The court has the power to stay a suit for infringement of a trademark where the validity of the registration of the trademark is challenged by the defendant and the defendant's grounds for rectification are prima facie tenable.

( 1 ) UNDER the provisions of Section 111 of the Trade and Merchandise Marks Act, 1958 the Court has the power and the duty. to Stay the plaintiff s suit where the Validity of the registration of the trade mark is questioned by the defendants. Relevant Section 111 reads as under : Section III (1) Where in any suit for the infringement of a trade mark,

(A) the defendant pleads that the registration of the plaintiff s trade mark is invalid; or

(B) the defendant raises a defence under clause (d) of sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendants trade mark; the Court trying the suit (hereinafter referred to as the court), shall.

IF any proceedings for rectification of the register in relation to the plaintiff s or defendant s trade mark are pending before the registrar or the High court stay the suit pending the final disposal of such proceedings;

IF no such proceedings are pending and the Court is satisfied that the plea regarding the in- tendant s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of there months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. This provision requires interpretation in the application of the defendant (1. A. 79 of 1985) filed during the pepdenev of the plaintiff s suit seeking the decree of perpetual injunction restraining the defendants from issuing the Trade Mark steel Bird in relation to oil, air and fuel filters and other motor parts. which is an infringement of plaintiff s registered trade. Markes. The defendant has alleged that in para No. 3 (d) of the plaint the plaintiff has specifically relied upon the registered trade mark No. 252967b in Class 7 as of 21-10-1968, in respect of oil and fuel fitters being elements. in the lubrication system of the internal combustion engines; that the said registration is the main basis of their suit; that the defendant has. filed the written statement and has challenged the validity o{ the said registered trade mark ; that the defendant honestly and bona fide adopted the trademark steel Bird in the year 1964 and has been using the same continuously and extensively; that the defendant is the registered proprietor of the said trade mark under No. 274111 in class (II) and No. 278745 in class 12 under the provision of Trade and Merchandise Marks Act; that the defendant is also the registered owner of copyright in the Carton entitled steel Bird under No. A-3976 69 under the Provisions of the Copyright Act, 1957; that the said carton entitled steel Bird with the picture of dots thereon was honestly adopted by the defendant and has been used continuously and extensively; that the picture of dots on the carton has a purely descriptive significance, as the. article packed in the carton is filter which processes dots; that the trade mark steel Bird of the defendant is absolutely different and distinct from the alleged trade mark elofic of the plaintiff: that the plaintiff however. by virtue of the registration referred to above in clause. 7 on the carton entitled elofic with picture of dots thereon, claims to be entitled to the exclusive use of. the picture of dots on the carton, to which he is not. entitled under the law; that the said picture of dots being descriptive and amounting to a bona fide description of the article packed therein, cannot become the exclusive property of the plaintiff, that it belongs to all and is open. to all traders to denote their article packed in their carton; that in the circumstances, the said registration obtained by the plaintiff is absolutely illegal, unlawful and invalid and is liable to be removed rectified , that the defendant has already filed a cancellation petition feeing C. O. No. 1711983 pending before this court which is based on strong, valid and appealing grounds and has every possi