MR. JUSTICE S. RAVINDRA BHAT

1. This Full Bench is called upon to answer a reference made in terms of the order of the Division Bench dated 27.08.2012. The Division Bench, by its order of reference noticed a judicial conflict on the question whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 (hereafter "the Act") for rectification of a registered trademark, during the pendency of a suit. The first view is that proceedings for rectification of the defendant’s mark cannot be initiated without the prima facie satisfaction of the plea by the Court and that the suit cannot be adjourned or stayed in terms of Section 124(1)(b)(ii) of the Act to await the outcome of the rectification proceedings initiated by the plaintiff before the Intellectual Property Appellate Board (hereafter “IPAB”) - if the procedure outlined therein is not followed. The other view is that such proceedings (for rectification before the IPAB) can be initiated without the permission of the court trying the infringement suit and the consequence of not obtaining permission is only that the applicant cannot seek stay of suit.

2. Before discussion of the