Divergent Judicial Approaches on Stay of Infringement Suits Under Section 124

Split Jurisprudence on Stays in Trademark Infringement Suits

A growing divergence in Indian trademark law has emerged between the Delhi and Calcutta High Courts over the invocation of Section 124 of the Trade Marks Act, 1999 in cases involving non-use cancellation petitions under Section 47. The central question is whether the pendency of a rectification proceeding mandates a stay of parallel infringement litigation.

Delhi vs Calcutta: Contrasting Reasoning

The Delhi High Court has generally declined to grant automatic stays, holding that infringement and rectification are distinct remedies serving different purposes. Protection of proprietary rights during litigation, the Court argues, should not hinge solely on vulnerability to cancellation. Conversely, the Calcutta High Court has taken a more cautious approach, often staying suits when serious challenges to registration are pending, citing judicial economy and avoidance of contradictory outcomes.

The statutory language of Section 124 allows courts discretion to stay infringement suits if “the validity of the trademark is in question.” The absence of guiding principles on what constitutes a “serious” challenge has led to forum shopping and procedural uncertainty.

Implications for Litigation Strategy

Practitioners must now account for forum-specific tendencies when drafting enforcement or defense strategies. Defendants may prefer initiating Section 47 proceedings in Calcutta to leverage stay-friendly jurisprudence, while plaintiffs should anticipate such maneuvers and prepare counterarguments rooted in established user rights and irreparable harm. Harmonization through appellate intervention appears increasingly necessary.