Courts diverge on whether Section 124 allows stay of infringement suits during non-use cancellation under Section 47. Calcutta and Delhi High Courts differ, raising uncertainty over procedural overlap in trademark law.
Split in Jurisprudence on Stays in Trademark Cancellation
A growing divergence has emerged among High Courts on whether rectification proceedings under Section 124 of the Trade Marks Act, 1999, include non-use cancellation petitions under Section 47—especially regarding the automatic stay of pending infringement suits. The Calcutta and Delhi High Courts have delivered conflicting rulings, creating uncertainty for litigants navigating concurrent trademark challenges.
The Calcutta High Court has held that Section 124(1) allows a stay of infringement proceedings only when a rectification petition is pending before the Registrar. However, it has refused to extend this to independent Section 47 cancellation actions unless formally treated as rectification. In contrast, the Delhi High Court has treated non-use cancellations as falling within the scope of Section 124, allowing stays to maintain the status quo during validity challenges.
This inconsistency affects strategic litigation planning, particularly where defendants file Section 47 petitions to delay infringement trials. The lack of a unified interpretation may lead to forum shopping. Until clarified by the Supreme Court, practitioners must assess jurisdiction-specific precedents and consider interim reliefs carefully. The issue highlights the need for procedural clarity in the intersection of administrative and judicial trademark remedies.
Citations
- Section 47, Trade Marks Act, 1999
- Section 124, Trade Marks Act, 1999
