PATEL FIELD MARSHAL AGENCIES AND ANR. versus P.M. DIESELS LTD. AND ANR.

Citation: [2017] 12 S.C.R. 674 · Decided: 29-11-2017 · Supreme Court of India · Bench: RANJAN GOGOI · Disposal: Dismissed
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Judgment (excerpt)

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B 
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[2017] 12 S.C.R. 674 
PATEL FIELD MARSHAL AGENCIES AND ANR. 
v .. 
P.M. DIESELS LTD. AND ANR. 
(~ivi!Appeal Nos. 4767-4769 of2001) 
NOVEMBER29, 2017* 
[RANJAN GOGOi AND NAVIN SINHA, JJ.) 
Trade and Merchandise Marks Act, 1958: 
ss.46156 and ss.1111107 - True purport, intent and effect of 
- Held: All the q11estions with regard to validity of trade mark is 
required to be decided by High Court - Civil Court is not empowered 
by the Act to decide the said question - The Act fi1rther mandates 
that the decisions rendered by the prescribed statutory authority 
will bind the civil co11rt - However, there is different procedure to 
govern the exercise of same jurisdiction - Jn cases where parties 
have not approached the civil court, Sections 46 and 56 provide an 
independent statutory right to seek rectification of the trademark -
D 
In the event, the civil court is approached. interalia, raising issue of 
validity of trade mark, if the civil co11rt frames issue with regard to 
validity, matter will go to the High Court (prescribed authority) 
u!ss.111 and 117 and finding on the issue by the Tribunal would be 
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binding on the civil court - But if the civil court does .not }Ind a 
triable issue on the plea of invalidity, remedy wo11ld not be to move 
application ulss.46156 - If despite the order of civil court, parties 
do not approach the High Court within statutorily prescribed time 
fl'ame the right to raise the issue of invalidity is lost forever - The 
requirement of satisfaction of Civil Court regarding existence of 
prima facie case of invalidity and framing of issue to that effect 
bejhre the law operates, to vest jurisdiction in the statutory authorizv 
to deal with the issue of invalidity, does not tantamount to 
permission or leave of the civil court - Heading of s.111 cannot be 
understood to be determinative of the true purport, intent and effect 
of the provisions contained therein - Proceedings ulss.46156 on 
one hand and the proceedings u/ss.107/ll1 on the other hand would 
not run paralle!y. 
Dismissing appeal Nos. 4767-4769 of 2001 and 19937 of 
2017 and allowing appeal No. 19938 of 2017, the Court 
•Ed Note: Judgment as modified in terms of subsequent order dt. 17.01.2018 passed in 
M.A. No. 1764 of2017 in Civil Appeal No. 19938 of2017 (Unitech Biotech Private 
H 
Limited vs. Orchid Chemicals and Pharmaceuticals Limited and Ors.) 
674 
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 
675 
HELD: 1. Registration of a trade-mark vests in the A 
registered owner an exclusive right to use the mark in relation 
to the goods in respect of which the mark has been registered. 
This is, however, subject to such conditions and limitations as 
may be incorporated in the tegistration itself. H also grants to 
the registered owner a right to seek and obtain relief in case of B 
infringement of the mark. (Para 23)(692-C] 
2. Following well -accepted principles of interpretation of 
statutes, the beading of Section 111 of the 1958 Act i.e. "Stay of 
proceedings where the validity of registration of the trade mark 
is questioned, etc.'', cannot be understood to be determinative 
of the true purport, intent and effect of the provisions contained 
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therein so as to understand the said Section to be contemplating 
only stay of proceedings of the suit where validity of the 
registration of the trade mark is questioned. Naturally, the whole 
of the provisiilns of the Section will have to be read and so read, · 
the same would clearly show lack of any legislative intent to limit/ D 
confine the operation of the Section to what its title may convey. 
[Para 26][693-E-G] 
3. Rather, from the resume of the provisions of the 1958 
Act, it becomes clear that all questions with regard to the validity 
of a Trade Mark is required to be decided by the Registrar or 
the High Court under the 1958 Act or by the Registrar or the 
IPAB under the 1999 Act, and not by the Civil Court. The Civil 
Cotfrt, infact, is notempowered by· the Act to decide the said 
question. Furthermore, the Act mandates that the decisions 
rendered by the prescribed statutory authority [Registrar/High 
Court (now IPAB)) will bind the Civil Court. [Para 27] [693-G-H; 
694-AI 
4. The Act (both old and new) goes on to provide a different 
procedure to govern the exercise of the same jurisdiction in two 
different situations. In a case where the issue of invalidity is raised 
or arises independent of a suit, the prescribed statutory authority 
will
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