LAKHA RAM SHARMAversusBALAR MARKETING PRIVATE LIMITED & ORS.

                    [2013) 12 S.C.R. 735


                   LAKHA RAM SHARMA                               A
                            v.
     BALAR MARKETING PRIVATE LIMITED & ORS.
        (Civil Appeal Nos. 10679-10680 of 2013)

                   NOVEMBER 27, 2013
                                                                  B
     [K.S. RADHAKRISHNAN AND A.K. SIKRI, JJ.]

      Trade and Merchandise Marks Act, 1958 - ss. 46 and
56 - Trade mark registered in favour of respondent no. 1 -
Application of appellant for rectification of the registered Trade C
Mark - Dismissal of - On the ground of delay - Held: On
facts, not justified - It prejudiced the rights of the appellant to
have the case adjudicated on merits - Appellant was pursuing
its remedy with due diligence, without brooking any delay -
There was not even a slightest delay on his part in challenging D
the validity of the trade mark obtained by Respondent No. 1
- It is a different matter that the application was returned by
the Delhi High Court for want of territorial jurisdiction -
However, the moment it was so returned by the Registrar of
the Delhi High Court, the appellant presented the same before E
the Appellate Board (IPAB) on the same day - Having regard
to all the facts, one fails to understand as to how IPAB could
dismiss the rectification on the ground that it was filed after a
delay of 10 years - Appellant had pursued his remedy in a
bonafide manner and if it was filed in a wrong court and if he F
pursued his remedy wrongly by filing it in Delhi High Court,
instead of Madras High Court, principles enshrined in s.14
of the Limitation Act clearly get attracted - Matter remitted
back to IPAB to decide the Rectification application on merits
- Limitation Act, 1963 - s. 14.
                                                                    G
    The appellant filed suit for injunction against
respondent no.1 for using his trademark. During
pendency of the suit, Respondent No.1 obtained
registration of the said trade mark in its favour. The
                              735                                  H
    736      SUPREME COURT REPORTS          [2013] 12 S.C.R.


A appellant filed application under Sections 46 and 56 of
  the Trade and Merchandise Marks Act in the High Court
  of Delhi for rectification of the registered Trade Mark.
  Respondent no.1 objected to the territorial jurisdiction of
  the Delhi High Court to entertain the application. The
B objection was upheld by the Delhi High Court. The
  application filed in Delhi High Court was, thus, directed
  to be returned for presentation before the appropriate
  Court. Meanwhile, the Intellectual Property Appellate
  Board ('IPAB') came to be constituted which was given
c exclusive jurisdiction to deal with such applications. The
  Registrar of Delhi High Court returned the Rectification
  application to the appellant, whereupon he presented the
  same before the IPAB. The IPAB dismissed the
  Rectification application on the ground that it was filed
  after a lapse of about 10 years from the date when
0
  registration was obtained by Respondent No.1, and
  therefore was belated. The order was affirmed by the
  High Court, and therefore the instant appeals.

          Allowing the appeals, the Court
E
       HELD: 1. The line of action taken by the IPAB as well
  as the High Court in dismissing the Rectification Petition
  filed by the appellant on the ground of delay is wholly
  erroneous, and it has prejudiced the rights of the
F appellant to have the case adjudicated on merits. [Para
  10] [740-H; 741-A]

       2. It is manifest that the appellant has been pursuing
  its remedy with due diligence, without brooking any
  delay. The appellant claims that he has been using the
G trade mark KUNDAN/ KUNDAN CAB and the name
  Kundan Cables India since 1980. In fact he was the
  supplier of these goods to Respondent No. 2. When the
  appellant came to know that Respondent No. 1 was
  using the trade mark Kundan, he immediately filed the suit
H for injunction against Respondent No. 1 in the District
    LAKHA RAM SHARMA v. BALAR MARKETING                   737
               PRIVATE LIMITED
Court of Delhi which shows that in all earnestness, it           A
wanted to protect his interest in the said trade mark. [Para
11] [741-8-D]

