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C.A. No. 10679-10680/2013  @ SLP(C)No. 28967-28968 of 2012

REPORTABLE

IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION CIVIL APPEAL NO. 10679-10680/2013

[Arising out of Special Leave Petition (Civil) No. 28967-28968 of 2012]

Lakha Ram Sharma  ...............Appellant

vs.   Balar Marketing Private Limited & Ors. …...........Respondents

J U D G M E N T

A.K. SIKRI,J.

1.Leave Granted.

2.Before adverting to the core issue it would be apposite 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 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  

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goods. The appellant has also been supplying the said goods under the aforesaid  

trade marks and names to Respondent No. 1.

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. 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  

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 Respondent No. 1 as to the territorial jurisdiction of the Delhi High Court to  

entertain the said petition.  

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 presentation before the appropriate Court. This order was upheld by  

the Division Bench.  A Special Leave Petition against the order of the Division  

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Bench  being  Special  Leave  Petition  (Civil)  No.  16800  of  2002  was  also  

dismissed vide order dated 20.9.2002.

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 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 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 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. 1 & 2 who filed their  

replies. The Respondent No. 1 filed a miscellaneous petition, being M.P. No. 31  

of 2005 on the ground that the Rectification Petition could not have been filed  

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as  a  continuity  of  the  earlier  proceedings  before  the  Delhi  High Court.  For  

uncertain reasons, the matter dragged on before the 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 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 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 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, 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  

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order the appellant had submitted that the appellant had pursued its remedy by  

filing  the  petition  before  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 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 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 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,  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 appellant came to know that  

Respondent No. 1 was using the trade mark Kundan, he immediately filed the  

suit for injunction against Respondent No. 1 in the District Court of Delhi which  

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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 obtained registration  

of trade mark 'KUNDAN' 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  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  

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 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.  

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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.

14.No costs.  

….........................................J. [K.S. RADHAKRISHNAN]

…..........................................J. [A.K. SIKRI]

New Delhi November 27, 2013.

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