The main legal point established in the judgment is the importance of timely filing of rectification proceedings before the Intellectual Property Appellate Board (IPAB) as per the provisions of Section 124 of the Trade Marks Act, 1999, and the consequences of failing to do so.

NAJMI WAZIRI, J.

I.A. 19187/2014

1. This application seeks stay of the suit under Section 124 of the Trade Marks Act, 1999 (for short ‘Act’) till the time rectification proceedings initiated by the defendants before the Intellectual Property Appellate Board (IPAB) apropos trade mark registration Nos. 1166568, 1166569 and 1166570 are finally adjudicated.

2. Mr. Hemant Singh, the learned counsel for the applicants/defendants submits that the scheme of Section 124 of the Act is that a suit for infringement of trade mark should be stayed for awaiting the outcome of rectification proceedings. In support of this contention, he relies upon the dicta of this Court in Puma Stationer P. Ltd. and Anr. v. Hindustan Pencils Ltd. 2010 (43) PTC 479 (Del.) (DB) which held thus:

“We are of the view, therefore, that the law on this issue is quite well settled. Where an application for rectification/cancellation of a registered trade mark is pending before the statutory authority, the High Court is obliged to stay further proceedings in the suit pending before it pursuant to Section 124(1) of the Trade Marks Act, 1999”

3. In response, Mr. J. Sai Deepak, the learned counsel for the plaintiff/non-applicant submits that (i) the application is not maintainable and is only a ruse to delay the proceedings; (ii) even in appeal against the interim injunction order, the defendants were given only a limited relief to use the name of B.D. Khanna Jewellers as against M/s. Bhagwan Dass Khanna Jewellers used by the plaintiff; (iii) the plaintiff would have no objection to the defendants’ independent right to seek rectification/revocation before the IPAB unrelated to the present suit; and (iv) the defendants ought to have filed rectification proceedings within three months from the date when the issue apropos validity of the plaintiff’s trade mark was framed.

4. In rebuttal, Mr. Singh submits that after issues were framed on 02.01.2014, on four occasions, i.e., 17.01.2014, 13.02.2014, 02.04.2014 and on 20.05.2014, the matter did not proceed further as there was an endeavour to amicably resolve the disputes; finally on 26th May, 2014, it was recorded that there was no possibility of an amicable settlement; since the parties were engaged in settlement efforts, the period for preferring rectification proceedings before the IPAB must be deemed to have been extended. He further submits that if 26th May, 2014 is taken as the cut off date, then the application for rectification, which was filed on 17th September, 2014, was only delayed by 20 days. He thus, submits that a mere delay of 20 days may be condoned by the Court for the purposes of achieving the object under Section 124 of the Act.

5. Section 124 of the Act, insofar as it is relevant, reads as under:

“124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.-

(1) Where in any suit for infringement of a trade mark –

(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid, or

(b) the defendant raises a defense under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark,

the court trying the suit (hereinafter referred to as the court) shall,-

(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings.

(ii) If no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the farming of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as i