Calcutta and Delhi High Courts differ on whether Section 47 cancellation triggers Section 124 stay. Courts remain split on whether non-use proceedings constitute 'rectification'.
Divided Views on Stay of Infringement Suits Under Section 124
A growing judicial divergence has emerged over whether non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 constitute 'rectification proceedings' under Section 124 — thus enabling a stay of parallel infringement actions.
The Calcutta High Court has taken the view that Section 47 proceedings are inherently rectification-related and therefore entitle the defendant to a stay under Section 124. In contrast, the Delhi High Court has held that mere filing of a Section 47 application does not automatically warrant a stay, especially where the challenger lacks clean hands or has delayed unreasonably.
This schism creates tactical complexity for litigants. Defendants may forum-shop for stays, while plaintiffs argue that infringement and validity are distinct issues. The conflict underscores the need for clarification from a coordinate bench or appellate intervention.
Until then, practitioners must carefully assess jurisdictional precedents when advising clients on concurrent trademark challenges and infringement suits.
Citations
- Trade Marks Act, 1999, Sections 47, 124
