IN THE HIGH COURT OF JUDICATURE AT PATNA C.R. No.1474 of 2008 M/S SYNTHICO FORMULATIONS & ANR Versus M/S ALKEM LABORATORIES LTD&ANR ----------- 2 8.9.2008 Heard Counsel for the petitioners. In the opinion of this Court, the impugned order passed by the Court below cannot be said to be an jurisdictional error inasmuch as the prayer made by the petitioner before the Court below was to the following effect:- “------- be pleased not to proceed with the hearing of injunction matter or any matter in the aforesaid suit till the disposal of appeal, bearing case no. OP/248/MUM/2007 pending before the Intellectual Property Appellate Board, Circuit Bench at Mumbai and till then keep the entire proceeding of aforesaid case in abeyance till then.” The Court below in fact having noticed the scheme of the Trade Marks Act, 1999 (hereinafter to be referred to as the ‘the Act’) has correctly proceeded by passing the impugned order that the hearing on the application of temporary injunction filed on behalf of the plaintiff opposite parties, cannot be stayed merely on the ground of filing of the appeal for cancellation of registration before the appellate authority. In the opinion of this Court, the Court below was perfectly justified in 2 doing so as the same is in keeping with the spirit of Section 124(5) of the Act which reads as follows:- “124 (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.” As a matter of fact, Section 135 of the Act further makes it clear that even when there has been a proceeding pending before the authority under the Act, the power of the Court as with regard to injunction will not be taken away and such injunction has to be passed in terms of provisions made under Section 135 of the Act which reads as follows:- “135. Relief in suits for infringement or for passing off. – (1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing lebels and marks for destruction or erasure. (2) The order of injunction under sub-section 3 (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:- (a) for discovery of documents; (b) preserving of infringing goods, documents or other evidence which are related to the subject- matter of the suit; (c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff. (3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than normal damages) or on account of profits in any case- (a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or (b) where in a suit for infringement the defendant satisfies the court- (i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a 4 registered user using by way of permitted use; and (ii) that when he become aware of the existence and nature of the plaintiff’s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or relation to goods or services in respect of which it was registered; or (c) where in a suit for passing off, the defendant satisfies the court- (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiff’s trade mark he forthwith ceased to use the trade mark complained of. ” Mr. J.S. Arora, learned Counsel appearing on behalf of the petitioner, however would contend that the impugned order cannot be sustained for a simple reason that the Court below was required to stay the further proceeding of the suit itself during pendency of the appeal and in this context, he would refer to Section 124(1) of the Act. There would be no difficulty in 5 accepting this submission of Mr. Arora but the question arises what was the prayer before the Court below. Before the Court below, the prayer made by the petitioner was confined to stay of hearing of the injunction matter and the Court below has rightly come to the conclusion that merely on account of filing of an appeal by the petitioner under the Act, the stay of the hearing of injunction petition cannot be allowed. With the aforementioned observations, this civil revision application is hereby dismissed. Rsh (Mihir Kumar Jha, J.)