Patel Field Marshal Agencies And Anr. vs P.M Diesels Ltd. And Ors.

6. The defendants in the suit, i.e., the appellants herein, contested the claims of the plaintiff-respondent on the ground of jurisdiction as well as on merits. In the written statement filed, the 5 appellants-defendants also contested the validity of the registration of the respondent’s trade mark “Field Marshal” and claimed that the same was liable to be rectified in the trade mark register. An issue to the said effect was framed in the suit.

7. The Delhi High Court by its Order dated 28.09.1995 dismissed the Interlocutory Application filed by the plaintiff-respondent for interim injunction on the ground that the High Court did not have jurisdiction, both, pecuniary and territorial, over the subject matter. In appeal, the Division Bench by Order dated 10.03.1998 reversed the decision of the learned single Judge and directed for consideration of the Interlocutory Application for interim injunction on merits. The matter was brought to this 6 Court in Special Leave Petition (C) No.13512 of 1998. During the pendency of the aforesaid S.L.P., in view of the remand order of the Division Bench dated 10.03.1998, a learned single Judge of the High Court granted temporary injunction in favour of the respondent-plaintiff. This was on 07.07.1999. However, by a subsequent Order dated 20.08.2008, the learned single Judge of the High Court held that the court had no jurisdiction and, therefore, ordered for return of the plaint for presentation before the competent court in the State of Gujarat. The said order was challenged by the respondents herein (plaintiffs in the suit) before the Division Bench. The Division Bench by Order dated 24.10.2008 held that in the facts of the case the plaint ought not to have been rejected; however, as the appellant before it 7 (respondent-plaintiff) had no objection to carry on the proceedings in the competent court at Rajkot, Gujarat, the plaint was returned to be filed in Rajkot. Thereafter, the case was transferred from the Delhi High Court to the court at Rajkot and the proceedings came to be numbered as Civil Suit No. 1 of 2009 in the file of the learned Additional District Judge, Rajkot.

(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.

(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 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 27 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.

33. Having dealt with the matter in the above manner, certain subsidiary and incidental questions, urged and argued by the parties, would also need an answer.

37. In the light of the above while answering the question arising in the manner indicated above, we dismiss all the appeals under consideration and affirm the order passed by the High Courts.

(NAVIN SINHA) NEW DELHI NOVEMBER 29, 2017