Referred Sections:
Section 142 of the Trademarks Act, 1999”,
Section 52
Sub-section (1)
Section 41(a) of the Specific Relief Act,
Section 142 of the Trade Marks Act.
Section 120
Section 11(1),
Section 60
Referred Cases / Judgments:
Cotton Corporation of India Limited Vs. United Industrial Bank Limited (1983) SCC 625,
Sidharth Wheels Pvt. Ltd. Vs. Bedrock Ltd. AIR 1988 Del 228,
Hindustan Lever Ltd. Vs. Rameshwar Mundia 2009 (39) PTC 570
Metro Tyres Ltd. Vs. Advertising Standards Council of India (2017) 240 DLT 119,
Super Cassette Industries Ltd. Vs. Bathla Cassettes India (P) Ltd.
Dolphin Laboratories Pvt. Ltd. Vs. Kaptab Pharmaceuticals
Value Invest Wealth Management (India) Private Limited Vs. B.G. Kishore Kumar 2011 SCC OnLine MP 2397,
Sons Industries Pvt. Ltd. Vs. Jain Riceland Pvt. Ltd.
Association Vs. Union of India 2014 SCC OnLine Del 1912
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 22nd August, 2019
+ CS(COMM) No.448/2019, IAs No.11442/2019 (for
exemption), 11441/2019 [u/O XI R-1(4) of CPC] &
11440/2019 (u/O XXXIX R-1&2 CPC).
THE CHARTERED INSTITUTE
OF TAXATION .... PLAINTIFF
Through: Mr. Sanjeev Sindhwani, Sr.
Adv. with Mr. Naqeeb Nawab
& Mr. Himanshu Deora, Advs.
Versus
INSTITUTE OF CHARTERED TAX ADVISERS
OF INDIA LTD. ......DEFENDANT
Through: None.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this "suit for declaration, permanent
injunction and damages in respect of groundless threats under Section
142 of the Trademarks Act, 1999", pleading,
(i) the plaintiff, having its registered office at London, is the
leading professional body in United Kingdom, concerned
solely with taxation and its mission is the advancement of
public education in taxation;
(ii) the plaintiff administers and awards two qualifications:
"Advanced Diploma in International Taxation" (ADIT)
for international tax professionals around the world, and
the "Chartered Tax Adviser" (CTA) qualification for
domestic tax practitioners in the United Kingdom;
(iii) the trade mark ADIT, which is an acronym, was adopted
by the plaintiff in the year 2003 and is in use since then
CS(COMM) No.448/2019 Page 1 of 16
and is one of the most prestigious qualifications in
professional tax expertise and is popular among
professionals in various countries including India; the
plaintiff conducts its examinations for ADIT in various
countries around the world including in India; the
plaintiff has at least 346 current ADIT students, 67 ADIT
graduates and 7 International Tax Affiliates in India;
(iv) the plaintiff has made applications for registration of its
mark ADIT in Classes 9, 16, 35, 36 and 41;
(v) the defendant has opposed the application of the plaintiff
for registration of the trade mark ADIT in Class 41, "on
misconceived grounds"; there is no opposition to the
application for registration in other classes;
(vi) the plaintiff has also acquired common law rights in the
trade mark ADIT which is used by the plaintiff in
provision of examination services, publication of
instructional and teaching material, provision of training
conferences and educational courses and various other
related and ancillary services and the trade mark ADIT is
distinctive of the plaintiff and the plaintiff has
considerable goodwill and reputation attached thereto;
(vii) the defendant is a company incorporated under the
Companies Act, 2013 having its registered office at Kota
in Rajasthan;
(viii) the plaintiff and the defendant have past litigation history
with respect to plaintiffs well known and distinctive
CS(COMM) No.448/2019 Page 2 of 16
trade marks "CHARTERED TAX ADVISER" and
"CTA";
(ix) the trade mark ADIT, which is the subject matter of the
present suit is not the subject matter of the Kota suit; the
plaintiff has also filed a Counter Claim in the said suit;
there is an interim order in the said suit against the
plaintiff, qua the trade marks "CHARTERED TAX
ADVISER" and "CTA"; the plaintiff has preferred an
appeal to the High Court of Rajasthan at Jaipur against
the said interim order and the said appeal is pending;
(x) the plaintiff has also filed cancellation / rectification
petition against the defendant for the mark
and the said proceedings are also pending
before the Intellectual Property Appellate Board (IPAB);
(xi) the defendant has sent various communications to the
Trade Marks Registry in respect of plaintiffs application
for the trade mark / trade name "The Chartered Institute
of Taxation", which is not even subject matter of dispute
in the Kota suit;
(xii) the opposition filed by the defendant with the Registry of
Trade Marks to the application of the plaintiff for
