Divergent Views on Stay of Infringement Suits Under Section 124

Split Emerges on Automatic Stay of Infringement Suits Under TM Act

A growing divergence between the Calcutta and Delhi High Courts over the interpretation of Section 124 of the Trade Marks Act, 1999 has raised critical procedural questions in trademark litigation. The issue centres on whether the filing of a non-use cancellation petition under Section 47 automatically warrants a stay of a parallel infringement suit under Section 124.

The Calcutta High Court has held that rectification proceedings — including Section 47 petitions — do not automatically suspend infringement actions, emphasizing the statutory distinction between challenges to validity and claims of unauthorized use. In contrast, the Delhi High Court has, in certain orders, inclined toward staying infringement proceedings pending resolution of validity, citing judicial economy and the risk of contradictory findings.

This inconsistency creates uncertainty for trademark owners and alleged infringers alike. Until settled by a higher court or legislative clarification, practitioners must anticipate forum-specific strategies. In jurisdictions following Delhi’s approach, defendants may strategically file Section 47 petitions to delay infringement trials. However, courts are increasingly requiring a prima facie case, balance of convenience, and potential for irreparable harm before granting stays — aligning with principles of equitable discretion.