Section 124(1)(ii), allows a defendant to seek an adjournment of proceedings to
file a rectification petition for the cancellation of a registered trademark.
This article delves into a specific legal case where the defendant invoked
Section 124(1)(ii) in an attempt to adjourn the proceedings and highlights the
importance of specific pleading in such cases.
Section 124(1)(ii) of the Trade Marks Act 1999:
Section 124(1)(ii) of the Trade Marks Act 1999 grants the defendant the right to
request an adjournment of a trademark infringement suit in order to file a
rectification petition to challenge the validity of the plaintiff's registered
trademark. However, it is crucial to understand the conditions that must be met
for this provision to apply.
Condition of Invalidity Plea:
The fundamental condition for Section 124(1)(ii) to come into play is the
defendant's plea that the registration of the plaintiff's trademark is invalid.
This means that the defendant must assert, in clear terms, that the trademark in
question lacks the legal standing for protection. In the case at hand, the
defendant's application under Section 124(1)(ii) was based on this specific
The Court's Observations:
In the case under consideration, the Court closely examined whether the
defendant had satisfied the conditions mandated by Section 124(1)(ii). The
Court's assessment focused on the defendant's pleadings leading up to the
The defendant's assertion in paragraph 11 of the application, stating that it
had consistently argued the invalidity of the plaintiff's trademark, was noted.
However, the Court found a significant deficiency � there was no prior pleading
in the defendant's submissions asserting the invalidity of the plaintiff's
The Court's Decision:
The critical point of contention in this case was the absence of a clear and
prior plea by the defendant regarding the invalidity of the plaintiff's
trademark. Section 124(1)(a) merely requires the defendant to plead that the
plaintiff's trademark is invalid. However, the Court determined that this
essential plea was conspicuously missing from the defendant's pleadings I. e.
written statement, prior to the application under Section 124(1)(ii).
Such pleading was obviously missing in prior pleading as no written statement
was filed by the Defemdant. As a result, the Court ruled that the conditions for
invoking Section 124(1)(ii) had not been met. The defendant's application was
dismissed, and the proceedings continued without adjournment.
The Concluding Note:
The case involving the defendant's application under Section 124(1)(ii) of the
Trade Marks Act 1999 serves as a reminder of the importance of specific and
clear pleadings in legal proceedings. To utilize the provisions of Section
124(1)(ii), a defendant must not only assert the invalidity of the plaintiff's
trademark but also ensure that this plea is reflected in written statement.
Case Law Discussed:
Case Title: Central Park Estates Pvt. Ltd. Vs Provident Housing Limited
Date of Judgement:29/08/2023
Case No. C.S Comm 194 of 2019
Neutral Citation No: 2023:DHC:6262
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539