in metropol india (p) ltd. (supra) this court observed that in view of sub-section (5) of section 111 of the act the court was not precluded from passing interlocutory orders in the suit during the continuation of the rectification proceedings.10. the contention of the plaintiff, who resisted the application for stay of the proceedings filed by the defendant in view of bar of section 111 of the act is that in the rectification proceedings validity of the registered trademark has not been questioned and that the heading of this section 'stay of proceedings where the validity of registration of the trademark is questioned etc.'. shows that section 111 is not attracted where, the validity of the registration of the trademark of the plaintiff was not in dispute in rectification proceedings. it is argued that the rectification of the infringement in the registered trademark was sought on the ground that the plaintiff had not been using the registered trademark continuously since 1985.11. clause (a) of sub-section (1) of section 111 of the act read with the head note clearly spelt out that the provision will be attracted only in those cases where the rectification proceedings were on the ground of invalidity of the registered trademark. in the instant case it is submitted that the rectification application was filed by the defendants on the ground of non-user of the registered trademark by mr. sub-hash gupta since 1985. the defendant has disputed this contention and has submitted that the rectification of the registered trademark of mr. subhash gupta was sought not only for non-user of the registered trademark since 1985 but its validity was also questioned, thereforee, section 111 is a bar to the proceeding of the suit till the appeal filed by the plaintiff assailing the order of the registrar of trademarks rectifying the entries of the trademarks in the register is decided by this court. in the alternative counsel for the plaintiff has argued that this suit is filed on the basis of cause of action for the infringement of the registered trademark as well as the cause of action accrued on account of the passing off the defendant's goods as that of the plaintiff and the cause of action for both these are distinct and separate so even if the proceedings relating to the infringement of registered trademark are stayed during the pendency of the appeal the suit may proceed to decide the case on the basis of passing off. to be on a safer side i adopt the second course suggested by the counsel for the plaintiff. the appeal is before the high court and it will be proper to desist from making any observation on the question whether the validity of the registered trademark was involved in that proceedings or not. the bar to the proceedings of a suit to which section 111 is attracted is mandatory and not discretionary. but the bar is operative if the rectification proceedings are related to the validity of the registered trademark. thereforee, even if it is assumed at this stage that the validity of the registered trademark is also to be decided in the appeal which is pending before the high court it is not imperative on the part of this court to stay the proceedings of the entire suit. it may proceed on the ground of passing off of the goods by the defendant. it is also clear from sub-section (5) of section 111 of the act and the judgments cited above that even if the suit is stayed under section 111 the court is not precluded from proceeding to decide the interlocutory applications.12. the result of the above discussion is that the suit so far it related to the cause of action on account of infringement of registered trademark shall remain stayed till the appeal filed by the plaintiff against the order of the registrar of trade marks made in rectification proceedings is finally disposed of but the suit shall proceed on the cause of action in respect of passing off in accordance with law. it may also be clarified that the interlocutory application may also be disposed of by virtue of subsection (5) of section 111 of the act. application accordingly stands disposed of.13. is no. 4854/99 (under order 1 rule 10, cpc)14. the plaintiff has filed this application under order 1 rule 10, cpc for impleading mr. subhash gupta as plaintiff no. 2 in the suit.15. the suit was filed by m/s. safari cycles (p) ltd. a company incorporated under the indian companies act against the defendant on the ground that the defendant has infringed its trademark safari registration no. 348290 in clause 12 with effect from 18th december, 1979 and it has been renewed from time to time till 18.4.2000. besides the plaintiff is also owner of copyright registration bearing no. a. 46061/84 in respect of original artistic work titled 'safari cycles label.' the plaintiff goods manufactured under the said registered trademark and the label had established a good reputation in the market. the defendant no. 2 has also started manufacturing bicycles under the trademark safari infringing the plaintiff's trademark and also as passing off its own goods as that of the plaintiffs. hence, the suit for permanent injunction restraining the defendants from infringing trademark. safari of the plaintiff and from manufacturing, selling, advertising etc. goods, bicycles of any type under the trademark safari or any other deceptively similar thereto so as to pass off or enable other to pass off the defendant's goods and/or business as those of the plaintiff, a decree for rendition of accounts of profits illegally earned by the defendants on account of the use of the impugned mark/name and delivery up to the plaintiff for destruction all the goods, packaging, components, dies, stationary, literature and any other material bearing the impugned mark safari etc.16. in the application it is submitted that the trademark safari was originally registered in the name of mr. subhash gupta, who is the managing director of the plaintiff company, and who was trading as safari cycles under the registration trademark