registration of the trade mark ADIT in Class 41 is on
"frivolous, misleading, concocted and false grounds , and
merely to harass the plaintiff"; the defendant has opposed
CS(COMM) No.448/2019 Page 3 of 16
on the basis that it is the registered proprietor of the trade
marks "CHARTERED TAX ADVISER" and "CTA"; in
the said opposition, reference has also been made to the
Kota suit, though the same does not relate to the trade
mark ADIT, for registration of which the application has
been filed; the frivolity of the opposition is also evident
from one of the grounds taken therein, of the claim of the
plaintiff being contrary to the fundamental rights of
Indian citizens; it is also the claim of the defendant in the
notice of opposition, that the use of the trade mark ADIT
by the plaintiff would amount to passing off and
infringement of the defendants registered trade mark;
(xiii) the said allegations made in the notice of opposition
clearly constitute groundless threats to the plaintiff
inasmuch as the defendant has accused the plaintiff of
infringement and passing off actions and has further
threatened that the plaintiff is liable to be prevented from
using the trade mark ADIT; the defendant has made such
threats / allegations despite the fact that the plaintiffs
trade mark ADIT has no visual, phonetic, structural or
any other similarity with the mark "CHARTERED TAX
ADVISER" and "CTA" and in fact the two marks are
totally different;
(xiv) the apparent dissimilarity between the two marks is by
itself sufficient to constitute the defendants threats of
infringement and passing off as groundless threats; the
CS(COMM) No.448/2019 Page 4 of 16
defendant has made these claims without any locus, valid
ground or basis, since the defendant neither has any rights
nor has ever claimed any rights in respect of the trade
mart ADIT, in the pending proceedings between the
parties at Kota and Jaipur;
(xv) the defendant has filed oppositions, merely to harass the
plaintiff, by not allowing the application of the plaintiff to
proceed to registration, so that the defendant may arm-
twist and pressurize the plaintiff to accede to its
unreasonable and monetary demands;
(xvi) public search by the plaintiff on the Trade Marks
Registrys website has also not revealed any application
and / or registration for the mark ADIT by the defendant;
(xvii) the notice of oppositions filed by the defendant is a mala
fide act, wherein the defendant, by creating illusory facts
and grounds, has stalled the registration of the plaintiffs
mark ADIT;
(xviii) the statements made by the defendant in the notice of
oppositions make it clear that the defendant may also file
frivolous proceedings against the plaintiff; the threats
being extended by the defendant are wholly unjustified
and the defendant is liable to be restrained from
extending / continuing such groundless threats;
(xix) the plaintiff is suffering greatly at the hands of the
defendant, in earlier litigations between the parties in
respect of trade marks "CHARTERED TAX ADVISER"
CS(COMM) No.448/2019 Page 5 of 16
and "CTA", and "with the present conflict being raised
by the defendant, the plaintiff has strong apprehension
that the defendant will not stop merely with the filing of
the notice of oppositions against the plaintiffs trade mark
ADIT but can go to any extent to malign the plaintiff
which may include but not limited to filing a frivolous
suit against the plaintiffs honest use of the trade mark
ADIT.";
(xx) the apprehension of the plaintiff with respect to the mark
ADIT is further accentuated by the past conduct of the
defendant with respect to trade marks "CHARTERED
TAX ADVISER" and "CTA";
(xxi) the threats meted out by the defendant are groundless
inasmuch as the defendant neither has nor can have any
statutory and / or common law right over the trade mark
ADIT;
(xxii) "even otherwise, despite the defendants right to oppose
the registration of plaintiffs mark ADIT, though none of
the grounds taken by the defendant in the notice of
oppositions is justified and tenable, the defendant is liable
to be restrained from extending / continuing the
groundless threats of infringement and passing off"; and,
(xxiii) paragraph 74 and 75 of the plaint are as under:
"74. That the immediate concerns and cause of
action for filing the present suit arose in the
month of July 2019 when the notice of
oppositions filed by the Defendant against
CS(COMM) No.448/2019 Page 6 of 16
the Plaintiff's Trademark Application
No.IRDI-3049160 were served on the
counsels of the Plaintiff in New Delhi,
wherein the groundless threats by the
Defendant were categorically mentioned.
