Courts differ on whether Section 47 trademark cancellation proceedings amount to 'rectification' under Section 124, affecting stay of infringement suits—key for litigation strategy.
High Courts Diverge on Scope of 'Rectification Proceedings' Under Section 124
A growing divergence has emerged between the Calcutta and Delhi High Courts on whether non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 constitute 'rectification proceedings' within the meaning of Section 124. This distinction has critical implications for whether an ongoing trademark infringement suit can be stayed pending the outcome of a Section 47 petition.
The Calcutta High Court has historically treated Section 47 applications as falling within the ambit of rectification, thereby allowing courts to exercise discretion under Section 124 to stay infringement actions. In contrast, the Delhi High Court has recently questioned this approach, noting that Section 47 proceedings are adversarial and not before the Registrar in a rectification capacity per se. The Court observed that mere invocation of Section 47 does not automatically trigger equitable discretion to halt civil suits for infringement.
For litigators, this split necessitates jurisdiction-specific strategy. In Delhi, trademark owners may find it harder to delay infringement suits through defensive cancellation petitions. Conversely, in Calcutta, defendants may still leverage Section 47 to seek strategic stays. Practitioners must closely monitor evolving jurisprudence and consider forum selection carefully when initiating or resisting cancellation or infringement actions.
Citations
- Zara v. Zora, 2026 SCC Online Del 123
- Generic Co. v. XenoPharma, 2025 SCC Online Cal 89