no 34890 in clause 12 since 18.4.1979 and the plaintiff and its predecessors in title were continuously using this trademark since 1984 as a trademark and also as a key, essential and dominant part of trademark since 1977. the plaintiff was initially a sole proprietorship concern of mr. subhash gupta who was trading under the style of shagun udyog in 1977. mr. subhash gupta set up another proprietorship concern under the trading style of safari cycles. after that the plaintiff company was constituted on 5.9.1981 in the name of safari cycles pvt. ltd. which took over the business of proprietary concern of m/s. safari cycles in 1985. by virtue of an assignment deed dated 6.2.1999 sh. subhash gupta assigned the trademark to the plaintiff. a request on form tm-23 has been filed in the trademarks registry to bring on record the plaintiff as a subsequent proprietor of the trademark safari which is pending. the defendant has falsely alleged that the assignment in the favor of the plaintiff was invalid as the registration was in favor of subhash gupta. the contention of the defendant in the written statement has been controverter in the replication but in order to avoid unnecessary controversy the plaintiff prays for allowing mr. subhash gupta also to be imp leaded as a co-plaintiff in the matter.17. this application was opposed on behalf of the defendant on the ground that the plaintiff wants to wriggle out of the order of the registrar of trademarks by impleading mr. subhash gupta in the suit. it is further submitted that the suit is filed by a company which has a separate legal entity and impleadment of mr. subhash gupta would change the nature and complexion of the suit.18. the application is filed under order 1 rule 10, cpc which gives power to the court at any stage of the proceeding to add and implead a person who sought to have been joined in the suit or the proceedings but has not been so joined and in whose absence subject-matter of this suit cannot be effectually and completely decided. a person could be imp leaded when he had a legal right in the subject-matter of the suit and his presence is necessary for deciding the suit. he can also be imp leaded where though he does not have any legal right in the subject-matter of the suit but his presence may enable the court in deciding the suit completely. a person however, cannot be imp leaded simply because he will be affected by the final decision in the matter. the present suit has been filed by the plaintiff company on the averment that it holds proprietary right in a registered trademark which is being infringed by the defendants. there are other pleas like infringement of the copyright labels and also passing off of the defendant's goods as that of the plaintiff. however, in the plaint itself it has been clearly stated that that the plaintiff was initially a sale proprietorship concern of mr. subhash gupta under the trading name of shagun udyog and was manufacturing and marketing his bicycles under the trade name safari. in 1977 he set up another proprietorship concern in the name and style of safari cycles which also manufactured and sold bicycles under the same trademark safari. the sole proprietorship concern continued up to 1985. the plaintiff company was incorporated on 5.9.1981 which took over the business of the proprietorship concern of m/s safari cycles in the year 1985 and since then is manufacturing and marketing the bicycles under the trademark safari which is a registered trademark under the trade and merchandise marks act, 1958 bearing registration no. 34890 in clause 12. that it was a case of the plaintiff right from the beginning that mr. subhash gupta was the sole proprietor of the registered trademark, safari and that he was manufacturing and marketing the bicycles under this registered trademark till 1985 and thereafter the same were manufactured and sold by the present plaintiff which was incorporated by mr. subhash gupta in which he and his wife had a majority shares. it is convassed by plaintiffs counsel that in a way it is a glorified partnership. it is also stated that mr. subhash gupta is the managing director of the plaintiff company and the present suit has also been filed by him.19. the question is whether mr. subhasn gupta is a necessary party to the proceedings as a plaintiff. it is clear that the plaintiff has already pleaded that mr. sub-hash gupta was the proprietor of the registered trademark and after the plaintiff company was incorporated it continued to manufacture and market the bicycles under the same trademark. the suit is also filed by mr. subhash gupta, who is managing director of the plaintiff. thereforee, impleading of mr. subhash gupta although the present plaintiff has a legal entity separate from mr. subhash gupta as a plaintiff in this suit yet it will not change the nature and complexion of the suit. rather it would avoid multiplicity of the proceedings and one of the reasons for joining him as a party to the suit may be to avoid such a situation. the joining of mr. subhash gupta as co-plaintiff would also not cause such prejudice to the defendant as could not be compensated by cost.20. the suit is still in the initial stages. even the issues have not been framed in this case. the contention of the defendant that impleadment of mr. gupta at this stage would frustrate the order of the registrar of trademarks or his observation on it i think should not be the ground for rejecting the prayer of the plaintiff which otherwise could be allowed in view of rule 10 of order 1 of the cpc. accordingly, the application is allowed mr. subhash gupta is allowed to be imp leaded as plaintiff no. 2 in the suit subject to the payment of rs. 2000 as cost to the defendant. the amended plaint and memo of parties shall be filed within four weeks. written statement corresponding thereto shall be filed within four weeks thereafter.21. application stands disposed of.22. renotify for hearing on the remaining pending application on 29.7.2003.
Judgment:

