Section 124 of the Trade Marks Act, 1999 mandates the court to stay the proceedings in the suit if any proceedings for rectification of the register are pending, without drawing any distinction between proceedings on the ground of invalidity or otherwise.

JUDGMENT :

Rajiv Sahai Endlaw, J.

I.A. No. 3404/2013 (of plaintiff u/S. 124 of Trademarks Act, 1999)

1. The plaintiff in this suit for permanent injunction to restrain the defendants from infringing the trademark TOPSIN of the plaintiff and passing off their goods as that of the plaintiff seeks stay u/s 124(1)(i) of the Trade Marks Act, 1999 of proceedings in the suit as well as in the counter claim filed by the defendants. The counsel for both the defendants has contested the application on three grounds. Firstly, that for a stay to be applied for u/s 124(1) of the Act, the plea has to be of the invalidity of the registration of the other party; invalidity has to be interpreted narrowly and merely because a rectification application may be pending, is no ground to stay the proceedings; that there is no issue of invalidity of the trademark. Secondly, it is contended that stay of proceedings u/s 124(1)(i) of the Act can be sought only where the rectification proceedings are filed after the institution of the suit and not in a case as the present one, where the plaintiff had filed rectification proceedings prior to the institution of the suit. Lastly, it is contended that the plaintiff as well as the defendant, in the suit and counter claim respectively, besides claiming the relief against the infringement have also claimed the relief against passing off and which relief in any case would survive and cannot be stayed and the suit qua that has to go on.

2. The counsel for the defendants in support of the first of the aforesaid contentions has argued that rectification of a trademark can be sought either u/s 47 of the Act or u/s 57 of the Act. He has also invited attention to Section 31, particularly sub-section (2) thereof and contends that the word "invalidity" which has been not defined, has been used in the said provision and that the word "invalidity" in Section 124 has to take colour from Section 9 of the Act i.e. where the registration is sought to be revoked on absolute grounds for refusal as mentioned in Section 9 of the Act.

3. On the second contention, though the counsel does not controvert that there is no bar to institution of a suit after filing a rectification application but contends that the "pendency of the proceedings for rectification" referred to in Section 124(1)(i) ought to be only after the defendant in a suit has taken the defence of a registered trademark and cannot be where the plaintiff has already, prior to the institution of the suit, applied for rectification.

4. On the third contention, reliance is placed on Formica International Ltd. Vs. Caprihans (India) Pvt. Ltd. and Others, AIR 1966 Cal 247 and on Micolube India Ltd. Vs. Maggon Auto Centre and Another, (2010) 166 DLT 642 to contend that the stay u/s 124 of the Act would not apply to the relief claimed of passing off.

5. The counsel for the plaintiff in response has argued that Section 124 of the Act, after mentioning "invalidity" of the trademark, refers to the pendency of rectification proceedings, whether before the Registrar or before the Appellant Board. It is contended that the rectification proceedings are to be instituted before the Registrar only, unless a suit is pending and in which case as per Section 125, it can be instituted before the Intellectual Property Appellant Board (IPAB) alone. It is contended that from Section 124(1)(i) mentioning pendency of the proceedings either before the Registrar or the IPAB, it is evident that the institution of the rectification application can be prior to the institution of the suit also.

6. The counsel for the plaintiff has also argued that Section 31 applies qua descriptive trademark only, while the plea of the plaintiff of its trademark being a coined one.

7. It is also argued that the plea of the defendants in these proceedings, is of the registration of the plaintiff's trademark being invalid.

8. On the third contention, reliance is placed on the order dated 21st August, 2013 of this Court in CS(OS) No