In Shri Lakshmi Venkataramana and T. Varada Raj Pai
(Respondent/Plaintiff) v. P.Kiran Kumar
(Petitioners/Defendants), the Respondent/Plaintiff filed a suit
against the Petitioner/Defendants for a decree against the latter
and persons claiming under them from passing off malt powder in the
market under the names "SRI RAGHAVENDRA MALT" and
"SRI RAGHAVENDRA BADAMI FEAST" or any other mark
deceptively similar to the marks being used by the former.
In addition, the Respondent/Plaintiff had also filed an interim
application for an order of temporary injunction in order to
restrain the Petitioner/Defendants in the similar manner as sought
for in the main prayer. However, the Trial Court had found the said
application and also the following appeal devoid of merit and had
thus rejected both respectively.
The Petitioner/Defendants on their part had filed an Interim
Application (I.A.) No.4 under Section 124 of the Trademarks Act,
1991 read with Section 94(e) and 151 of the Code of Civil Procedure
(CPC) to stay further proceedings of the suit till the disposal of
the application filed by them under Section 125 of the Trademarks
Act before the Intellectual Property Appellate Board (IPAB) at
Chennai, for removal of the Respondent/Plaintiff registered
trademark. It was argued by the Respondent/Plaintiff that the
Petitioner/Defendants had not satisfied the mandatory requirements
of Section 124 of the Act so as to entitle them to an order of stay
of proceedings of the suit and further that the application was hit
by inordinate delay, negligence, laches, acquiescence, waiver and
estoppel and still further that the application was intended to
frustrate and defeat the direction issued in the interim
application filed by the Respondent/Plaintiff previously.
The Trial Court had rejected the I.A. No. 4 stating that as per
Section 124(1)(b), the Defendant should have raised a defence under
Clause (e) of Sub-section (2) of Section 30 and pleaded the
invalidity of registration of the trademark, however, there was no
such plea taken. Aggrieved, as such by this order of the trial
Court, the Petitioner/Defendants filed a writ petition before the
High Court of Karnataka.
The Petitioner/Defendants contended that since they had filed an
application under Section 125 of the Act before the Board for
removal of the Respondent/Plaintiff's trademark and the same
was pending enquiry before the Board and in view of such pendency,
the proceedings in the suit could not continue and was thus
required to be stayed in exercise of the power under Section 124 of
the Act. It was further contented that the Trial Court had ignored
and rejected the I.A. No.4 irrationally and illegally.
It was contended on behalf of the Respondent/Plaintiff, that the
Petitioner/Defendants had not taken specific defence under Clause
(e) of Sub-section (2) of Section 30 of the Act and that they had
not specifically pleaded the invalidity of registration of the
trademark. They also stated that the Trial Court had considered the
I.A. No.4 from the correct perspective and the impugned order was
The High Court of Karnataka opined that the question that needed
to be considered in the present case was : "Whether the trial
court is justified in refusing to stay the proceedings of the suit
and in rejecting I.A. No.4.?" The Court noted that the case of
the Petitioner/Defendants was that the Trial Court had not
considered their application with reference to the provision
contained under Section 124(1)(a). The provisions under Clause (a)
and (b) of Sub-Section (1) of Section 124 of the Act are
independent since the word used is "or" and the case was
required to be examined with reference to both the provisions.
It was thus held that since the Trial Court had not considered
the case of the Petitioner/Defendants in accordance with law, the
impugned order was irrational. Therefore, the writ petition was
allowed, and the Trial Court was directed to re-consider the I.A.
No.4 keeping in mind the aforesaid observations and in accordance
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