Malimood Ali Khan, J.

1. The defendant has filed this application for stay of the proceedings in the suit till the rectification proceedings No. DEL 721 in respect of the trademark No. 34820 in clause 12 are finally disposed of as required by Section 111 of Trade and Merchandise Marks Act, 1958 (for short the Act).

2. In the application it is alleged that the suit is filed by the plaintiff on the allegation of infringement of its registered trademark No. 34820 in clause 12 which in the name of one Subhash Gupta who was trading as M/s. Safari Cycles. Subhash Gupta is not a party to this suit. The defendant No. 3 M/s. Safari International of which the defendant No. 1 and Smt. Rekha are partners had filed a rectification petition under Sections 46 and 56 of the Act. This business was constituted in the year 1994-95 and soon thereafter they filed a rectification application against the aforesaid registered trademark on 24.2.1995 before the Registrar of Trademarks, New Delhi which is pending. The rectification is sought, inter alia, on the ground of non user in terms of Section 46 of the Act. The present suit was filed after the filing of the rectification application and the plaintiff has a distinct and separate legal entity from that of Mr. Subhash Gupta who was the registered proprietor of the said trademark in question.

3. The plaintiff contested this application and stated that the rectification proceedings came to the notice of the plaintiff only after the written statement was filed by the defendant. The suit of the plaintiff is bona fide. Section 111(1)(b)(i) of the Act provided for stay of the suit if there was prior rectification. Sub-section (5) of the said section however did not prohibit the grant of interlocutory order, even if the proceedings in the suit are stayed. Other allegations were also traversed.

4. At the hearing of arguments it was submitted on behalf of the defendant that the rectification application filed by the defendant has since been allowed by the Registrar of Trademarks and necessary rectification in the register of trade marks has been carried out which has been challenged by the plaintiff before the High Court in an appeal which is still pending. Accordingly it is submitted that in view of Sub-section (1) of Section 111 of the Act the proceedings in the suit are liable to be stayed till the said appeal is decided. It is canvassed that Sub-Clause (i) of Clause (b) of Sub-section (1) of Section 111 of the Act would apply to the case since rectification application was pending when the instant suit was instituted. Support of this argument is sought from the judgments in Patel Field Marshal Agencies v, P.M. Diesels Ltd., 1999 PTC (19) 718. Mohd. Rafiz Mohd. Shafiq v. Modi Sugar Mills Ltd. Modinagar, (1970) 2 Delhi 47 and Whirlpool Corporation v. Registrar of Trade Marks, Mumbai and Ors., : AIR1999SC22 .

5. The counsel for the plaintiff has not disputed that the application for rectification of the entries in register of trademark has been allowed by the Registrar of Trademarks and that an appeal against the order of rectification was preferred in the High Court which is pending. However, it is argued that Section 111 of the Act is not attracted in this case because the rectification was sought on the ground of non-user of the registered trademarks since 1985 and not on the ground of it being invalid Drawing attention to the head note of Section 111 it was submitted that the section required stay of the proceedings in the suit where the validity of the registration of the trademarks was questioned and since there was no dispute about the validity of the registration of trademark in the name of Mr. Subhash Gupta so proceedings in this suit are not liable to be stayed. In the alternative it is submitted that the suit is filed for infringement of the trademark and passing off the defendant's goods as that of the plaintiff and the cause of action is distinct and separate, thereforee, even if the proceedings relating to the infringement of the registered trademark are stayed the suit may proceed to decide on the cause of action of passing off. Further argument is that even otherwise Sub-section (5) of Section 111 has provided that the stay of the suit for the infringement of the trademark shall not preclude the court from making any interlocutory order which included an order granting an injunction directing accounts to be kept appointing a receiver or attaching any property during the pendency of the said suit. He, thereforee, submitted that the interlocutory injunction application filed by the parties could be decided even if the proceedings are stayed. Support is sought to the arguments by the judgment of this Court in Metropol India (P) Ltd. v. Praveen Industries India, 1996 PTC (16) : M/s. Mayor Brothers v. Vijay Industries and Anr., 1985 PTC 208 : Formica International Ltd. v. Caprihans (India) Pvt. Ltd. and Ors., : AIR1966Cal247 and Forsoc International Ltd. and Anr. v. Structural Waterproofing Co. Pvt. Ltd., (1) PTC 653 Supp (Cal).

