HIMALAYAN HELI SERVICES PRIVATE LIMITED vs HIMACHAL HELICOPTER SKIING PTY LTD, AND ANR.
$~8 & 31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 30th November, 2023
+ C.O. (COMM.IPD-TM) 376/2021
HIMALAYAN HELI SERVICES
PRIVATE LIMITED ….. Petitioner
Through: Mr. Sachin Gupta, Mr. Ajay Kumar Mr. Vivek Malik Mr. Manan Mandol Mr. Rohit Pradhan Ms. Gaurangi Sharma and Ms. Prasansha Singh, Advocates.
versus
HIMACHAL HELICOPTER SKIING
PTY LTD, AND ANR. ….. Respondents
Through: Mr. Kirit S. Javali, Adv. (M. 9810518044)
AND
+ CS(COMM) 307/2018
HIMACHAL HELICOPTER SKIING PTY LTD. ….. Petitioner
Through: Mr. Kirit S. Javali, Adv. (M. 9810518044)
versus
HIMALAYAN HELI SERVICES
PRIVATE LIMITED & ORS. ….. Respondents
Through: Mr. Sachin Gupta, Mr. Ajay Kumar Mr. Vivek Malik Mr. Manan Mandol Mr. Rohit Pradhan Ms. Gaurangi Sharma and Ms. Prasansha Singh, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. In this petition, the Petitioner- Himalayan Heli Services Pvt. Ltd. seeks cancellation of RespondentsNo.1s -Himachal Helicopter Skiing Pty Ltd., registration of the mark extracted below:
3. The case of the Petitioner is that the registration has been obtained in bad faith by Respondent No.1. It is stated that there are previous litigations between the parties wherein Respondent No.1 has sought to obtain injunctions against the Petitioner and in which it has been completely unsuccessful. Reliance is placed by Mr. Gupta, ld. Counsel for the Petitioner, on a decision of the Court in CS(OS) 205/2009 titled Roderick John Andrew Mackenzie v. Himalayan Heli Services Pvt. Ltd. dated 8th January, 2019 where several findings have been rendered against the Respondent No.1.
4. Ld. Counsel for the Petitioner further submits that Respondent No.1s conduct also does not deserve any indulgence inasmuch as the Petitioner had filed a suit for recovery for a sum of Rs.16.41 lakhs against Respondent No.1 in the District Court, Saket which was decreed. In the execution petition, Respondent No.1 is stated to be not appearing in the matter.
5. Respondent No.1 had also filed a suit seeking transfer of shares in the Petitioners company which was also dismissed vide judgment dated 21st December, 2022. Thus, according to Mr. Gupta, the present registration for the mark is nothing but a fraudulent registration which has been obtained by the Respondent No.1 only in order to hamper the business of the Petitioner.
6. On the other hand, Mr. Javali, ld. Counsel appearing for Respondent No.1 submits that the mark and the device belong to Respondent No.1. He submits that Respondent No.1 was a company which was registered in Australia in 1988 under the name HIMALAYAN HELI PTY LTD. It is stated that the Respondent No.1s company operates in heliskiing activities and the Petitioner was providing helicopters to the Respondent No.1.
7. It is stated that both parties had a business arrangement where they had a fall out which has led to these multiple litigations between the parties.
8. Heard ld. Counsels for parties.
9. The present petition has been filed as an outcome of order dated 11th November, 2013 in CS(OS) 727/2009 titled Himachal Helicopter Skiing Pty Ltd V. Himalayan Heli Services Private Limited & Ors. (now CS(COMM) 307/2018).
10. The said order was passed in the suit CS(OS) 727/2009 – for passing off filed by Respondent No.1 wherein the Respondent is seeking an injunction against the Petitioner using the name HIMALAYAN HELI SERVICES. In the said order, the following issues were framed on 11th November, 2023:
(i) Whether the Plaintiff is entitled to any right, title or interest in trade mark/ trade name Himalayan Heli Services?
(ii) Whether the Plaintiff is the prior user of the mark Himalayan Heli Services?
(iii) Whether the registration of the trade mark Himalayan Heli Services in favour of the Plaintiff is invalid?
(iv) Whether the Defendant is the owner of the trademark/ trade name Himalayan Heli Service being used by it?
(v) Whether the Defendants use of trade mark/trade name Himalayan Heli Services constitutes passing off or infringement of any alleged trademark of the Plaintiff in any manner?
(vi) Whether the Plaintiff has acquiesced in the Defendants use of the said trade mark/name Himalayan Heli Services?
(vii) Whether the Plaintiff has suppressed the material facts and the effect thereof?
(viii) Whether the suit is barred by laches and delay?
(ix) Relief.
11. As can be seen, one of the issues i.e., issue no. (iii) is that whether the mark of the Respondent is liable to be cancelled on the ground of its invalidity.
12. The Court had, in view of Section 124(1)(d)(ii) of the Trade Marks Act, 1999, adjourned the suit for a period of three months to enable the Defendant i.e. the Petitioner herein to approach the IPAB seeking cancellation/ rectification of the trade mark.
13. The present petition was then filed before the IPAB by the Petitioner in 2014. The cancellation petition has remained pending in the IPAB for more than nine years. Thereafter, consequent upon the abolition of the IPAB, upon the enactment of the Tribunals Reforms Act, 2021, the cancellation petition has been transferred before this Court and has been taken up for hearing.
14. A perusal of the above-mentioned issues which have been framed in the suit and the issue which has arisen in this cancellation petition indicates that the main issue pertains to determining of the rightful claimant of the rights in the mark/name HIMALAYAN HELI SERVICES.
15. The said mark/name is also an integral part of the cancellation petition. The said mark has a trade mark registration bearing no.1523434 dated 12th January, 2007, of which cancellation is being sought registered by Respondent No.1.
16. The issues between both these cases would be completely overlapping. The parties have already been entangled in disputes previously in at least five other proceedings.
17. Under such circumstances, the Court put it to the parties as to whether the trial can now be consolidated as the witnesses and documents as also the pleadings would be similar in nature and overlapping.
18. Both ld. Counsels for the parties agree that the trial in the suit and in the cancellation petition can be consolidated. Accordingly, it is directed as under:
i) The consolidated trial shall take place both in the suit and in the cancellation petition. Both parties are permitted to file any additional documents which they wish to do. The admission/denial shall take place before the Joint Registrar on 15th January, 2024.
ii) Both parties shall file their list of witnesses within six weeks. Both parties shall not lead evidence of more than two witnesses considering that the suit is at least ten years old now.
iii) The Plaintiff in CS(COMM) 727/2009, who is Respondent No.1 is the present petition, shall lead evidence first. After the admission/denial is concluded, within six weeks the evidence shall be filed by the Plaintiff (Respondent No.1).
iv) The Plaintiffs evidence shall be filed in 8 weeks.
v) Insofar as the execution petition bearing no. Execution Petition No. 519/2022 is concerned, Mr. Javali, ld. Counsel for Respondent No.1, fairly concedes that he would accept notice in the execution petition in the District Court on the next date of hearing.
19. List before Joint Registrar on 15th January, 2024.
20. List before the Court on 27th March, 2024 for case management.
PRATHIBA M. SINGH
JUDGE
NOVEMBER 30, 2023
Rahul/bh
C.O. (COMM.IPD-TM) 376/2021 & CS(COMM) 307/2018 Page 2 of 2