The main legal point established in the judgment is that the provisions of Section 124 of the Trade Marks Act, 1999 allow for the stay of proceedings in a trademark infringement suit and do not preclude the court from considering interlocutory orders during the period of the stay.

IA No. 1942/2016

1. The defendant has filed the above application under Section 124 of the Trade Marks Act, 1999 (hereafter ‘the Act’), inter alia, praying as under:-

“a. stay all further proceedings in the above suit till final disposal of ORA No. 334/2012/TM/CH pertaining to trademark No. 799246 in class 30 in the name of the Applicant and ORA No. 130/2011/TM/CH pertaining to trademark No. 597154 in class 30 in the name of the Plaintiff pending before the Intellectual Property Appellate Board;”

2. The plaintiff has filed the above-captioned suit, inter alia, for a decree of permanent injunction restraining infringement of its trademark as well as a decree restraining passing off and for rendition of accounts.

3. The dispute between the parties, essentially, relates to the trademark ‘HERITAGE’. The plaintiff sells rice, inter alia, under the aforementioned Trademark, ‘HERITAGE’ and the Trademark, HERITAGE (Label), has been registered under the Registration No. 799246 in class 30 in favour of the plaintiff. The defendant also is a registered proprietor of a Trademark, HERITAGE (Label) under the Registration No. 597154 with effect from 14.05.1993. Both the parties claimed to be the prior users of their respective trademarks.

4. Prior to institution of the suit, the plaintiff had filed an application (ORA No. 130/2011/TM/CH) for cancellation of the defendant’s registered trademark being Registration No. 597154 in Class 30 HERITAGE (Label).

5. After the suit was filed, the applicant/defendant also filed an application (Application No. ORA No. 334/2012/TM/CH dated 10.05.2012) for cancellation of the plaintiff’s trademark registered under the Registration No. 799246 in class 30.

6. In the aforesaid context, the applicant/defendant prayed that the proceedings in the present suit be stayed in terms of Section 124 of the Act.

7. Mr J. Sai Deepak, the learned counsel appearing for the plaintiff/non-applicant has resisted the aforesaid application. He submits that the rectification application filed by the applicant/defendant is not maintainable as the same was filed without seeking any permission from this Court. He contended that if the defendant raises a plea regarding validity of the registration of the plaintiff’s mark and if the Court finds the same to be prima facie tenable, the Court would then frame an issue to the aforesaid effect and permit the defendant to approach the Intellectual Property Appellate Board for rectification of the registration in favour of the plaintiff. He submitted that in the present case, the issues were framed on 08.10.2012 and no issue was framed with regard to the validity of the plaintiff’s trademark. Further, this Court had not permitted the defendant to file an application for rectification of the plaintiff’s trademark. He referred to the decision of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd.: (2018) 2 SCC 112 as well as the decision of a Coordinate Bench of this Court in Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad and Anr.: IA No. 14337/2017 in CS(OS) 3534/2012, decided on 04.12.2017 in support of his contention.

8. Mr Saif Khan, the learned counsel appearing for the applicant/defendant submitted that it was not necessary to go into the contentions advanced on behalf of the plaintiff considering that it was an admitted position that the plaintiff had filed an application for rectification in respect of the defendant’s trademark. He submitted that in view of the above and in terms of Section 124(1)(i) of the Act, the present suit is liable to be stayed as the proceeding regarding rectification of the defendant’s trademark were pending at the time of institution of the suit.

9. After some arguments, Mr J. Sai Deepak also conceded that the present suit is also liable to be stayed on account of the plaintiff’s application for cancellation of the defendant’s trademark, which was filed prior to the institution of the suit. He, however, stated that it would be necessary for t