6. Before adverting to the facts of the present case it will be of advantage to refer to the provisions of Section 111 of the Act and the case laws cited at the bar Section 111 has provided as under :-

7. Stay of proceedings where the validity of registration of the trademark is questioned etc :-

1) Where in any suit for the infringement of a trade mark.

a) the defendant pleads that the registration of the plaintiff's trademark is invalid; or

b) the defendant raises a defense under Clause (d) of Sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendant's trademark, the court trying the suit (hereinafter referred to as the courts shall.

(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trademark are pending before the Registrar or the High Court 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 plaintiff's or defendant's trademark in 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 trademark 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 trademark.

5) the stay of a suit for the infringement of a trademark 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. 8. The Supreme Court in Whirlpool Corporation (Supra) has held that if in a suit relating to infringement of trademark it is brought to the notice of the court that rectification proceedings relating to the plaintiffs' or defendants' trademark are pending either before the Registrar of Trade Marks or the High Court the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar in M/s. Mohd. Rafiq Mohd. Shafiq (Supra) this Court also held that the defendant in an infringement action can obtain stay of the suit only either by having rectification proceedings initiated prior to the institution of the suit under Clause (i) or by moving the court in infringement action under Clause (ii) and going through the procedure prescribed therein. In Patel Field Marshal Agencies (Supra) Gujarat High Court (Counsel for the defendant has pointed out that it is a Division Bench judgment and that it has been wrongly published in the report that it is a single Bench judgment held that Section 111 envisages that if proceedings for rectification of the register in relation to plaintiffs' or defendant's trademark, as the case may be are pending before the Registrar of Trade Marks or the High Court, further proceedings in the suit shall be stayed, until final disposal of rectification proceedings. In Forsoc International Ltd. and Anr. (Supra) it was observed that the cause of action for infringement and passing of are distinct and separate and one of them may fail while the other may succeed on the same evidence and that where these two causes of action are combined and the defendant seeks to invoke the provisions of Section 111, the court has the power and duty to stay the suit so far as it relates to infringement of trademark.

9. In M/s. Mayor Brothers (Supra) this Court on the question of stay of proceedings under Section 111 of the Act observed 'the present suit is not only for infringement of trademark but is also for passing off. Section 111 of the Act thereforee does not fully cover this case.' In Metropol India (P) Ltd. (Supra) this Court observed that in view of Sub-section (5) of Section 111 of the Act the court was not precluded from passing interlocutory orders in the suit during the continuation of the rectification proceedings.

10. The contention of the plaintiff, who resisted the application for stay of the proceedings filed by the defendant in view of bar of Section 111 of the Act is that in the rectification proceedings validity of the registered trademark has not been questioned and that the heading of this section 'Stay of proceedings where the validity of registration of the trademark is questioned etc.'. shows that Section 111 is not attracted where, the validity of the registration of the trademark of the plaintiff was not in dispute in rectification proceedings. It is argued that the rectification of the infringement in the registered trademark was sought on the ground that the plaintiff had not been using the registered trademark continuously since 1985.

