Courts differ on whether Section 124 of the Trade Marks Act allows stay of infringement suits during Section 47 cancellation proceedings, creating a split on the scope of 'rectification proceedings'.
Conflicting Approaches on Stay of Infringement Suits During Cancellation Proceedings
A divergence in judicial interpretation has emerged between the Delhi and Calcutta High Courts regarding the applicability of Section 124 of the Trade Marks Act, 1999, to proceedings under Section 47 for non-use cancellation. The key issue is whether an ongoing cancellation petition constitutes a 'rectification proceeding' that can trigger an automatic stay of a parallel trademark infringement suit.
The Delhi High Court has held that Section 124, which bars courts from entertaining infringement suits when rectification is pending, does not apply to non-use cancellation petitions under Section 47, as these are not rectification proceedings per se. In contrast, the Calcutta High Court has taken a broader view, treating such petitions as falling within the scope of rectification, thereby mandating a stay of infringement actions.
Implications for Litigation Strategy
This split creates strategic considerations for litigants: defendants in infringement suits may prefer filing Section 47 petitions in Calcutta or other courts following a broad interpretation to secure a stay, while plaintiffs may seek to challenge jurisdiction or argue for a narrow reading of Section 124. Until harmonized, this inconsistency may lead to forum shopping and procedural delays.
Citations
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