The right to cancel a trademark under Section 57 of the Trade Marks Act is independent of ongoing infringement suits and remains available for invocation regardless of related Section 124 implications.

JUDGMENT

C. Hari Shankar, J. (Oral)

1. This petition has been preferred by Anubhav Jain, one of the Directors in M/s. Jain Shikanji Private Limited ("JSPL", hereinafter) under Sections 57¹ and 125² of the Trademarks Act, 1999 ("the Act", hereinafter), seeking cancellation of Certificate No. 2772286 dated 18th June 2021, whereby the device mark was permitted to be registered in favour of Respondent 1. Consequently, rectification of the register of the trademarks, by removing, therefrom, the said registered trademark of Respondent 1 has also been sought.

2. Respondent 1 raised a preliminary objection to the maintainability of the present suit, predicated on Section 124 of the Trademarks Act. By order dated 5th September 2022, this Court directed that the said objection would be taken up and decided in the first instance.

3. I have heard Mr. Gaurav Barathi, learned Counsel for Respondent 1 and Ms. Kangan Roda, learned Counsel for petitioner at length, on the said objection as raised by Respondent 1 and proceed to decide the objection by this order.

4. The circumstances in which the aforesaid objection has been raised by Respondent 1, have, in the first instance, to be noted. On 23rd September 2021, Respondent 1 filed CS (Comm) 171/2021 against the petitioner before the learned Commercial Court, Karkardooma ("the learned Trial Court", hereinafter), alleging that the manner in which the petitioner was using the mark "JAIN SHIKANJI" was same as plaintiff's registerered mark "JAIN SHIKANJI". An application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutary injunction was also filed by Respondent 1 in the said suit.

5. By order dated 5th November 2022, the learned Trial Court allowed Respondent 1's application under Order XXXIX Rules 1 and 2 of the CPC and passed an interlocutary order of injunction against the petitioner. The petitioner has challenged the said decision by way of FAO (Comm)185/2022, which is presently pending before a Division Bench of this Court. Admittedly, no interlocutory orders have been passed in the said appeal, till date.

6. While proceedings emanating from CS (Comm) 171/2022 stood thus, the petitioner instituted the present petition before this Court under Section 57 of the TradeMarks Act, seeking, as already noted, cancellation of the registration granted to the trademark of Respondent 1 and consequent rectification of the trade mark register.

7. Mr. Barathi, learned Counsel for Respondent 1 contests the maintainability of the present petition, relying for the said purpose, on Section 124 of the Trademarks Act.

8. Section 124 of the Trademarks Act sets out a specific scheme. Plainly read, it applies only where there is, to begin with, a suit, alleging infringement of trademark, pending before a Civil Court. Mr. Barathi submits that CS (Comm) 171/2021 is the suit, instituted by Respondent 1 against the petitioner, on the basis of which he invokes Section 124.

9. Section 124 proceeds to envisage two situations, under clauses (a) and (b) of sub-section 1 thereof. Of these, Mr. Barathi concedes that Clause (b) does not apply.

10. Clause (a) of Section 124(1) applies where, in a suit for infringement of a trademark, the defendant pleads that registration of the plaintiff's trade mark is invalid. In CS (Comm) 171/2021, JSPL is the defendant and Respondent 1 is the plaintiff.

11. In order for Section 124(1)(a) would apply, therefore, it would be necessary for JSPL, as the defendant in CS (Comm) 171/20