The Delhi and Calcutta High Courts differ on whether non-use cancellation under Section 47 of the Trade Marks Act constitutes 'rectification' under Section 124. The divergence impacts whether infringement suits can be stayed pending trademark validity challenges.
Conflicting Judicial Views on Scope of 'Rectification Proceedings'
The Delhi High Court and Calcutta High Court have adopted divergent interpretations on whether non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 amount to ‘rectification proceedings’ under Section 124, raising significant procedural consequences for pending infringement suits. While the Calcutta High Court has held that Section 47 proceedings are encompassed within Section 124, permitting a stay of infringement actions, the Delhi High Court has refrained from extending Section 124’s ambit to such cancellations.
Statutory Interpretation and Practical Impact
Section 124 allows the Intellectual Property Appellate Board (IPAB) or courts to rectify the register by removing or varying entries. The key issue is whether initiation of a Section 47 proceeding — which allows removal of a mark for non-use — triggers automatic suspension of parallel litigation under Section 125. The Calcutta view supports judicial efficiency by avoiding inconsistent outcomes, whereas the Delhi approach treats Section 47 proceedings as administratively distinct unless formal rectification is initiated.
Legal practitioners must now assess jurisdiction-specific risks when litigating trademark infringement. In jurisdictions following the Calcutta precedent, defendants may seek stays by initiating Section 47 applications, whereas in Delhi, such attempts may be rejected absent a formal rectification petition. The split underscores the need for legislative or appellate clarity.
Citations
- Trade Marks Act, 1999, Sections 47, 124