The Plaintiff also has concerns regarding the
unjustified communications being sent by the
Defendant to various government
organizations / departments without any
locus stand, thereby maligning the image,
enormous reputation and goodwill of the
Plaintiff. The aforesaid acts / instances of
groundless threats being issued by the
Defendant are giving rise to an actionable
cause of action in favour of the Plaintiff. The
cause of action is continuing and subsisting
till the time the Defendant is not restrained
from continuing its illegal and unjustified
threats to the Plaintiff by this Hon'ble Court.
75. That the cause of action to file the present
suit arose within the territorial jurisdiction
of this Hon'ble Court as the illegal,
unjustifiable and groundless threats were
received by the Plaintiff through its counsels
having its address for service in India at
ZeusIP Advocates LLP, C-4, Jangpura
Extensions, New Delhi 110014. In addition
to this, the Plaintiff carries on extensive
activities within the jurisdiction of this
Hon'ble Court, inter alia, by holding ADIT
examinations in Delhi and by conducting /
participating in various promotional events
in Delhi in respect of the prior and well-
known trademark ADIT and all such
activities are likely to be adversely affected
by the groundless threats issued by the
Defendant. Further, this Hon'ble Court also
has jurisdiction to try and entertain the
CS(COMM) No.448/2019 Page 7 of 16
present matter as the wrong has been and /
or is continuing to be done to the Plaintiff
within the jurisdiction of this Hon'ble Court,
since the Defendant has been sending
groundless threats and frivolous
communications against the Plaintiff to
various Departments in Delhi such as
University Grants Commission situated at
Bahadur Shah Zafar Marg, New Delhi-
110002; All India Council for Technical
Education situated at Nelson Mandela Marg,
Vasant Kung, New Delhi-110070, etc. within
the territorial jurisdiction of this Hon'ble
Court."
2. Section 142 of the Trade Marks Act, 1999, invoking which the
suit has been filed, is as under:
"142. Groundless threats of legal proceedings.- (1)
Where a person, by means of circulars, advertisements or
otherwise, threatens a person with an action or
proceeding for infringement of trade mark which is
registered, or alleged by the first-mentioned person to be
registered, or with some other like proceeding, a person
aggrieved may, whether the person making the threats is
or is not the registered proprietor or the registered user
of the trade mark, bring a suit against the first-mentioned
person and may obtain a declaration to the effect that the
threats are unjustifiable, and an injunction against the
continuance of the threats and may recover such damages
(if any) as he has sustained, unless the first-mentioned
person satisfies the court that the trade mark is registered
and that the acts in respect of which the proceedings were
threatened, constitute, or, if done, would constitute, an
infringement of the trade mark.
(2) That last proceeding sub-section does not apply if the
registered proprietor of the trade mark, or a registered
CS(COMM) No.448/2019 Page 8 of 16
user acting in pursuance of sub-section (1) of section 52
with due diligence commences and prosecutes an action
against the person threatened for infringement of the
trade mark.
