The validity of registration of the trademark should be decided first in the rectification petition before the infringement action is decided, and the procedure can be tailored to meet the specific requirements of the proceedings while adhering to the statutory mandate.

JUDGMENT

(Prayer: This application has been filed under Order XVI Rule 8 of the Madras High Court Original Side Rules read with Section 124(1)(a)(i) of the Trade Marks Act, 1999, read with Section 151 of the Code of Civil Procedure, 1908 to stay the suit in C.S.No.163 of 2018 pending the final disposal of the rectification proceeding in (T)OP(TM) No.32 of 2023.)

1. Learned counsel for the defendant/petitioner in the connected rectification petition [(T)OP(TM)/32/2023] seeks a stay of C.S.No.163 of 2018 because a defence was raised in the suit that the registration of the trademark is invalid and a rectification petition was filed. Although both the rectification petition and the suit are pending before this Court, learned counsel contends that the statute mandates that the rectification petition be decided first and that the suit be stayed until then. In support of this contention, he places emphasis on sub-sections (1) and (4) of section 124 of the Trade Marks Act, 1999 (The Trade Marks Act). Section 124 is set out below:

"(1) Where in any suit for infringement of a trade mark-

(a)the defendant pleads that registration of the plaintiff''s trade mark is invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant''s trade mark,

the Court trying the suit (hereinafter referred to as the Court) shall,-

(i) if any proceedings for rectification of the register in relation to the plaintiff''s or defendant''s trade mark are pending before the Registrar or the High Court, stay the suit pending disposal of such proceedings;

(ii) if no such proceedings are pending and the Court is satisfied that the plea regarding the invalidity of the registration of the plaintiff''s or defendant''s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.

(2) If the party concerned proves to the Court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the Court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the Court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the Court shall proceed with the suit in regard to the other issue in the case.

(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order insofar as it relates to the issue as to the validity of the registration of the trademark.

(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.”

2. He also places reliance upon an order of this Court dated 06.12.2019 in A.No.8547 of 2019 in C.S.No.410 of 2017, particularly paragraphs 18 and 19 thereof. He further relies upon the judgment of the Supreme Court in Patel Field Marshal Agencies and another -vs- P.M.Diesels Limited and others (Patel Field Marshal), reported in(2018) 2 SCC 112, particularly paragraph 37 thereof, where the Court, in relevant part, held that "the issue of invalidity which would go to th