The main legal point established in the judgment is that Section 124 of the Trade Marks Act, 1999 does not require prior permission of the court for initiating rectification proceedings before the IPAB.

VALMIKI J. MEHTA, J. (ORAL)

IA No.6857/2012(for condonation of delay) Delay is condoned. IA stands disposed of.

IA No.6856/2012

1. This is an application filed by the defendants under Section 124 of the Trade Marks Act, 1999 (hereinafter ‘the Act’) for stay of the proceedings initiated against them before the Intellectual Property Appellate Board (IPAB) by the plaintiff. The proceedings before IPAB seek rectification of the register qua the mark ‘Data Infosys’ of which registration was obtained by the defendants.

2. The present suit is a suit by the company-M/s. Infosys Technologies Ltd., an Indian multinational, claiming rights in the trade mark Infosys and seeking restraint etc against the defendants from infringing/using the same. During the pendency of the suit the defendants obtained registration of the trade mark ‘Data Infosys’. To incorporate this aspect in their written-statement, the defendants filed an amendment application. This application for amendment was allowed. Issues were also re-framed taking notice of the registration obtained by the defendants for the trade mark ‘Data Infosys’.

1. 3. The plaintiff thereafter initiated before IPAB proceedings under the Trade Marks Act, 1999 for rectification i.e. cancellation of registration obtained by the defendants with respect to the mark ‘Data Infosys’, and these are the proceedings before the IPAB that the defendants seek stay of by means of the present application under disposal.

2. 4. Learned counsel for the applicants/defendants has placed reliance upon the judgment of a Single Judge of this Court in the case of Astrazeneca UK Ltd. & Anr. vs. Orchid Chemicals & Pharmaceuticals Ltd. 2007 (34) PTC 469 (Del) as also a judgment passed by a Division Bench of this Court on 13.4.2012 in IA No.18464/2011 in CS(OS) No.1421/2005 titled as Astrazeneca UK Ltd. & Anr. vs. Orchid Chemicals & Pharmaceuticals Ltd., to canvass the proposition that since no prior permission had been obtained from this Court under Section 124 of the Act, proceedings for rectification with respect to a registered mark cannot be initiated or contained by the plaintiff. Learned counsel for the applicants/defendants has invited attention of this Court to the observations which have been made in the aforesaid two judgments to that effect. It is accordingly argued that once a Division Bench of this Court has clearly observed that a party to a suit cannot apply for rectification proceedings without permission of the Court, and since no prior permission of this Court was obtained, the proceedings initiated by the plaintiff before the IPAB ought to be stayed.

3. 5. In my opinion, the arguments urged on behalf of the defendants are wholly misconceived. This I say so because the provision of Section 124 of the Trade Marks Act, 1999 relied upon by the applicants/defendants, and the observations in the aforesaid two judgments in the case of Astrazeneca UK Ltd.(supra), provide for the situation where a person seeks to get proceedings in the suit (not IPAB proceedings) stayed on the ground that he has filed rectification proceedings after filing of the suit and thus in such situations to avoid bringing to a halt the progress of the suit, Courts have required that prior permission of the Court would have to be obtained where the suit is already pending and only thereafter the rectification proceedings are commenced. It is in that context that the aforesaid two judgments in the case of Astrazeneca UK Ltd.

(supra) hold that the proceedings in the suits cannot be stayed by invoking Section 124 of the Trade Marks Act, 1999 merely because rectification proceedings have been filed before the appropriate authority under the Trade Marks Act, 1999. What the defendants seek to do here is the opposite i.e. seek stay of the IPAB proceedings, and which is not the scope of Section 124. The judgments relied upon by the applicants/defendants do not hold that Section 124 of the Trade Marks Act, 1999 provides that proceedin