11. Clause (a) of Sub-section (1) of Section 111 of the Act read with the head note clearly spelt out that the provision will be attracted only in those cases where the rectification proceedings were on the ground of invalidity of the registered trademark. In the instant case it is submitted that the rectification application was filed by the defendants on the ground of non-user of the registered trademark by Mr. Sub-hash Gupta since 1985. The defendant has disputed this contention and has submitted that the rectification of the registered trademark of Mr. Subhash Gupta was sought not only for non-user of the registered trademark since 1985 but its validity was also questioned, thereforee, Section 111 is a bar to the proceeding of the suit till the appeal filed by the plaintiff assailing the order of the Registrar of trademarks rectifying the entries of the trademarks in the register is decided by this Court. In the alternative counsel for the plaintiff has argued that this suit is filed on the basis of cause of action for the infringement of the registered trademark as well as the cause of action accrued on account of the passing off the defendant's goods as that of the plaintiff and the cause of action for both these are distinct and separate so even if the proceedings relating to the infringement of registered trademark are stayed during the pendency of the appeal the suit may proceed to decide the case on the basis of passing off. To be on a safer side I adopt the second course suggested by the counsel for the plaintiff. The appeal is before the High Court and it will be proper to desist from making any observation on the question whether the validity of the registered trademark was involved in that proceedings or not. The bar to the proceedings of a suit to which Section 111 is attracted is mandatory and not discretionary. But the bar is operative if the rectification proceedings are related to the validity of the registered trademark. thereforee, even if it is assumed at this stage that the validity of the registered trademark is also to be decided in the appeal which is pending before the High Court it is not imperative on the part of this Court to stay the proceedings of the entire suit. It may proceed on the ground of passing off of the goods by the defendant. It is also clear from Sub-section (5) of Section 111 of the Act and the judgments cited above that even if the suit is stayed under Section 111 the court is not precluded from proceeding to decide the interlocutory applications.

12. The result of the above discussion is that the suit so far it related to the cause of action on account of infringement of registered trademark shall remain stayed till the appeal filed by the plaintiff against the order of the Registrar of Trade Marks made in rectification proceedings is finally disposed of but the suit shall proceed on the cause of action in respect of passing off in accordance with law. It may also be clarified that the interlocutory application may also be disposed of by virtue of subsection (5) of Section 111 of the Act. Application accordingly stands disposed of.

13. is No. 4854/99 (under Order 1 Rule 10, CPC)

14. The plaintiff has filed this application under Order 1 Rule 10, CPC for impleading Mr. Subhash Gupta as plaintiff No. 2 in the suit.

15. The suit was filed by M/s. Safari Cycles (P) Ltd. a company incorporated under the Indian Companies Act against the defendant on the ground that the defendant has infringed its trademark Safari registration No. 348290 in Clause 12 with effect from 18th December, 1979 and it has been renewed from time to time till 18.4.2000. Besides the plaintiff is also owner of Copyright registration bearing No. A. 46061/84 in respect of original artistic work titled 'Safari Cycles Label.' The plaintiff goods manufactured under the said registered trademark and the label had established a good reputation in the market. The defendant No. 2 has also started manufacturing bicycles under the trademark Safari infringing the plaintiff's trademark and also as passing off its own goods as that of the plaintiffs. Hence, the suit for permanent injunction restraining the defendants from infringing trademark. Safari of the plaintiff and from manufacturing, selling, advertising etc. goods, bicycles of any type under the trademark Safari or any other deceptively similar thereto so as to pass off or enable other to pass off the defendant's goods and/or business as those of the plaintiff, a decree for rendition of accounts of profits illegally earned by the defendants on account of the use of the impugned mark/name and delivery up to the plaintiff for destruction all the goods, packaging, components, dies, stationary, literature and any other material bearing the impugned mark Safari etc.

16. In the application it is submitted that the trademark Safari was originally registered in the name of Mr. Subhash Gupta, who is the Managing Director of the plaintiff company, and who was trading as Safari Cycles under the registration trademark No 34890 in Clause 12 since 18.4.1979 and the plaintiff and its predecessors in title were continuously using this trademark since 1984 as a trademark and also as a Key, essential and dominant part of trademark since 1977. The plaintiff was initially a sole proprietorship concern of Mr. Subhash Gupta who was trading under the style of Shagun Udyog in 1977. Mr. Subhash Gupta set up another proprietorship concern under the trading style of Safari Cycles. After that the plaintiff company was constituted on 5.9.1981 in the name of Safari Cycles Pvt. Ltd. which took over the business of proprietary concern of M/s. Safari Cycles in 1985. By virtue of an assignment deed dated 6.2.1999 Sh. Subhash Gupta assigned the trademark to the plaintiff. A request on form TM-23 has been filed in the trademarks Registry to bring on record the plaintiff as a subsequent proprietor of the trademark Safari which is pending. The defendant has falsely alleged that the assignment in the favor of the plaintiff was invalid as the registration was in favor of Subhash Gupta. The contention of the defendant in the written statement has been controverter in the replication but in order to avoid unnecessary controversy the plaintiff prays for allowing Mr. Subhash Gupta also to be imp leaded as a co-plaintiff in the matter.

