JUDGMENT
D.K. Kapur, J.
1. This is an application for stay of the suit under Sec. 111 of the Trade and Merchandise Marks Act, 1958. That Section provides that if there is an application for rectification pending before the Registrar of Trade Marks then the suit will be stayed pending the final disposal of the rectification proceedings. There is no doubt that an application is before the Registrar and, therefore, this suit has to be stayed. However, Section 111 of the Act only applies to suits for infringement of a trade mark but the present suit also contains a plea of claim based on passing off. The claim for passing off is not based on the statutory remedy and, therefore, is not hit by Sec. 111 of the Act. The learned counsel for the plaintiff submits that even if the suit is stayed it should only be stayed qua infringement but should go on qua passing off. I fail to understand how the suit can be stayed and can also proceed. Either a suit can be stayed or has not to be stayed: The learned counsel for the plaintiff has referred to Formica International Ltd. v. Caprihans (India) Pvt. Ltd. and others, A.I.R. 1966 Calcutta 247, in which it was held that the suit should by stayed only qua infringement. I find the problem faced by the court there was that a suit based on two separate causes of action such as infringement and passing off was claimed not to fall within Sec. 111 of the Act and the court held that the suit could not be divided by adding a separate cause of section to be claim for infringement of trade mark. In any event, I am not able to hold that the suit can remain stayed as well as proceed. The proper course of action in the present suit is to pass an order under Order 2 Rule 6 of the Code of Civil Procedure which is in the following terms:
Where it appears to the court that the joinder of cause of action in one suit may embarrass or delay the trial or is otherwise inconvenient, the Court may order separate trials or make such other order as may be expedient in the interests of Justice.
This provision is in the Code only from 1-2-1977 and was obviously introduced just to meet the present situation. It is obvious that there are two causes of action in the present suit and one of them has got to be stayed and if the whole suit is stayed then the other also gets stayed and so obviously the trial is embarrassing or inconvenient because if the suit goes on qua the said issue naturally the statutory stay under sec. 111 will be defeated. Therefore, it is neither easy to stay the whole suit nor easy to proceed with the suit. It is in this situation that two trial should be ordered. The Learned counsel for the plaintiff states that he is not anxious to have two separate trials. I accordingly hold that it is better to stay the whole suit as the rectification proceedings may come to an end very shortly and then this suit can proceed. I accordingly allow the application, stay the suit till the rectification proceedings are over. On the orders being passed either party may apply for revival of the present suit.
2. Now, turning to I.A. 2982/78 which is an application for injunction, reliance is placed on the fact that in relation to Sec. 111(5) even if a stay of the suit is ordered an interlocutory order is still to be passed. This obviously is a statutory provision. The application for rectification no doubt brings about the stay of the suit but at the same time it should not lead to a denial of the plaintiff's rights. This means that the Court has full power to pass interlocutory orders including injunctions and other preventive orders to protect the plaintiff's rights which are open to the Court under its normal jurisdiction. The question is what is the proper order in the circumstances? The learned counsel for the plaintiff submits that he has a registered trade mark which has been in operation for 24 years and hence an injunction should be granted as a matter of right. On the other hand, it is claimed in the rectification application that the plaintiff has discontinued its trade mark for a long and hence the mark should be rectified. To my mind, the matter is sub judice before the Registrar and at the moment the plaintiff's trade mark is in jeopardy. Any other loss on general consideration has not been brought to my notice. I would accordingly hold that when the very existence of the trade mark has been doubted the matter being before the Registrar it would not be proper to give any interim injunction I cannot at the moment say that the defendant's application for rectification is malafide or improper and therefore I have to maintain status quo as it is not easy to decide whether an injunction can be granted against the defendants. However, to protect the rights of the plaintiffs I do direct the filing of the accounts regarding any sales made under the trade mark RICO though the defendants need not give any account of their other trade in the name of RICO industries. To particularise the accounts they are to be given only for sale of sewing machine parts or sewing machines sold under the trade mark RICO. The counsel for the defendants say that the plaintiff has no trade mark registered for sewing machine but only for sewing machine parts. The account is only for purpose of record and does not necessarily mean that the defendants are liable. The account should be filed from the period starting on 1-10-1978 every three months. The three monthly accounts from October to December 1978 should be filed by the end of January 1979. The suit having been stayed will be kept in the record room and the account also will be kept in the record room of the registry.