The filing of a rectification petition before the Intellectual Property
Appellate Board (IPAB) in response to a trademark infringement suit is not an
uncommon occurrence in the realm of intellectual property disputes. The
Trademarks Act 1999 of India provides a legal framework for such proceedings,
including the provision of Section 124, which allows defendants to seek a stay
of the suit proceedings pending the outcome of the rectification petition.
However, the recent decision by the Hon'ble Division Bench of Telangana High
Court, which rejected the defendant's request for a stay, has brought to light
the complexities and nuances of this provision and its application.
Section 124 of the Trademarks Act 1999:
Section 124 of the Trademarks Act 1999 is a pivotal provision that grants the
defendant the right to apply for a stay of the suit proceeding when a
rectification petition is filed before the IPAB. This provision recognizes the
potential for disputes over the validity of registered trademarks and seeks to
strike a balance between the interests of the plaintiff and defendant. It allows
the defendant to halt the Suiy proceedings temporarily, awaiting a decision by
the IPAB on the rectification petition, which may question the validity of the
plaintiff's registered trademark.
The Recent Challenge:
In this recent case under discussion, the defendant exercised their right under
Section 124 to apply for a stay of the suit proceedings. However, their
application was rejected, and the matter was brought before the Hon'ble Division
Bench of Telangana High Court for review. The crux of the challenge lay in the
Division Bench's analysis of whether the defendant had prima facie satisfied
that the registered trademark of the plaintiff was invalid.
The Division Bench's Decision:
The Hon'ble Division Bench's decision was predicated on a meticulous examination
of the contents of the defendant's written statement. Their primary conclusion
was that the defendant had failed to prima facie establish that the plaintiff's
registered trademark was invalid. This assessment was pivotal in their rejection
of the stay application.
Analysis and Implications:
The decision of the Hon'ble Division Bench raises important questions and offers
valuable insights into the interpretation and application of Section 124 of the
Trademarks Act 1999. "Firstly, it underscores the significance of the
defendant's burden of establishing a prima facie case for the invalidity of the
Moreover, the decision reaffirms the principle that a stay of suit proceedings
is not to be granted automatically merely because a rectification petition has
been filed. The courts are tasked with ensuring that the defendant's claim of
trademark invalidity is credible and compelling enough to warrant a stay.
The Concluding Note:
The recent decision by the Hon'ble Division Bench of the Telangana High Court
provides a nuanced understanding of the interplay between Section 124 of the
Trademarks Act 1999 and the stay of suit proceedings. It emphasizes the
importance of a defendant's burden to establish a prima facie case for trademark
invalidity and reinforces the principle that such stays are not to be granted as
a matter of routine.
The Case Law Discussed:
Case Title: Chirec Public School vs Shri Shakti Schools Pvt. Ltd.
Date of Judgement/Order:30/10/2023
Case No.Civil Revision Petition
Neutral Citation No: N.A.
Name of Hon'ble Court: High Court of Telangana
Name of Hon'ble JudgeChief Justice Alok Aradhe and Shravan Kumar.
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