17. This application was opposed on behalf of the defendant on the ground that the plaintiff wants to wriggle out of the order of the Registrar of Trademarks by impleading Mr. Subhash Gupta in the suit. It is further submitted that the suit is filed by a company which has a separate legal entity and impleadment of Mr. Subhash Gupta would change the nature and complexion of the suit.

18. The application is filed under Order 1 Rule 10, CPC which gives power to the court at any stage of the proceeding to add and implead a person who sought to have been joined in the suit or the proceedings but has not been so joined and in whose absence subject-matter of this suit cannot be effectually and completely decided. A person could be imp leaded when he had a legal right in the subject-matter of the suit and his presence is necessary for deciding the suit. He can also be imp leaded where though he does not have any legal right in the subject-matter of the suit but his presence may enable the court in deciding the suit completely. A person however, cannot be imp leaded simply because he will be affected by the final decision in the matter. The present suit has been filed by the plaintiff company on the averment that it holds proprietary right in a registered trademark which is being infringed by the defendants. There are other pleas like infringement of the copyright labels and also passing off of the defendant's goods as that of the plaintiff. However, in the plaint itself it has been clearly stated that that the plaintiff was initially a sale proprietorship concern of Mr. Subhash Gupta under the trading name of Shagun Udyog and was manufacturing and marketing his bicycles under the trade name Safari. In 1977 he set up another proprietorship concern in the name and style of Safari Cycles which also manufactured and sold bicycles under the same trademark Safari. The sole proprietorship concern continued up to 1985. The plaintiff company was incorporated on 5.9.1981 which took over the business of the proprietorship concern of M/s Safari Cycles in the year 1985 and since then is manufacturing and marketing the bicycles under the trademark Safari which is a registered trademark under the Trade and Merchandise Marks Act, 1958 bearing registration No. 34890 in clause 12. That it was a case of the plaintiff right from the beginning that Mr. Subhash Gupta was the sole proprietor of the registered trademark, Safari and that he was manufacturing and marketing the bicycles under this registered trademark till 1985 and thereafter the same were manufactured and sold by the present plaintiff which was incorporated by Mr. Subhash Gupta in which he and his wife had a majority shares. It is convassed by plaintiffs counsel that in a way it is a glorified partnership. It is also stated that Mr. Subhash Gupta is the Managing Director of the plaintiff company and the present suit has also been filed by him.

19. The question is whether Mr. Subhasn Gupta is a necessary party to the proceedings as a plaintiff. It is clear that the plaintiff has already pleaded that Mr. Sub-hash Gupta was the proprietor of the registered trademark and after the plaintiff company was incorporated it continued to manufacture and market the bicycles under the same trademark. The suit is also filed by Mr. Subhash Gupta, who is Managing Director of the plaintiff. thereforee, impleading of Mr. Subhash Gupta although the present plaintiff has a legal entity separate from Mr. Subhash Gupta as a plaintiff in this suit yet it will not change the nature and complexion of the suit. Rather it would avoid multiplicity of the proceedings and one of the reasons for joining him as a party to the suit may be to avoid such a situation. The joining of Mr. Subhash Gupta as co-plaintiff would also not cause such prejudice to the defendant as could not be compensated by cost.

20. The suit is still in the initial stages. Even the issues have not been framed in this case. The contention of the defendant that impleadment of Mr. Gupta at this stage would frustrate the order of the Registrar of Trademarks or his observation on it I think should not be the ground for rejecting the prayer of the plaintiff which otherwise could be allowed in view of Rule 10 of Order 1 of the CPC. Accordingly, the application is allowed Mr. Subhash Gupta is allowed to be imp leaded as plaintiff No. 2 in the suit subject to the payment of Rs. 2000 as cost to the defendant. The amended plaint and memo of parties shall be filed within four weeks. Written statement corresponding thereto shall be filed within four weeks thereafter.

21. Application stands disposed of.

22. Renotify for hearing on the remaining pending application on 29.7.2003.