(3) Nothing in this section shall render a legal
practitioner or a registered trade marks agent liable to
an action under this section in respect of an act done by
him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in
any court inferior to a District Court."
3. Finding, on a reading of the plaint, that the groundless threats
by the defendant, with respect to which declaration to the effect that
the threats are unjustifiable and against making of which injunction is
sought, to be by way of oppositions filed by the defendant to the
application of the plaintiff for registration of the trade mark ADIT, I
have straightaway enquired from the senior counsel for the plaintiff,
how can a plea taken in a legal / statutory proceedings, howsoever
frivolous and groundless, and pending consideration before a Court /
statutory authority, be subject matter of declaration as unjustifiable in
another proceeding, and whether not the effect of injunction against
the defendant from continuing the groundless threats, complaining
whereof this suit has been filed, would amount to injuncting the
defendant from pursuing oppositions filed by it to the application of
the plaintiff to the Registrar of Trade Marks for registration of the
mark ADIT. Attention of the senior counsel for the plaintiff is drawn
to Section 41(a) of the Specific Relief Act, 1963 which bars the grant
of injunction to restrain any person from prosecuting a judicial
CS(COMM) No.448/2019 Page 9 of 16
proceeding pending at the institution of the suit, unless such restraint
is necessary to prevent a multiplicity of proceeding. Attention is also
drawn to the dicta of the Supreme Court in Cotton Corporation of
India Limited Vs. United Industrial Bank Limited (1983) SCC 625,
holding (a) that expression ,,court in Section 41 of the Specific Relief
Act should be given the widest amplitude, comprehending every
forum where relief can be obtained in accordance with law; and, (b)
that anyone having a right that is a legally protected interest and
complaining of its infringement and seeking relief through Court,
must have an uninhindered, uninterrupted access to law Courts and
that Courts ordinarily will not impede access to Courts. It was held
that access to justice must not be hampered even at the hands of
judiciary; no other Court can by its action, impede access to justice.
4. The senior counsel for the plaintiff contends that it is not the
intent and want of the plaintiff to injunct the defendant and this Court
may clarify that the pendency of this suit and / or grant of any interim
injunction sought herein will not affect the proceedings before the
Registrar of Trade Marks in the application of the plaintiff for
registration of the mark ADIT and adjudication of the opposition by
the defendant thereto.
5. However once a suit is not found to be maintainable in law and
the relief claimed therein is found to be barred, the same cannot be
made maintainable by making such statements. The effect of
entertaining this suit and / or a finding of prima facie case of "threats"
by the defendant in the averments in its oppositions to the application
of the plaintiff for registration of the mark ADIT, are bound to have an
CS(COMM) No.448/2019 Page 10 of 16
impact on the Registrar of Trade Marks, who is within the supervisory
jurisdiction of this Court; this Court cannot turn a blind eye to the said
reality of life.
6. I have even otherwise enquired from the senior counsel for the
plaintiff, as to how a plea taken in opposition proceedings before the
Registrar of Trade Marks and which are statutory in nature, can
constitute a threat within the meaning of Section 142 of the Trade
Marks Act. Section 142 of the Trade Marks Act is the remedy
provided by the legislature against the mischievous acts, by means of
circulars, advertisements or otherwise, threatening a person with an
action or proceeding for infringement of trade marks. Certainly
oppositions filed in statutory proceedings cannot be equated with
circulars or advertisements with reference whereto remedy of Section
142 of the Trade Marks Act has been provided. The intent of the
legislature in drafting Section 142 of the Trade Marks Act appears to
be, to provide remedy against a person, who without instituting legal
proceedings, metes out threats of legal proceedings. This is clear from
Sub-Section (2) of Section 142, which brings to an end, an action even
if initiated under Section 142(1), the moment a proceedings for
infringement of trade marks is initiated. The Scheme of the Section is,
that adjudication of rights asserted should be through legal
proceedings and not in public arena. If Section 142 of the Trade
Marks Act is read in this manner, once the Registrar of Trade Marks,
being a statutory authority empowered to decide the opposition, is
seized of the matter, the pleas if any of the plaintiff, of the grounds
taken in the opposition being frivolous, groundless and baseless, have
CS(COMM) No.448/2019 Page 11 of 16
to be adjudicated by the Registrar, and / or in proceedings against the
order of the Registrar, and not by way of a separate suit. It is not the
pleaded case, that the Registrar of Trade Marks is incompetent to
decide the objections.