     3. During the pendency of this suit Respondent No.
1 had obtained registration of trade mark 'KUNDAN' in its
                                                                 8
favour. This happened in the year 1995. The appellant
prompltly filed the petition under Section 45 and 46 of the
Trade and Merchandise Marks Act for rectification of the
said registered trade mark and for cancelling/ expunging
the same. This petition was filed on 2.5.1995. Therefore         C
as far as the appellant is concerned, there was not even
a slightest delay in challenging the validity of the trade
mark obtained by Respondent No. 1. It is a different
matter that this petition was returned for want of territorial
jurisdiction. However, the moment this petition was
returned by the Registrar i.e. on 2.11.2004, it was              D
presented before the IPAB on the same day. Having
regard to all these facts one fails to understand as to how
the Appellate Board could dismiss the petition on the
ground that it was filed after a delay of 10 years. The
appellant had pursued his remedy in a bonafide manner            E
and if it was filed in a wrong court and if he has pursued
his remedy wrongly by filing it in Delhi High Court, instead
of Madras High Court, principles enshrined in Section 14
of the Limitation Act clearly get attracted. The impugned
order of the IPAB as well as High Court are liable to be         F
set aside. The matter is remitted back to IPAB to decide
the Rectification Petition on merits. [Paras 12, 13] [741-
D-H; 742-A-B]

    CIVIL APPELLATE JURISDICTION : Civil Appeal Nos.             G
10679-10680 of 2013.

     From the Judgment and Order dated 29.06.2012 of the
High Court of Judicature at Madras, in Writ Petition No. 16070
of 2012 and MP.No. 1 of 2012.
                                                                 H
    738      SUPREME COURT REPORTS                 [2013) 12 S.C.R.

A       Rajeev Sharma, Sahil Bhalaik, Uddyam Mukherjee,
    Kundan Sharma for the Appellant.

         S. Janani, S. K. Bansal, Sunando Raha, Deepak Goel for
    the Respondents.
B         The Judgment of the Court was delivered by

          A.K. "SIKRI, J. 1. Leave Granted.

         2. Before adverting to the core issue it would be apposite
c   to note down the genesis of the dispute.

       3. The appellant herein is the proprietor of a concern by
  the name of Kundan Cables which is engaged in the
  manufacture of electric accessories and fittings including
  electrical switches, main switches, fuse units, wires and cables
D and electrical irons. Since 1980 the petitioner has been using
  the trademark Kundan/ Kundan Cab and the trade name
  Kundan Cables India in respect of the said goods. The
  appellant has also been supplying the said goods under the
  aforesaid trade marks and names to Respondent No. 1.
E
       4. Sometime in the year 1994, the appellant came to know
  that Respondent No. 1 was using the Trade Mark 'KUNDAN'.
  The appellant immediately filed a suit for injunction in the District
  Court at Delhi which was registered as Suit No. 102 of 1994.
F During the pendency of the said suit, Respondent No. 1
  obtained registration of the said Trade Mark in its favour. The
  registration was obtained by Respondent No. 1 by virtue of an
  assignment deed executed by Respondent No. 2 in respect of
  a pending application for registration. This prompted the
G appellant to file an application under Sections 46 and 56 of the
  Trade and Merchandise Marks Act in the High Court of Delhi
  for rectification of the registered Trade Mark No. 507445 in
  class 9 and for cancelling/ expunging the same. It was filed on
  2.5.1995. In the said proceedings an objection was raised by
H
    LAKHA RAM SHARMA v. BALAR MARKETING                         739
         PRIVATE LIMITED [A.K. SIKRI, J.]
Respondent No. 1 as to the territorial jurisdiction of the Delhi        A
High Court to entertain the said ptttition.

     5. Vide orders dated 10.10.2001, a single Judge of the
Delhi High Court upheld the objection regarding territorial
jurisdiction and directed that the petition be returned for             B
presentation before the appropriate Court. This order was
upheld by the Division Bench. A Special Leave Petition against
the order of the Division Bench being Special Leave Petition
(Civil) No. 16800 of 2002 was also dismissed vide order dated
20.9.2002.
                                                                        c
      6. As per the aforesaid orders of the High. Court, which was
upheld by this Court also, the appellant was supposed to file
the petition for rectification of the registered trade mark before
the appropriate Court, as Delhi High Court did not have the
territorial jurisdiction to adjudicate the matter. The petition filed   D
in Delhi High Court was, thus, directed to be returned for
presentation before the appropriate Court. However, before the
application for rectification could be returned by the Registry
of Delhi High Court, the Intellectual Property Appellate Board
(hereinafter to be referred as 'IPAB') was constituted on               E
15.9.2003. On the establishment of this IPAB, such rectification
applications are now to be entertained by the IPAB which has
the exclusive jurisdiction to deal with such applications. The
Registrar of Delhi High Court passed the orders dated
29.10.2004 directing return of the Rectification Petition to the        F
Counsel for the appellant and it was finally returned on
2.11.2004. On same date, the appellant presented the petition
before the IPAB.

