Calcutta and Delhi High Courts differ on whether Section 47 cancellation proceedings justify staying trademark infringement suits under Section 124. The split highlights uncertainty over the scope of 'rectification proceedings' and their impact on parallel litigation.
Split in High Courts Over Stay of Infringement Suits Under Section 124
A growing divergence has emerged between the Calcutta and Delhi High Courts on whether non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 constitute 'rectification proceedings' under Section 124, thereby warranting a stay of ongoing infringement suits. The split creates uncertainty in litigation strategy and forum selection for trademark disputes.
The Calcutta High Court has held that Section 47 proceedings, being corrective in nature, fall within the ambit of Section 124 and may justify adjourning infringement actions until the validity of registration is clarified. In contrast, the Delhi High Court has declined to grant automatic stays, emphasizing the distinct purposes of infringement and cancellation actions.
An infringement proceeding focuses on consumer confusion and immediate harm, while a Section 47 application challenges the continued validity of registration — both may proceed concurrently, the Court noted.
This dichotomy affects how parties litigate trademark disputes. Practitioners must now anticipate differing judicial attitudes based on jurisdiction. The lack of a unified approach may prompt appeals to higher courts or a referral to a larger bench for clarity. Strategic filing of cancellation petitions must consider not just substantive merits but also procedural implications in pending enforcement actions.
Citations
- Section 47 and Section 124 rulings, 2026
