Delhi and Calcutta High Courts take conflicting views on whether Section 124 allows stay of infringement suits during non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999.
Split in Jurisprudence on Stay of Infringement Suits Under Section 124
A growing divergence between the Delhi and Calcutta High Courts has emerged over the interpretation of Section 124 of the Trade Marks Act, 1999, particularly regarding whether pending Section 47 cancellation proceedings (for non-use) can warrant a stay of trademark infringement suits.
The Calcutta High Court has held that rectification proceedings include non-use challenges under Section 47 and therefore fall within the ambit of Section 124, which permits courts to stay infringement actions pending outcome of such proceedings. In contrast, the Delhi High Court has declined to extend Section 124 to Section 47 cases, ruling that
the statutory language limits 'rectification proceedings' to those before the Registrar under Sections 57 and 63, excluding unilateral cancellation petitions.
This split creates uncertainty for litigants navigating parallel proceedings. Trademark practitioners must now consider forum strategy carefully, as outcomes may depend on jurisdiction. A harmonized interpretation from the Supreme Court may be required to resolve the conflict and ensure uniform application of the law.
Citations
- Re: Interplay of Sections 47 and 124, Trade Marks Act, 1999
