The High Court of Judicature at Bombay has dismissed an interim application seeking to stay a long-standing trademark infringement suit against a Pune-based newspaper publisher, ruling that the request was filed significantly late and lacked a valid legal basis. Justice Gauri Godse, presiding over the matter, underscored that the defendants failed to demonstrate any prima facie case for invalidity regarding the plaintiffs’ registered trademarks , “Pune Mirror” and “Sunday Pune Mirror,” effectively clearing the way for the trial to proceed to final arguments .

The litigation, which originated in 2015 , involves three media companies— Metropolitan Media Company Ltd , Bennett Coleman and Company Limited , and Lexicon Media Private Limited —who collectively initiated the suit to restrain Kothrud Mitra Newspapers Pvt. Ltd. and its publisher, Sunnjoy Manohar Dahake, from using the names “Pune Mirror” and “KM Kothrud Mirror.” The plaintiffs contend that the defendants' unauthorized adoption of these marks constitutes both trademark infringement and an attempt to trade on the established reputation and goodwill associated with their own “Mirror” formative brands. The lawsuit seeks a permanent injunction and damages totaling ₹100 crore.

During the final stages of the suit, the defendants attempted to halt the proceedings by filing an application under Section 124 of the Trade Marks Act, 1999 . They argued that because they had initiated rectification proceedings before the Trade Marks Registry to challenge the plaintiffs’ registrations on the grounds of non-use , the court was legally obligated to stay the infringement trial until those challenges were resolved. However, the court found this attempt to be a procedural hurdle designed to delay a final adjudication.

Challenging the Validity of Registered Marks

The defendants’ defense rested heavily on their contention that they had complied with the Press and Registration of Books Act, 1867 , having received title verification from the Registrar of Newspapers for India (RNI) for their fortnightly newspaper. They maintained that the plaintiffs’ registrations were no longer bona fide and that the RNI had de-blocked certain titles due to the plaintiffs' alleged failure to complete registration requirements.

Justice Godse addressed these arguments by drawing a sharp distinction between registration under the Press and Registration of Books Act and the protections afforded under the Trade Marks Act. The court clarified that the regulatory verification of a newspaper title does not equate to a trademark right, nor does it provide a valid basis for challenging the validity of an existing, registered trademark. The court emphasized that the burden lies upon the defendant to raise a specific, substantiated plea of invalidity at the outset of the litigation—a step the publisher had omitted in its written statement .

Addressing the failure of the defense to establish a threshold of tenability, Justice Godse noted: “In the present case, the defendants have raised neither a low-threshold prima facie case nor any challenge to the validity of the plaintiffs' registered trade marks in relation to the provisions of the Trade Marks Act.”

Procedural Missteps in Seeking a Stay

A critical aspect of the court's reasoning involved the improper venue selected by the defendants for their rectification applications. Under the current legal framework, if a defendant questions the validity of a plaintiff’s registered trademark within an infringement suit, the challenge must be directed to the High Court through the prescribed judicial process, not to the Registrar of Trade Marks . The court observed that the defendants’ reliance on applications filed before the Registrar was legally ineffective, as that authority lacked the jurisdiction to determine the validity of the registration in the context of an ongoing civil infringement suit .

Furthermore, the court analyzed the timing of the request. The suit had already progressed through the framing of issues in 2020 , the recording of evidence, and the closure of trial proceedings. By attempting to introduce a plea of invalidity only at the stage of final arguments , the defendants were effectively seeking to revive an argument that had not been tested or even raised during the formative stages of the litigation. The court noted that allowing such a late-stage maneuver would run contrary to the objective of the Trade Marks Act, which aims to avoid unnecessary multiplicity and delay in legal proceedings.

Maintaining the Integrity of the Trial Process

The ruling reinforces the principle that parties cannot use interlocutory applications to bypass the established trial timeline unless there is a genuine, prima facie case that the registered mark is fraudulent, illegal, or lacking in bona fide usage for a continuous period as defined by law. The High Court rejected the notion that a mere assertion of invalidity in an application is sufficient to trigger the mandatory stay provisions under the law.

The court’s decision serves as a reminder to litigants that defenses regarding trademark invalidity must be pleaded with clarity and specificity. By failing to integrate these arguments into their written statement or to raise them during the evidentiary phase, the defendants could not rely on the pendency of external, administratively filed applications to stall the civil court's power to reach a final judgment.

The order concluded with a firm dismissal of the defendants' request. As the court stated: “The application is devoid of any merit.” With the interim application rejected, the suit has been ordered to be listed for final arguments before the assigned court, marking the next critical milestone in the decade-long intellectual property dispute. The outcome highlights the court's commitment to ensuring that infringement suits remain focused on their core merits, preventing procedural tactics from indefinitely shielding parties from accountability.