Pradeep Nandrajog, J.

1. FAO (OS) No.717/2010 lays a challenge to the order dated December 15, 2010 passed by the learned Single Judge dismissing the appellant’s application under Section 124 of the Trade Marks Act, 1999 seeking stay of the CS (OS) No.2055/2001 filed by the respondent pending adjudication before the IPAB of rectification proceedings pertaining to the trademark ‘FT’ obtained by the respondent. FAO (OS) No.499/2011 challenges the order dated May 25, 2011 passed by the learned Single judge declining to settle the issue regarding invalidity of the trademark ‘FT’ of the respondent.

2. The respondent filed CS (OS) No.2055/2001 claiming to be the registered proprietor abroad as well as in India to the letter mark ‘FT’ alleging violation thereof by the appellant.

3. The plaint was instituted in the year 2001. In the written statement filed the appellant inter-alia pleaded that it was not using ‘FT’ as its trademark. It pleaded that the respondent’s trademark ‘FT’ was not distinctive and was invalid and hence was liable to be cancelled. It was pleaded that the appellant is taking steps to seek rectification of the respondent’s trademark registration No.468932. In the replication the respondent highlighted that the appellant had also sought registration of the letter mark ‘FT’ and thus could not plead that the said mark was incapable of being registered.

4. The suit meandered. The respondent took nearly 4 years to file a replication. Thereafter 3 years were spent before a mediator. Mediation failed. The year 2007 came into being.

5. It was only on April 23, 2007 that the appellant filed a rectification petition before IPAB seeking cancellation of respondent’s trademark ‘FT’ granted vide registration No. 468932.

6. An application was filed in the year 2010 praying for the suit to be stayed and needless to state Section 124 of the Trade Marks Act, 1999 was pressed into aid.

7. Concededly there are two limbs of Section 124; which would be as per clauses (i) and (ii) of sub-Section 1. The first is where the proceedings for rectification are already pending before IPAB when the suit is filed and the second is where no such proceedings are pending. In the former situation the suit has to be stayed without any discretion vested in the Court as held by a Full Bench of this Court in the decision reported as 2016 (65) PTC 209 (Delhi) (FB) Data Infosys Ltd. & Ors. Vs. Infosys Technologies Ltd. But in situation two, the suit has to be stayed upon the Court seized of the suit forming a prima-facie view on the tenability of the plea regarding invalidity of the plaintiff’s trademark. The suit has to be adjourned to enable the party concerned to apply to IPAB to cancel the registration granted.

8. As per the impugned order dated December 15, 2010, declining to stay the suit, the learned Single Judge has highlighted that the application for rectification was filed after six years of the suit being filed and stay was being sought after nine years of the suit being filed. The learned Judge has held that any prima-facie opinion regarding tenability of the plea of invalidity of the respondent’s trademark would invariably colour the competent tribunal’s view and tilt the proceedings unfairly in favour of either party. The learned Single Judge has opined that issue of tenability i.e. prima-facie view concerning temporary injunction would have a fine distinction viz-a-viz opinion qua tenability prima-facie formed for stay of the suit. The decision culminates by recording that taking the entire conspectus of the facts the Court was not inclined to stay the suit.

9. On May 25, 2011, while settling the issues, the Court did not settle any issue concerning validity of the registration of the trademark ‘FT’ obtained by the respondent on the ground that decision qua the same would be taken by IPAB.

10. Concededly proceedings before IPAB have concluded in favour of the respondent. Vide decision dated April 04, 2012 the mark ‘FT’, registration whereof