As Calcutta and Delhi High Courts diverge on whether Section 124 covers Section 47 cancellation, key questions arise: Does rectification include non-use proceedings? Can an infringement suit be stayed during cancellation?
Conflict Emerges Over Interpretation of 'Rectification Proceedings' Under Section 124
A growing divergence between the Calcutta and Delhi High Courts has surfaced over whether 'rectification proceedings' under Section 124 of the Trade Marks Act, 1999 include non-use cancellation petitions under Section 47. The issue directly impacts whether pending infringement suits can be stayed pending the outcome of a non-use challenge.
The Delhi High Court has treated Section 47 proceedings as falling within the ambit of Section 124, allowing for potential stays of infringement actions. In contrast, the Calcutta High Court has taken a narrower view, holding that only post-registration rectification petitions (e.g., on grounds of fraud or invalidity) qualify as rectification proceedings under Section 124, excluding simple non-use cancellations.
The statutory language of Section 124 refers to proceedings before the Registrar 'for the rectification of the register', which traditionally includes cancellation petitions. However, the lack of explicit reference to Section 47 creates uncertainty. The conflicting interpretations affect litigation strategy: defendants may prefer jurisdiction where stays are more readily granted, while rights holders may seek faster enforcement elsewhere.
Practitioners must now assess jurisdiction-specific trends when advising clients on defensive or enforcement actions. A uniform judicial approach is needed to prevent forum shopping and ensure consistent application of trademark law across jurisdictions.
Citations
- Trade Marks Act, 1999, Sections 47, 124
