The Defendant has filed application under Section 124 of the Trademarks Act
1999,seeking stay of the suit proceeding pending cancellation petition filed by
them against registered Trademarks of the Plaintiff.
The Defendant alleged that since they have filed cancellation Petition against
the registered Trademarks of the Plaintiff prior to filing of the suit, the Suit
proceeding is liable to be stayed.
However the Plaintiff alleged that the subject matter Suit is a composite Suit,
comprising of Trademarks Infringement and passing off both. Hence the suit can
not be stayed in so far as relief pertaining to passing off is concerned.
Let us see whether Section 124 of Trademarks Act 1999 is applicable to relief to
infringement and passing off or not? For ease in reference, Section 124 of
Trademarks Act 1999 is reproduced as under:
Section 124 in The Trade Marks Act, 1999
124. Stay of proceedings where the validity of registration of the trade mark is
- Where in any suit for infringement of a trade mark
- the defendant pleads that registration of the plaintiff's trade mark is
- the defendant raises a defense under clause (e) of sub-section (2) of
section 30 and the plaintiff pleads the invalidity of registration of the
defendant's trade mark, the court trying the suit (hereinafter referred to
as the court), shall:
- if any proceedings for rectification of the register in relation to the
plaintiff's or defendant's trade mark are pending before the Registrar or
the Appellate Board, stay the suit pending the final disposal of such
- if no such proceedings are pending and the court is satisfied that the
plea regarding the invalidity of the registration of the plaintiff's or
defendant's trade mark is prima facie tenable, raise an issue regarding the
same and adjourn the case for a period of three months from the date of the
framing of the issue in order to enable the party concerned to apply to the
Appellate Board for rectification of the register.
- If the party concerned proves to the court that he has made any such
application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand stayed until the
final disposal of the rectification proceedings.
- If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall proceed with the suit in
regard to the other issues in the case."
From bare reading of Section 124 of Trademarks Act 1999,It is apparent that this
provision is applicable only in relation to remedy pertaining to an action of
Infringement of Trademarks.
In so far remedy of passing off is concerned, this provision has no
applicability at all. The natural effect of this interpretation would be that
this provision can not stay the suit for passing off to be proceeded further.
The Hon'ble High Court of Delhi, after relying upon the Judgement passed by the
Hon'ble High Court of Delhi in Judgement reported as M/s. J.K. Oil Industries v.
M/s. Adani Wilmar Limited, 2018 SCC OnLine Del 9367, , which have reiterated
that afore mentioned principle, was pleased to stay the suit proceeding
pertaining to Infringement of Trademark. However the Suit proceeding, in so far
as it relate to passing off remedy, was ordered to be continued.
Thus if a suit comprised the relief of infringement of Trademark as well as
passing off both, by virtue of operation of Section 124 of Trademarks Act, the
suit ,in so far as it pertain to the remedy of infringement of Trademark, may be
stayed , however the suit ,in so far as it relate to the remedy of passing off,
will continue to proceed further.
Ajay Amitabh Suman,
Hon'ble High Court of Delhi
, Ph no: