Section 124 of the Trade Marks Act mandates automatic stay of infringement proceedings when rectification is pending, and does not apply to passing-off claims.

JUDGMENT

Navin Chawla, J.

I.A. 10775/2018

1. The present application has been filed by the plaintiffs under Section 124 of the Trade Marks Act, 1999 (in short, `the Act') praying for the following reliefs:

"a) Allow the present application under Section 124 of the Trade Marks Act, 1999;

b) Frame the issue with respect to invalidity of registration number 482653 for the mark HARNIK CHUPA CHUP as claimed by the Plaintiff.

c) Stay the proceedings qua the case so far as it relates to infringement of trade mark in terms of section 124 of Trade Marks Act, 1999."

FACTUAL BACKGROUND

2. The present suit has been filed by the plaintiffs inter alia praying for a decree of permanent injunction restraining the defendants by themselves, their partners, directors, employees, agents and others acting on their behalf from infringing the plaintiffs' registered trade mark `CHUPA CHUPS', by manufacturing, marketing, selling and offering for sale their goods bearing the impugned mark `HARNIK CHUPA CHUP' or any other trade mark which is identical and/or deceptively similar to the plaintiffs' registered trade mark `CHUPA CHUPS'.

3. In the written statement filed on behalf of the defendant nos.1, 2 and 4 to 7, the said defendants have inter alia pleaded that as their mark `HARNIK CHUPA CHUP' is registered with the Registrar of Trade Marks, no suit for infringement of trade mark is maintainable under Sections 28(3), 30(2)(e) and 70(2)(i) of the Act. They further submit that the present suit is liable to be stayed in view of the operation of Section 124(1)(b)(i) of the Act, as the plaintiff no. 1 has filed a rectification application on 13.05.2011 (prior to the filing of the instant suit on 07.12.2012), seeking cancellation of the registrations granted to the defendants' trade mark `HARNIK CHUPA CHUP'.

SUBMISSIONS ON BEHALF OF THE PLAINTIFFS

4. In the present application, the plaintiffs reiterate that in view of the rectification petition having been filed by the plaintiffs, the present suit, insofar as it claims the relief of infringement, is liable to be stayed in terms of Section 124 of the Act. The plaintiffs, however, plead that in view of the judgment of the Supreme Court in Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors., (2018) 2 SCC 112, the said rectification petition can be decided only when an issue relating to the validity of the registration of the defendants' mark is framed by this Court. The plaintiffs/applicants therefore, pray for an issue with respect to the invalidity of registration no. 482653, granted for the mark `HARNIK CHUPA CHUP' of the defendants, be framed and the suit, so far as it relates to the relief of infringement of the trade mark, be stayed in terms of Section 124 of the Act.

5. In support of the above submission, the learned counsel for the plaintiffs places reliance also on the judgment of this Court in Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad and Ors., MANU/DE/5553/2017.

SUBMISSIONS ON BEHALF OF THE DEFENDANTS

6. On the other hand, the learned counsel for the defendant nos.1, 2 and 4 to 7 submits that in the present case, as the rectification application had been filed by the plaintiff no. 1 prior to filing of the present suit, in terms of Section 124(1)(b)(i) of the Act, there is an automatic stay of the suit pending disposal of such proceedings and there is no requirement of this Court to even consider whether the plea regarding the