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
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.
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
Email: [email protected]
, Ph no: 9990389539