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No prior leave under Section 124 of the Trade Marks Act, 1999 is must in Rectification Proceedings

Factual Background
The case under consideration involves a dispute between a Plaintiff and a Defendant over trademark issues. The Defendant raised an objection to the maintainability of the present rectification petitions on the grounds that no application under Section 124 of the Trade Marks Act, 1999 was filed, and no issues were framed in respect thereof in the connected suit. On the other hand, the Plaintiff argued that since the suits were filed based solely on passing off, Section 124 of the Act was not applicable.

The Plaintiff's contention rested on the premise that the Defendant's suit was solely grounded in passing off, with no claims of trademark infringement or any relief sought in that regard. Therefore, according to the Plaintiff, Section 124 of the Act had no relevance to a passing-off suit.

The Role of Section 124 of the Trade Marks Act, 1999
Section 124 of the Trade Marks Act, 1999 deals with the rectification of the register of trademarks. It empowers the Registrar of Trade Marks to make decisions on rectification applications, and it lays out the procedure for such rectifications. Importantly, Section 124 primarily applies to situations where there are issues concerning the registration of a trademark or its cancellation.

Infringement vs. Passing Off
To understand the crux of this legal dispute, it is vital to distinguish between trademark infringement and passing off. Trademark infringement occurs when someone uses a registered trademark in a way that is likely to deceive or confuse the public. In contrast, passing off is a common law remedy that protects unregistered trademarks or trade dress from misrepresentation and unfair competition.

Analysis of the Legal Arguments
The Plaintiff's argument hinged on the nature of the Defendant's suit, which was premised solely on passing off. The Defendant did not plead trademark infringement or seek any relief related to trademark registration. Given this context, the Plaintiff contended that Section 124 of the Trade Marks Act, 1999 would not be applicable.

The Defendant, on the other hand, asserted that the absence of a Section 124 application and issues framed in the connected suit should render the rectification petitions non-maintainable. This position was based on a strict interpretation of the Act's requirements.

Court's Decision
After considering the arguments presented by both parties, the court found in favor of the Plaintiff. The court determined that since the Defendant's suit was solely founded on passing off and did not involve any claims of trademark infringement or relief related to trademark registration, Section 124 of the Act was not applicable in this case.

Moreover, the court referred to Rule 26 of the Delhi High Court Intellectual Properties Rights Division Rules, 2021, which stipulates that rectification proceedings are to be consolidated with civil suits and decided together. This rule emphasizes the importance of considering the specific nature of the suit in question, which in this instance was passing off.

The case highlights the importance of understanding the nuances of trademark law, particularly when it comes to the applicability of provisions like Section 124 of the Trade Marks Act, 1999. In this instance, the court's decision was grounded in a pragmatic approach that considered the nature of the dispute and the relief sought by the parties involved. Ultimately, the court's finding that Section 124 had no application in a suit for passing off underscores the need for a contextual and case-specific analysis in trademark litigation.

Case Law Discussed:
Case Title: Brihan Karan Sugar Syndicate Marie Stopes International Vs Parivar Seva Santha
Date of Judgement:20/09/2023
Case No. C.O. (COMM.IPD-TM) 35/2022
Neutral Citation No: 2023:DHC:6805
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Amit Bansal, 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 Trademark Attorney
Email: [email protected], Ph no: 9990389539

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