The interplay between Sections 124 and 57 of the Trademarks Act 1999 has long
been a subject of legal debate in India. Specifically, the question arises as to
whether Section 124, which mandates obtaining leave from the court before
challenging the validity of a registered trademark, operates to bar the
initiation of rectification petitions under Section 57 independently. This
article analyzes a recent judgment by the Hon'ble High Court of Delhi, which
provides crucial insights into the compatibility of these provisions.
Section 124 of Trademarks Act 1999:
Section 124 of the Trademarks Act 1999 prescribes the requirement for obtaining
leave from the court when challenging the validity of a registered trademark in
a suit. It serves as a protective mechanism for registered trademark holders and
prevents frivolous challenges to the validity of their marks.
Section 57 of Trademarks Act 1999:
On the other hand, Section 57 of the same Act allows for the initiation of
rectification proceedings for the cancellation of a registered trademark
independently of any pending suit. This provision empowers interested parties to
seek rectification of the register based on various grounds, including the
invalidity of the trademark.
The Case at Hand:
In a recent case before the Hon'ble High Court of Delhi, the petitioner, Mr.
Anubhav Jain, filed a cancellation petition under Section 57 and Section 125 of
the Trademarks Act 1999, seeking the cancellation of Certificate No. 2772286
dated 18th June 2021. Notably, Mr. Jain did not seek leave under Section 124
before initiating the rectification proceedings.
The Respondent's Contention:
The respondent, in response to rectification petition, raised a preliminary
objection based on Section 124 of the Trademarks Act. Citing the Supreme Court's
judgment in Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018) 2 SCC 112,
the respondent contended that once a suit for infringement is filed by the
plaintiff against the defendant, and the defendant raises the plea of invalidity
of the plaintiff's mark as a ground of defense, the defendant forfeits the right
to independently invoke Section 57 to seek rectification and cancellation of the
The Court's Interpretation:
The Hon'ble High Court of Delhi, in its judgment, rejected the respondent's
interpretation of the law. The court made several noteworthy observations to
clarify the relationship between Sections 124 and 57 of the Trademarks Act 1999.
Firstly, the court emphasized that the decision in Patel Field Marshal Agencies
did not conclusively establish that the right to seek cancellation of a mark
under Section 57 and the right to seek rectification under Clause (ii) of the
second part of Section 124 are mutually destructive to each other.
"The court held that the right to seek cancellation and rectification, as
conferred by Section 57 and Clause (ii) of the second part of Section 124,
respectively, are independent rights. Therefore, an interested party retains the
right to invoke Section 57 of Trademarks Act 1999, even in the absence of leave
obtained under Section 124."
The Concluding Note:
The judgment of the Hon'ble High Court of Delhi provides a significant
clarification on the relationship between Sections 124 and 57 of the Trademarks
Act 1999. It highlights that these provisions operate independently, allowing
interested parties to initiate rectification proceedings under Section 57
without being barred by the absence of leave obtained under Section 124.
Case Law Discussed:
Case Title:Anubhav Jain Vs Satish Kumar Jain
Date of Judgement:09/01/2023
Case No. Co Comm IPD TM 55 of 2021
Neutral Citation No: 2023:DHC:7089-DB
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge:C Hari Shankar
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