Caprihans (India) Private Ltd. v. Formica International Ltd. & Ors.

1. This is an application for stay of all proceedings in Suit No. 1283 of 1964, pending the hearing and final disposal of an application to the Registrar of Trade Marks at the Calcutta Office of the Trade Marks Registry. The respondent No. 1 which is the plaintiff in the said suit has instituted the suit against the petitioner and other defendants praying for perpetual injunction restraining the defendants from infringing the plaintiff's registered trade mark consisting of the word “Formica” and from passing off goods which are not the plaintiff's goods as and for the plaintiff's goods and for other reliefs. The petitioner manufactures and sells goods by or under the mark “Sunmica”

2. The plaintiff's mark has been registered in Class 19 in respect of non-metallic laminated material for use in building and construction. The said suit being Suit No. 1283 of 1964 was instituted on the 13th July, 1964. Prior to the institution of the suit the petitioner on the 14th June, 1963, filed in the office of the Trade Mark Registry at Calcutta an application for the rectification of the register of trade marks by the removal of the plaintiff's registered trade mark, and the proceedings therein are still pending. The petitioner has asked for rectification on the ground that the plaintiff's mark was registered in contravention of the provisions of section 11 of the Trade and Merchandise Marks Act, 1958. The petitioner's contention in the said application is that the mark “FORMICA” is a compound of two ordinary English words “For” and “Mica” and conveys the idea that the goods on or in relation to which it is used are a substitute for mica which is a mineral found in nature; the products on or in relation to which the mark is used, neither is nor can be a substitute for mica; the mark, therefore, is likely to deceive or cause confusion or would be contrary to the law of Trade Marks for the time being in force. The petitioner pleads that the registration of the plaintiff's mark is invalid, and under Section 111, sub-section (1) (i) of the Trade and Merchandise Marks Act, 1958, the Suit is liable to be stayed until the final disposal of the petitioner's application for rectification.

3. It is necessary, at the outset, to set out the relevant provisions of section 111 of the Trade and Merchandise Marks Act, 1958.

4. These provisions are as follows:—

“111. Stay of proceedings where the validity of registration of the trade mark is questioned etc.

“(1) Where in any suit for the infringment of a trade mark—

(a) the defendant pleads that the registration of the plaintiff's trade mark is invalid;………… 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 plaintiff's or defendant's trade mark are pending before the Registrar of the High Court stay the suit pending the final disposal of such proceedings;…………………..

Sub-section (4)—The final order made in any rectification proceedings referred to in sub-section (1)…………………. shall be binding upon the parties and the Court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

Sub-section (5)—The stay of a suit for the infringment 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 propery), during the period of the stay of the Suit.”

5. The first contention of Mr. Sankar Banerji, learned counsel for the respondent is that this application is premature. It is urged that only “the Court trying the suit” shall stay the suit pending the final disposal of the proceedings before the Registrar. In other words, a suit cannot be stayed on an interlocutory application under section 111 of the Trade and Merchandise Marks Act, 1958. I am unable to accept this contention. The Section says that where in a suit for hte infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark is invalid; the Court trying the suit shall stay the suit if any proceedings for rectification of the register are pending. Now, Order 6, Rule 1 of the Code of Civil Procedure defines “pleadings”. It means a plaint or written statement; but the word “pleads” has not been defined in this rule. In section 111 unless the word “pleads” means “pleads” in any document the defendant has to wait till his written statement has been filed; discovery and inspection are completed; and the actual trial of the suit begins. The section seeks to prevent parallel enquiries in the same matter and as such in my view the word “pleads” in the Section should be given the meaning which I have suggested. In other words, 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 plaintiff's trade mark is invalid he would be entitled to ask for a stay of the suit provided that the other conditions specified in the Section are satisfied. The dictionary meaning of the word “plead” is “address Court as Advocate or party, maintain (cause) in Court;” allege as plea or excuse, give as answer to charge, make earnest appeal or entreaty”. In Chapter VII, Rule 8 of the Original Side Rules of this Court which deals with verification by a person other than the party pleading it is, inter alia, stated:

“Pleadings shall include plaints, written statements, petitions, statements of facts and counter-statement of facts.”

6. These are only indications that the word “pleads” can be and is given an extended meaning and is not necessarily confined to avernments made in plaints and written statements. Then again, learned counsel for the respondent says that the expression used in the latter part of the Section namely, “the Court trying the suit” means “actually trying” that is at the trial itself. If that was the intention of the legislature it should have said “the trial Court” and “not the trying Court” or “the Court at the trial of the Suit”. The words “trying Court” cannot be, to my mind, 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 trying the action. This view of mine receives indirect support from sub-section (5) of the Section 111 which prescribes that:—

“The stay of a suit for the infringment 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.”

