High Courts examine whether Section 124 of the Trademarks Act can apply in Section 47 cancellation proceedings. The issue hinges on procedural fairness and protection against self-harm in trademark enforcement.
Section 124 in TM Cancellation Proceedings
Recent orders from various High Courts have raised the question of whether Section 124 of the Trademarks Act, 1999—providing that no statement or admission shall be taken as evidence against its maker unless it relates to a material fact—can be invoked in proceedings under Section 47 for cancellation of registration. Section 47 allows for removal of a mark on grounds including non-use or fraud, and the role of admissions made by proprietors during prosecution or opposition is gaining judicial attention.
The debate centres on whether statements made before the Trademark Registry can be used to establish bad faith or false claims in a cancellation petition. Courts have observed that Section 124 protects parties from being prejudiced by mere procedural admissions, particularly where such statements were not made with notice of potential legal consequence. However, where an admission relates to a substantive fact—such as non-use or false claims of proprietorship—it may still be weighed as evidence.
For trademark practitioners, this line of jurisprudence underscores the need for caution in drafting responses before the Registry. While procedural candour is encouraged, declarations regarding use, ownership, or intent must be carefully considered, as exceptions to Section 124 may apply in adversarial cancellation contexts. The evolving interpretation highlights the intersection of procedural fairness and evidentiary rigour in IP disputes.
Citations
- Section 124, Trade Marks Act, 1999
- Section 47, Trade Marks Act, 1999
