Courts differ on whether Section 124 allows stay of infringement suits when a Section 47 cancellation petition is pending; Delhi and Calcutta High Courts take conflicting views.
Divergent Judicial Approaches Emerge on Stay of Infringement Suits Under Section 124
A split has emerged between the Delhi and Calcutta High Courts on whether rectification proceedings under Section 47 of the Trade Marks Act, 1999 invoke an automatic bar under Section 124 against continuation of infringement suits. While both provisions deal with trademark validity, the question is whether a pending non-use cancellation petition constitutes “proceedings... instituted before the Registrar” that would trigger a stay under Section 124.
The Calcutta High Court has held that Section 124 applies only when rectification is sought directly before the Intellectual Property Appellate Board (now IPAB) or the Registrar, and does not extend to Section 47 cancellation petitions. In contrast, the Delhi High Court has entertained arguments that such proceedings challenge the validity of the registration and thus warrant a stay of infringement actions pending resolution of validity.
This divergence creates uncertainty for litigants navigating parallel proceedings. Until harmonized by a higher court, trademark holders must anticipate forum-specific outcomes. Practitioners should carefully assess jurisdictional precedents when drafting pleadings and seeking interim relief. The issue may require authoritative clarification from the Supreme Court or a coordinated approach by the High Courts to ensure procedural consistency.
Citations
- Trade Marks Act, 1999, Section 124; Section 47