7. The orders contemplated by sub-section (5) are usually made before the trial of an action in interlocutory proceedings. I am also supported by the head-note and the opening words of Section 111. The headnote is: “Stay of proceedings where the validity of registration of the trade mark is questioned, etc. “It does not speak of the suit. The opening words are: “Where in any suit for infringement of a trade-mark” not “to any suit”.

8. In these circumstances I hold that the present application is not premature.

9. The next contention of Mr. Sankar Banerjee is that, Section 111 provides for stay of a “suit for infringement of a trade mark”. The word “for”, learned counsel says, means “limited to” that is to say, that a suit for infringement of trade-mark simpliciter can only be stayed under this Section. The present suit is not a suit merely for infringement of trade-mark but for “passing off” as well. Such a suit which combines an action for infringement with an action for “passing off” cannot be stayed under Section 111.

10. I have already said that, it seems to me that, the reason for the introduction of this section is to avoid parallel enquiries into the question of validity of a trade-mark. Indeed, sub-section (4) of Section 111 lays down that the final order made in a rectification proceeding shall be binding upon the parties and the Court shall dispose of the Suit conformably to such order “in so far as it relates to the issue as to the validity of the registration of the trade-mark.” A plaintiff can always file a mixed action for infringement and “passing off”. Many of the rules and principles relating to an action of infringement, in general apply also to an action for “passing off,” substituting proof of repute for evidence of title by registration (Kerly on Trade Marks, 8th Edition, page 335). A plaintiff sues for infriengement when his title by registration has been affected: he sues for “passing off” when the reputation of his goods has been affected. If a registered trade mark is imitated an action for infringement lies: if a false or decitful representation is made expressly or impliedly an action for “passing off” lies. In one case the cause of action is founded on property in goods which has been infringed: in the other the plaintiff has to prove the reputation of his goods and prove further that that reputation has been assailed. A plaintiff may fail to make out a case of infringement of a trade mark because he cannot prove its registration, or that its registration extends to the goods, or to all of the goods, in question, or because the registration is invalid, and may yet show that by imitating, the mark claimed as a trade mark, or otherwise, the defendant has done what is calculated to “pass off” his goods as those of the plaintiff. A case of “passing off” is generally added as a second string to an action for infringement, and is frequently successful where the claim for infringement fails: (see Kerly on Trade Marks, 8th Edition page 333).

11. From what I have observed above it follows that the causes of action for infringement and “passing off” are distinct and separate and one of them may fail while the other may succeed on the same evidence. In a suit where the two causes of action are combined and the defendant seeks to invoke the provisions of section 111 the Court, in my view, has the power and the duty to stay the suit so far as it relates to infringement of trade mark. The Court trying the Suit must wait for the result of the rectification proceedings before it passes any final order or decree involving the validity of the registration. I realise that the result will be that the suit may have to be tried piece-meal. But having regard to the mandatory provisions of Section 111, I do not see any other alternative. Learned counsel for the petitioner has urged that where a plaintiff with full knowledge of the pending rectification proceedings drafts his plaint in such a manner as to make the issues of infringement and “passing off” inseparable the whole suit ought to be stayed. But the legislature does not give to the Court the power to stay a suit for “passing off”. At the same time the legislature says that when rectification proceedings are pending it is the duty of the Court to stay the suit for infringement in order that conflicting decisions may be eschwed.

12. The legislature says further that the Court must dispose of the suit in conformity with the final order in the rectification proceeding in so far as the suit relates to the validity of the registration. I do not think that learned counsel for the respondent is right in contending that a combined action is outside the purview of Section 111. If that were the case the entire purpose of enacting this Section can be frustrated in every case by combining an action for infringement with an action for “passing off”, and conflicting decisions in the rectification proceedings and in the suit may create problems incapable of being solved. It should be remembered that these proceedings may be pending either before the Registrar or the High Court and my attention has not been drawn to any provision in the statute which provides for a solution of the problem that I have broached. The only course left to the Court which is concerned with the suit is to stay the action for infringement till the rectification proceedings are finally disposed of. That, I am of opinion, was the intention of the legislature, when Section 111 was introduced into the Trade and Merchandise Marks Act, 1958.

13. In the premises there will be an order that pending the hearing and final disposal of application No. C.L 48 to the Registrar of Trade Marks at the Calcutta Office of the Trade Marks Registry, Suit No. 1283 of 1964 (Formica International Limited v. Caprihans (India) Private Limited) and all proceedings therein be stayed so far as the suit relates to the alleged infringement of the plaintiff's trade mark. Cost of this application will be cost in the suit.

C.R.D