The main legal point established in the judgment is that the rectification application could be regarded as having been filed within the “time specified” or within such extended time as the court may for sufficient cause allow, and the period of 3 months stipulated in Section 124(1)(a)(ii) can be extended if there is sufficient cause shown for the delay in filing of the rectification application.

BADAR DURREZ AHMED, J.

CM No. 21715/2015 (exemption)

The exemption is allowed subject to all just exceptions.

FAO(OS) 551/2015 and CM No. 21714/2015

1. This is an appeal against an order dated 21.07.2015 passed by a learned Single Judge of this court in I.A. No. 19187/2014 which in turn was an application under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as the ‘said Act’) seeking stay of the suit till the time the rectification proceedings initiated by the appellants/defendants before the Intellectual Property Appellate Board (IPAB) with regard to the trade marks bearing registration numbers 1166568, 1166569 and 1166570 were finally adjudicated upon.

2. The learned Single Judge has rejected the application on the ground that the same was barred by limitation in view of the provisions of Section 124(3) of the said Act. It was held that no application had been made for rectification before the IPAB within the period of three months from the date of framing of issues and, therefore, the application was beyond time and could not be entertained.

3. The learned counsel for the appellants referred to the sequence of orders passed by the learned Single Judge in the suit. The issues were framed on 02.01.2014. Issue No. 7 specifically reads as under:-

“(vii) Whether the trade mark registrations 1166569, 1166570 and 1166568 pertaining to ‘BDK’ and device of the plaintiff are invalid registrations and liable to be cancelled? OPD”

It is evident from the above that a triable issue has been raised regarding the validity/invalidity of registration of the respondent’s/plaintiff’s registered trademarks. On 02.01.2014 when the issues were framed, the learned counsel appearing for the appellants/defendants submitted that the case, being a family matter, an attempt would be made to resolve the issues amicably. The learned counsel for the respondent/plaintiff had no objection to the same and, therefore, the matter was agreed to be listed on 17.01.2014 at 4 pm when the parties were directed to remain present in court. On 17.01.2014 as also on 13.02.2014 and 02.04.2014 the matter was adjourned at the joint request of the parties. It is evident that throughout this period, attempts were being made at resolving the issues amicably. In fact on 02.04.2014, the learned Single Judge had even heard the learned counsel for the parties in chambers as requested by them to attempt at resolving the disputes. It was once again adjourned on 02.04.2014 to 26.05.2014 for this very purpose. However, on 26.05.2014 it was reported to the learned Single Judge by the learned counsel for the parties that there was no possibility of an amicable settlement. Consequently, the matter was directed to be listed before the Joint Registrar on 18.09.2014. In the meanwhile, on 16.09.2015 the appellants/defendants had filed the rectification application before the IPAB.

4. We may also point out for the sake of completeness that while the parties were trying to settle their disputes amicably, the respondent/plaintiff had filed its affidavit by way of evidence on 01.05.2014.

5. It would be necessary to examine the provisions of Section 124 of the said Act. It is set out hereunder:-

“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 defence 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 plaintiff’s 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 pl