The trial court must only record prima facie satisfaction regarding the invalidity of a trademark under Section 124 of the Trademarks Act without detailed evaluation of evidence.

ORDER :

Mr. Vinit Kumar Mathur, J. - Heard learned counsel for the parties.

2. The present writ petition has been filed against the order dated 19.10.2023 passed by the learned Additional District and Sessions Judge, Mawli, District Udaipur in Civil Suit No.62/2022 (17/2018), whereby the application preferred by the petitioner under Section 124 of the Trademarks Act, 1999 (hereinafter referred to as the 'Act of 1999') has been rejected.

3. Briefly noted the facts giving rise to the present writ petition are that the respondent-plaintiff filed a suit for infringement and passing off of its registered label trademarks (1961814 & 2551769) before the learned trial court. In the suit filed by the respondent-plaintiff, the summons were issued. The petitioner-defendant filed written statement to the suit preferred by the respondent-plaintiff. The trial court framed the issues on 09.10.2022. Thereafter, on the application moved by the respondent-plaintiff as well as by the petitioner-defendant, an additional issue was framed by the trial court on 23.02.2023. After framing of the issues by the learned trial court, the petitioner preferred an application under Section 124 of the Trademarks Act, 1999 for staying the suit proceedings on the ground that the petitioner proposed to file a rectification application against the Trademarks Nos.1961814 & 2551769 of the respondent-plaintiff. On the application, the learned trial court heard the counsel for the parties and rejected the same vide order dated 19.10.2023. Hence, the present writ petition has been filed.

4. Learned counsel for the petitioner submits that the learned trial court has committed an error in passing the order dated 19.10.2023 as the specific provisions of Section 124 (1) (ii) have not been taken note of while appreciating the facts in the present case. Learned counsel submits that the trial court was under an obligation to prima facie get itself satisfied for tenability of the submissions made in the written statement as well as in the application preferred under Section 124 with respect to the rectification application and proceedings to be undertaken by the petitioner before the appropriate forum. He submits that in paragraph 2 and 2-4 of the written statement, the basic foundation has been laid by the petitioner with respect to the plea of validity of the rectification application to be preferred before the appropriate forum. He, therefore, submits that the learned trial court has committed an error while not appreciating the contentions raised by the petitioner in the written statement with respect to the prima facie tenability of the plea of invalidity of the Trademark used by the plaintiff-respondent. He, therefore, prays that the writ petition may be allowed and the order dated 19.10.2023 may be quashed and set aside.

5. Per contra, the learned Sr. Counsel for the respondent vehemently opposed the submissions made by the counsel for the petitioner and submits that the learned trial court has dealt with the issue in detail and has rightly come to the conclusion that prima facie tenability of the submissions made before the trial court in the written statement is not made out to bring home the case of the petitioner under the ambit of Section 124 (1) (ii) and, therefore, the contentions raised by the petitioner in the written statement are not sufficient to satisfy the mandate of prima facie tenability of the contentions with respect to the invalidity of the trademark of the plaintiff-respondent to be canvassed in the rectification application to be preferred before the appropriate forum. The learned counsel submits that the learned trial court has taken note of the submissions and has rightly come to the conclusion that the same are not sufficient for prima facie satisfying the trial court regarding the tenability of the rectification application before the appropriate forum.

6. Learned Sr. Counsel further submits that Section 124 is applicable only in the cases where the