The court emphasized that the validity of a trademark must be resolved by the Tribunal, and interim relief can be considered despite the challenge pending resolution of validity.

ORDER

(Through video conferencing)

1. Pursuant to proceedings dated 16.7.2021 on behalf of the defendant has been filed an application seeking leave to file rectification petition with an application under Section 124 of the TRADE MARKS ACT , 1999, which application under Section 124 (1)(a)(ii) of the TRADE MARKS ACT , 1999 is IA No. 9591/2021 filed on behalf of the defendants seeking to challenge the validity of the registration of the plaintiffs trademark under application No. 2499660 for the trade mark " For the Bold" and seeks the framing of an issue of the invalidity of the impugned trade mark registration at an appropriate stage.

2. On behalf of the plaintiffs' it has been urged that IA bearing No. 7170/2021 is listed for consideration today and that the Court may proceed to hear the same.

3. At the outset a submission was made on behalf of the defendants that in as much as the application IA No. 9591/2021 seeking leave to file the rectification petition challenging the validity of the registration of the trade marks has been filed, the plaintiffs' prayer cannot be considered until consideration of the submission made by the defendant challenging the validity of the registration of the plaintiffs' trademark qua which a submission was made on behalf of the plaintiff by learned senior counsel for the plaintiffs that in terms of Section 124 (5) of the TRADE MARKS ACT , 1999 hearing of the application under Order 39 Rule 1 & 2 of the CPC, 1908 is not precluded in terms of the said provision which provide as under:

124. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

4. inter alia on behalf of the defendants, reliance has been placed on the verdict of the Division Bench of this Court in Patel Field Marshal Agencies and Another V. P.M.Diesels Limited And Others, (2018) 2 SCC 112 with specific observations on para 34 thereof which read to the effect:

"34.The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive."

submitting inter alia to the effect that the aspect of the validity of the trademark of which an infringement is stated to have been made by defendant has essentially to be considered at the stage of consideration of the interim relief, if any, is sought and even if such an issue is not raised by an application seeking leave to file an application under Section 124 of the TRADE MARKS ACT , 1999,the Court has essentially to consider the said