Calcutta & Delhi HC Diverge on Trademark Stay Requests

Split in Jurisprudence on Stay of Infringement Suits

A growing divergence in judicial interpretation has emerged between the Calcutta and Delhi High Courts concerning the effect of non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 on concurrent infringement suits. The key issue: whether such proceedings constitute 'rectification proceedings' under Section 124, which empowers the registrar or IPAB to stay infringement actions.

The Calcutta High Court has held that Section 47 applications amount to rectification proceedings, warranting a stay to avoid conflicting outcomes. In contrast, the Delhi High Court has ruled that mere filing of a non-use petition does not automatically invoke Section 124 protections, especially if the challenge lacks prima facie merit or is tactical.

This split creates strategic complications for litigants. Defendants may forum-shop to seek stays, while plaintiffs face inconsistent enforcement landscapes. The statutory language of Section 124 refers to proceedings before the Registrar or IPAB, raising threshold questions about whether private cancellation petitions suffice to trigger its operation.

Practitioners must now assess jurisdiction-specific precedents when advising clients on enforcement or defence strategies. The lack of a settled rule increases the risk of parallel proceedings and inconsistent rulings. A unified interpretation from a higher court may be needed to resolve this fragmentation.