Timely filing of rectification petitions under the Trademarks Act is mandatory; failure to comply without extension results in abandonment of the validity issue.

ORDER :

P.B. BALAJI, J.

1. The above Original Petitions have been filed for rectification of the Trademarks Register for the Registration Nos.5028086 & 5028084 in Class 44.

2. At the time of admission, Mr.Abishek Jenasenan, learned counsel for the first respondent would take preliminary contentions that the above Original Petitions are not maintainable in view of the orders passed by this Court in C.S. (Comm.Div) No.2 of 2023. Hence, I directed the learned counsel for the first respondent to file a counter affidavit limited to the Maintainability issue alone.

3. Today, I have heard Mr.R.Sathishkumar, learned counsel for Mr.Vijayan Subramanian, learned counsel for the petitioner and Mr.Abishek Jenasenan, learned counsel for the first respondent and Mr.M.Karthikeyan, learned Central Government Standing Counsel for the second respondent on the issue of maintainability of the above Original Petitions.

4. The learned counsel for the petitioner in the Original Petitions would submit that no doubt in C.S. (Comm.Div.) No. 2 of 2023, Applications were filed in A.Nos.2028 & 2029 of 2023 under Section 124 of the Trademarks Act, 1999 seeking a prayer to frame a preliminary issue regarding validity of the first respondent's Trademark registration. This Court was pleased to allow the said Applications on 19.02.2024, adjourning the suit for a period of three months to enable the defendant to apply to the IP Division of this Court and seek rectification of the plaintiff's registered Trademark 'VARAM' under Nos.5028086 and 4748384 and directed the suit to be listed after a period of three months.

5. It is the specific contention of the learned counsel for the petitioner, Mr.R.Sathishkumar, that by inadvertence, the rectification petitions were not filed within a period of three months from the date of order i.e., 19.02.2024 and they were filed within a period of three months from the date of receipt of the copy of the order on 08.07.2024. He would therefore submit when there is a provision for extension of time provided under Section 124 of the Trademarks Act, 1999 the Original Petitions cannot be held to be not maintainable. He would therefore pray for the rectification petitions to be admitted and heard in accordance with law.

6. Per contra, Mr.Abishek Jenasenan, learned counsel for the first respondent would submit that the order dated 19.02.2024 in Application Nos.2028 and 2029 of 2023, had clearly given a period of three months from the date of order and not from the date of the receipt of the order copy and the Applications ought to have been filed on or before 03.06.2024. When the rectification petitions were filed only on 08.07.2024, that too without the leave of the Commercial Court, the petitions were clearly not maintainable.

7. He would place reliance on the decision of the Hon'ble Supreme Court in the case of Patel Field Marshal Agencies and another Vs. P.M.Diesels Limited and others , reported in (2018) 2 SCC 112 , where the Hon'ble Supreme Court held that the plea with regard to the rectification would no longer survives.

8. I have carefully considered the submissions advanced by the learned counsel on either side. Section 124 of the Trademarks Act, 1999 is usefully extracted as hereunder:-

'124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

(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 defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,--

(i) if any p