7. The senior counsel for the plaintiff relies on Sidharth Wheels
Pvt. Ltd. Vs. Bedrock Ltd. AIR 1988 Del 228, holding that (i) the
word "otherwise" in Section 120 of the Trade and Merchandise Marks
Act, 1958, which is the equivalent of Section 142 of the Trade Marks
Act, is not to be construed ejusdem generis with the words ,,circulars,
,,advertisements; (ii) cause of action envisaged therein is not similar
to libel; and, (iii) threats need not be published to be actionable; thus,
a threat of suit for infringement of trade mark, in a letter to the
plaintiff, was held to be actionable.
8. The senior counsel for the plaintiff has further contended that
since the defendant in its opposition before the Registrar of Trade
Marks, is opposing registration of ADIT on the ground of being the
proprietor of the marks "CHARTERED TAX ADVISER" and "CTA",
the question falling for determination therein is of similarity /
deceptive similarity of the mark ADIT with the mark "CHARTERED
TAX ADVISER" and/or "CTA" and which question the Registrar of
Trade Marks is not authorized to determine / adjudicate.
9. No merit is found in either of the contentions. Sidharth Wheels
Pvt. Ltd. supra is not a judgment on a proposition, that pleas
contained in a legal / statutory proceedings also fall within the domain
of Section 142 of the Trade Marks Act. Thus, the reliance placed
thereon is misplaced.
CS(COMM) No.448/2019 Page 12 of 16
10. Similarly, the contention that the Registrar of Trade marks is
not competent to decide the question of similarity / dissimilarity, is not
found to be correct. Section 21(5) provides for the Registrar to, after
hearing the applicant and the opponent and considering the evidence,
decide whether the registration is to be permitted or not. There is no
express bar on the Registrar to adjudicate on issues on similarity when
an objection is filed. Otherwise also, under Section 11(1), the
Registrar is required to adjudicate on similarity of a trade mark,
application for registration whereof has been filed, with any earlier
trade mark. The power of the Registrar to decide on issues of
similarity/deceptive similarity of marks on the oppositions filed before
it has also been recognized by the Division Bench of this Court in
Hindustan Lever Ltd. Vs. Rameshwar Mundia 2009 (39) PTC 570
(Del) (DB), and the principle of judicial comity applied thereto. Thus,
there is no merit in the contention of the defendant.
11. In Metro Tyres Ltd. Vs. Advertising Standards Council of
India (2017) 240 DLT 119, I was concerned with the para materia
provision, being Section 60 of the Copyright Act, 1957. The plaintiff
therein also was seeking to restrain the defendant therein from
prosecuting its complaint of infringement of its copyright by the
plaintiff, before the Advertising Standards Council of India (ASCI). It
was enquired from the counsel for the plaintiff therein, how there
could be an injunction from invoking legal proceedings, and the
counsel was further called upon to address on the interplay of Section
60 of the Copyright Act and Sections 41(a) and 41(b) of the Specific
Relief Act. The suit was finally dismissed, inter alia holding that the
CS(COMM) No.448/2019 Page 13 of 16
defendant therein having already initiated proceedings before the
ASCI, Section 60 had no application; the argument that since the
proceedings before the ASCI were not of infringement and therefore
the provision had no application, was rejected. It was also held that
there could be no defamation of the plaintiff therein by the defendant
therein, in accordance with the complaint procedure of the ASCI,
preferring the complaint against the plaintiff. It was further reasoned
that the plaintiff therein could not be permitted to scuttle the
proceedings in the complaint filed by the defendant therein before the
ASCI, by instituting the suit in this Court.