    7. Notice was issued by the IPAB to the Respondent Nos. G
1 & 2 who filed their replies. The Respondent No. 1 filed a
miscellaneous petition, being M.P. No. 31 of 2005 ori the
ground that the Rectification Petition could not have been filed
as a continuity of the earlier proceedings before the Delhi High
Court. For uncertain reasons, the matter dragged on before the H
    740      SUPREME COURT REPORTS               [2013) 12 S.C.R.


A IPAB for quite sometime and ultimately vide orders dated
  9.3.2012 the IPAB dismissed the Rectification Petition on the
  ground that it was filed after a lapse of about 10 years from
  the date when registration was obtained by Respondent No.
  1. The IPAB took the view that Rectification Petition was
B wrongly filed in the Delhi High Court as jurisdiction vested in
  the Madras High Court. Therefore, presentation of the petition
  before the IPAB on 2.11.2004 was taken as the date of filing
  the petition wherein rectification order was challenged. Since
  the registration was granted in the year 1995. on this basis the
c IPAB took the view that Rectification Petition was filed after a
  period of almost 10 years from the date of registration and
  therefore it was belated.

        8. Aggrieved by the order of the IPAB dismissing the
D petition, the appellant filed Writ Petition before the High Court
  which has also been dismissed, as the view taken by the IPAB
  has found favour with the High Court.

        9. A perusal of the order of the IPAB would disclose that
  as per the Appellate Board though there is a delay of 10 years,
E no reason has been assigned by the appellant for the said
  delay and the Rectification Petition was not presented within
  time before the Madras High Court. In the Writ Petition
  challenging this order the appellant had submitted that the
  appellant had pursued its remedy by filing the petition before
F the Delhi High Court on 2.5.1995 itself that is immediately after
  the grant of registration of the trade mark Kundan in favour of
  Respondent No. 1. However, this argument is brushed aside
  by the High Court with the remarks that the petition was filed
  before a Court viz. the High Court of Delhi which did not have
G territorial jurisdiction and therefore the appellant cannot take
  advantage of filing such a peititon before the Court which
  lacked the requisite jurisdiction.

      10. We are of the view that the aforesaid line of action
H taken by the IPAB as well as the High Court in dismissing the
    LAKHA RAM SHARMA v. BALAR MARKETING                    741
         PRIVATE LIMITED (A.K. SIKRI, J.)
Rectification Petition filed by the appellant on the ground of     A
delay is wholly erroneous, and it has prejudiced the rights of
the appellant to have the case adjudicated on merits.

     11. From the events disclosed above, it is manifest that
the appellant has been pursuing its remedy with due diligence,     B
without brooking any delay. The appellant claims that he has
been using the trade mark KUNDAN/ KUNDAN CAB and the
name Kundan Cables India since 1980. In fact he was the
supplier of these goods to Respondent No. 2. When the
appeilant came to know that Respondent No. 1 was using the         c
trade mark Kundan, he immediately filed the suit for injunction
against Respondent No. 1 in the District Court of Delhi which
shows that in all earnestness, it wanted to protect his interest
in the said trade mark.

      12. During the pendency of this suit Respondent No, 1 had D
obtained registration of trade mark 'KUN DAN' in its favour. This
happened in the year 1995. The appellant prompltly filed the
petition under Section 45 and 46 of the Trade and Merchandise
Marks Act for rectification of the said registered trade mark and
for cancelling/ expunging the same. This petition was filed on E
2.5.1995. Therefore as far as the appellant is concerned, there
was not even a slightest delay in challenging the validity of the
trade mark obtained by Respondent No. 1. It is a different matter
that this petition was returned for want of territorial jurisdiction.
However, the moment this petition was returned by the Registrar F
i.e. on 2.11.2004, it was presented before the IPAB on the
same day. Having regard to all these facts we fail to understand
as to how the Appellate Board could dismiss the petition on
the ground that it was filed after a delay of 10 years. The
appellant had pursued his remedy in a bonafide manner and if G
 it was filed in a wrong court and if he has pursued his remedy
 wrongly by filing it in Delhi High Court, instead of Madras High
 Court, principles enshrined in Section 14 of the Limitations Act
 clearly get attracted.
                                                                   H
    742      SUPREME COURT REPORTS              (2013] 12 S.C.R.

A         13. We are, therefore, of the opinion that impugned order
    of the IPAB as well as High Court are liable to be set aside.
    These appeals are accordingly allowed. As a consequence the
    matter is remitted back to IPAB to decide the Rectification
    Petition on merits.
B
          14. No costs.

    B.B.B.                                      Appeals allowed.