Circuits differ on whether non-use cancellation under Section 47 constitutes 'rectification' under Section 124(1) of the Trade Marks Act. The Calcutta and Delhi High Courts have diverged on stay of infringement suits pending such proceedings.
Conflict Emerges on Jurisdictional Stay: Section 47 vs Section 124
A growing circuit split has emerged over whether cancellation proceedings under Section 47 of the Trade Marks Act, 1999 (non-use) qualify as 'rectification proceedings' under Section 124(1), thereby empowering the Intellectual Property Appellate Board (IPAB) or courts to stay infringement suits.
The Calcutta High Court has held that Section 47 proceedings are indeed rectification proceedings, and therefore, infringement actions may be stayed pending outcome of the cancellation petition, citing the broad remedial purpose of Section 124. In contrast, the Delhi High Court has distinguished Section 47 from traditional revocation or invalidity challenges, emphasizing that non-use cancellation does not question the validity of registration per se, and thus, does not automatically trigger a stay.
This divergence poses practical challenges for litigants. A party defending an infringement suit may file a Section 47 petition in a favourable jurisdiction to seek a stay, while trademark owners face inconsistent judicial treatment. The key issue is interpretive: whether 'rectification' includes de-registration for non-use or is limited to grounds affecting registrability at the time of grant.
Until harmonized by a higher court, practitioners must conduct jurisdictional risk assessments before initiating or responding to infringement suits. The answer to whether a Section 47 petition can delay an infringement proceeding will depend significantly on the bench hearing the application. A definitive ruling from the Supreme Court may be required to resolve this statutory ambiguity.
Citations
- Trade Marks Act, 1999, Sections 47, 124
