Brahmos Aerospace Pvt Ltd v. Fiit Jee Limited and Anr

PRATEEK JALAN, J.

S. RAVINDRA BHAT, J. FEBRUARY 25, 2019 "hkaur/pv"

* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 30.10.2018 Pronounced on: 25.02.2019 + FAO(OS)(COMM)247/2018 & CM Appl. 10465/2017 BRAHMOS AEROSPACE PVT LTD ..... Appellant Through: Mr. A. Das, Ms. Rashi Bansal and Ms. Anju Agarwal, Advocates. versus FIIT JEE LIMITED AND ANR. ..... Respondents Through: Mr. Mohan Vidhani and Mr.Ashish Singh, Advocates. CORAM: HON'BLE MR. JUSTICE S. RAVINDRA BHAT HON'BLE MR. JUSTICE PRATEEK JALAN MR.JUSTICE PRATEEK JALAN % 1. The challenge in this appeal is to an order dated 17.02.2017 by which the learned Single Judge had stayed the suit filed by the appellant herein, Brahmos Aerospace Pvt. Ltd. [hereafter referred to as "Brahmos"] against the respondent FIITJEE Ltd. [hereafter referred to as "FIITJEE"]. This order was passed under Section 124 of the Trade Marks Act, 1999 to enable FIITJEE to approach the Intellectual Property Appellate Board [hereafter referred to as "IPAB"] for rectification of the Register of Trade Marks in respect of the disputed trade mark of "BRAHMOS", which forms the subject matter of the suit. Background 2. The suit in question [CS(OS) 2655 of 2013 subsequently renumbered as CS (Comm) 556/2018] was filed by Brahmos on 19.12.2013 claiming to be the owner of a well known and reputed trade mark "BRAHMOS" which was inter alia registered for educational services under class 41. It alleged that FIITJEE was using the same name for an online aptitude test and thus infringing the trade mark. The principal reliefs sought by Brahmos in the suit are as follows: "a) A decree for permanent injunction restraining the Defendants, by themselves, their servants, agents, etc. from unauthorizedly using, taking unfair advantage, advertising, visually representing, offering sale of services, directly or indirectly dealing in services under the trademark BRAHMOS or any other trademark deceptively and/or confusingly similar to the trademark BRAHMOS so as to infringe the Plaintiff"s registered trademark BRAHMOS. And/Or b) A decree for permanent injunction restraining the Defendants, by themselves, their servants, agents, etc. from unauthorizedly using, taking unfair advantage, advertising, visually representing, offering sale of services, directly or indirectly dealing in services under the trademark BRAHMOS or any other trademark deceptively and/or confusingly similar to the trademark BRAHMOS as may lead to passing off-unfair competition.And/Or c) A decree of damages on account of Infringement and passing off and unfair competition, by the use of the trademark enumerated herein of the Plaintiff in favour of the Plaintiff and against the Defendants." 3. FIITJEE has contested the suit by way of a written statement filed on 09.01.2014. By an order dated 24.02.2014, the learned Single Judge decided an application for injunction [I.A. No.21136/2013] filed by Brahmos, in its favour. FIITJEE was injuncted from using the trade mark "BRAHMOS" in relation to educational activities or part of a domain name in any manner whatsoever. Although there appears to be some dispute regarding the compliance of this order by FIITJEE, inasmuch as, contempt proceedings have also been instituted by Brahmos, that is not relevant for the adjudication of this appeal. 4. In July, 2015, FIITJEE filed I.A. No.14418/2015, under Section 124 of the Trade Marks Act, 1999 for a stay of the suit for a period of three months to enable it to file cancellation/rectification petitions before the IPAB, seeking removal of the registrations of the mark in favour of the plaintiff from the Register of Trade Marks. This application was contested by Brahmos but has been allowed by the impugned order of the learned Single Judge. 5. During the pendency of the present appeal, the Division Bench passed an order dated 04.05.2017 wherein it was recorded that FIITJEE had invoked the jurisdiction of IPAB under Section 124 of the Act. The Division Bench directed that the impugned order and further proceedings before the IPAB would remain stay