12. Reference in this regard may also be made to (i) Super Cassette
Industries Ltd. Vs. Bathla Cassettes India (P) Ltd. AIR 1994 Del
237; (ii) Dolphin Laboratories Pvt. Ltd. Vs. Kaptab Pharmaceuticals
AIR 1981 Cal 76 holding that while restraining a person from making
unjustified threats, it is not open to the Court to restrain him from
taking the matter to a Court of Law and from agitating his rights there;
the right to institute a suit was held to be an important and vital right
incapable of being interfered with except by a statutory bar; (iii) Value
Invest Wealth Management (India) Private Limited Vs. B.G. Kishore
Kumar 2011 SCC OnLine MP 2397, where notice issued by the
defendant to the plaintiff asking the plaintiff to cease and desist from
infringing the trade mark of the defendant was held to be not a
groundless threat within the meaning of Section 142 of the Trade
Marks Act, reasoning the said notice to be in aid of intending legal
proceedings and further holding that the defendant could not be
restrained from exercising its legal rights; and, (iv) Sachdeva and
CS(COMM) No.448/2019 Page 14 of 16
Sons Industries Pvt. Ltd. Vs. Jain Riceland Pvt. Ltd.
MANU/PH/2565/2016 holding that a proceeding under Section 142 of
the Trademarks Act or Section 60 of the Copyright Act does not lie
against a legal action.
13. Mention may also be made of Intellectual Property Attorneys
Association Vs. Union of India 2014 SCC OnLine Del 1912 where
myself, speaking for the Division Bench of this Court, held that the
power vested in the Registrar of Trademarks is a quasi judicial power.
Hence the proceedings pending before the Registrar of Trademarks i.e.
the application of the plaintiff for registration of its trade mark ,,ADIT
and the opposition of the defendant thereto are quasi judicial
proceedings, and such quasi judicial proceedings cannot be termed as
groundless threats within the meaning of Section 142 of the
Trademarks Act.
14. In view of the aforesaid, it appears that the suit has been
instituted by the plaintiff before this Court with the oblique motive of
shifting the pending litigation with the defendant from the Courts at
Kota and Jaipur, to this Court, though the senior counsel for the
plaintiff vehemently denies and states that even the thought had not
crossed the mind of the plaintiff/its advocate.
15. I have however in this context drawn the attention of the senior
counsel for the plaintiff to para 75 of the plaint reproduced above,
where the territorial jurisdiction of this Court has been invoked
pleading that the illegal and unjustifiable and groundless threats were
received by the plaintiff through its counsels having their address for
service in Delhi, and enquired that if the plaintiff had chosen an
CS(COMM) No.448/2019 Page 15 of 16
advocate with address for service at Andaman and Nicobar islands and
the defendant had corresponded with the plaintiff there, would the
plaintiff be free to invoke the jurisdiction of that Court.
16. Though the senior counsel for the plaintiff has also generally
stated that the defendant has been writing letters to various authorities
and copies of which have been filed, but a bare perusal of the plaint
and the cause of action paragraph therein discloses the groundless
threats complained of in this suit to be in the opposition to the
application of the plaintiff for registration of the mark ,,ADIT, so
much so that the senior counsel for the plaintiff has not even drawn
attention to any part of the pleading or any document treating which as
groundless threat this suit has been filed.
17. The plaint thus does not disclose any cause of action in law for
the suit to be admitted.
18. Resultantly, the suit is dismissed.
19. No costs.
20. Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
AUGUST 22, 2019
,,gsr/pp..
(Corrected and released on 14th September, 2019).
CS(COMM) No.448/2019 Page 16 of 16
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