1. Defendants in an infringement suit applied for a stay of proceedings pending their trademark rectification application, alleging non-use of the plaintiffs' registered trademarks. (Para 1 , 2 , 3 , 5 , 6 , 7 , 8 , 9 )
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2026 Supreme(Online)(Bom) 5065
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Gauri Godse, J
Metropolitan Media Company Ltd. – Appellant
Versus
Kothrud Mitra Newspapers Pvt. Ltd. – Respondent
INTERIM APPLICATION NO. 2031 OF 2026|COMMERCIAL (IP) SUIT NO. 230 OF 2015
Important Points
A suit for trademark infringement cannot be stayed under Section 124 of the Trade Marks Act if the plea of invalidity is not raised in the original pleadings and is only introduced via an application at the final argument stage.
Subject
Intellectual Property - Trade Mark
Act Referred
Headnote
(A) Trade Marks Act - Section 124 - Stay of Suit - The determination of whether a plea of invalidity is prima facie tenable for the purpose of staying a suit must be based on the rival pleadings (plaint and written statement). A plea of invalidity raised for the first time in an interim application at the stage of final arguments, without foundational pleadings, cannot be the basis for framing an issue or staying the suit. (Para 44, 49)
(B) Trade Marks Act - Section 125 - Rectification Jurisdiction - Where the validity of a registered trade mark is questioned in a pending infringement suit, the application for rectification must be filed before the High Court. Rectification applications filed before the Registrar of Trade Marks in such circumstances are not tenable and cannot be a ground to stay the suit under Section 124. (Para 39)
(C) Press and Registration of Books Act, 1867 - Interaction with Trade Marks Act - Registration of a title under the PRB Act is a separate statutory process and does not ipso facto constitute a plea of invalidity of a registered trade mark under the Trade Marks Act. A plea of invalidity on grounds such as non-use must be specifically framed with reference to the Trade Marks Act. (Para 48)
Issues: Whether the suit should be stayed under Section 124 of the Trade Marks Act, 1999, on the ground of pending rectification applications and a plea of invalidity raised at the final argument stage.
(B) Trade Marks Act - Section 125 - Rectification Jurisdiction - Where the validity of a registered trade mark is questioned in a pending infringement suit, the application for rectification must be filed before the High Court. Rectification applications filed before the Registrar of Trade Marks in such circumstances are not tenable and cannot be a ground to stay the suit under Section 124. (Para 39)
(C) Press and Registration of Books Act, 1867 - Interaction with Trade Marks Act - Registration of a title under the PRB Act is a separate statutory process and does not ipso facto constitute a plea of invalidity of a registered trade mark under the Trade Marks Act. A plea of invalidity on grounds such as non-use must be specifically framed with reference to the Trade Marks Act. (Para 48)
Issues: Whether the suit should be stayed under Section 124 of the Trade Marks Act, 1999, on the ground of pending rectification applications and a plea of invalidity raised at the final argument stage.
Legal Category Hierarchy
- practice and procedure
- intellectual property law
- statutory interpretation
Advocates:
For the Appellants/Petitioners: Rashmin Khandekar, Anand Mohan, Hardik Sampat, Charu Shukla, Kanan Soni
For the Respondents: Jehaan Mehta, Sujit Lahoti, Nidhi M. Jain
For the Appellants/Petitioners: Rashmin Khandekar, Anand Mohan, Hardik Sampat, Charu Shukla, Kanan Soni
For the Respondents: Jehaan Mehta, Sujit Lahoti, Nidhi M. Jain
Table of Contents
2. Defendants contended that they are entitled to a stay under Section 124 of the Trade Marks Act due to pending rectification; plaintiffs argued the application is mala fide and delayed. (Para 10 , 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20 )
3. The court found defendants failed to establish a low-threshold prima facie case of invalidity, failed to plead such grounds in their written statement, and invalidly moved the Registrar instead of the High Court. (Para 36 , 37 , 38 , 39 , 40 , 41 , 44 , 46 , 47 , 48 , 49 )
4. A stay under Section 124 of the Trade Marks Act requires a prima facie tenable plea of invalidity stemming from the pleadings, without which the court must refuse to frame an issue. (Para 22 , 23 , 25 , 26 , 44 , 45 , 46 , 49 )
5. The application for a stay of proceedings is rejected, and the suit is directed to proceed for final arguments. (Para 49 , 50 , 51 )
6. Can a stay of infringement proceedings be granted under Section 124 of the Trade Marks Act based on a pending rectification application before the Registrar?
No. Under Section 125, when the validity of a registered trademark is questioned in an infringement suit, the issue must be decided upon an application filed with the High Court, not the Registrar. An application pending before an incompetent authority is not a ground to stay the suit. (Para 39 )
7. Must a plea of invalidity of a registered trademark be specifically stated in the pleadings to warrant framing an issue under Section 124?
Yes. While the term plead does not restrict challenging validity to original pleadings, there must be a specific plea regarding invalidity. In the absence of such a plea raising a low-threshold prima facie case of invalidity, the court cannot frame an issue or stay the suit. (Para 23 , 44 , 47 , 49 )
8. What is the threshold for a court to frame an issue of invalidity under Section 124 of the Trade Marks Act?
The court must apply a low-threshold prima facie case test to determine if the claim of invalidity is false, frivolous, or untenable. If the plea satisfies this threshold, the court frames an issue and stays the suit; otherwise, it must refuse to frame the issue. (Para 23 , 25 , 26 , 46 )
9. Does registration under the Press and Registration of Books Act (PRB Act) provide a valid ground to question the validity of a registered trademark under the Trade Marks Act?
No. A plea of invalidity must relate to the requirements of the Trade Marks Act. Registration under the PRB Act is a separate statutory matter and does not ipso facto constitute a ground to seek rectification or establish invalidity of a registered trademark. (Para 48 )
JUDGMENT :
1. When the suit was called out for final arguments, learned counsel for the plaintiffs submitted that the defendants have filed a rectification application before the Trade Mark Registry. He submitted that the application was wrongly filed before the Trade Mark Registry; however, only to bring on record the factual aspects noted by the plaintiffs, he mentioned it before the court.
2. Learned counsel for the defendants therefore prayed for time to file an application under Section 124 of the Trade Marks Act, 1999 (“Trade Marks Act”) seeking a stay of further proceedings in the suit on the ground of pendency of the rectification applications under Sections 47 and 57 of the Trade Marks Act. The defendants were therefore granted time to take steps. Thereafter, the defendants filed this interim application seeking a stay of further proceedings in this suit till final disposal of their rectification application. In the alternative, the defendants prayed to raise an issue regarding the invalidity of the plaintiff's trade mark and to defer the suit for three months from the date of framing of an issue to enable them to apply to the appropriate forum for rectification of the register.
3. The suit is filed for permanent injunction restraining the defendants from directly or indirectly using and allowing any use of the trade marks “Pune Mirror” and “KM Kothrud Mirror” or any other mark similar and/or deceptively similar to the plaintiffs’ registered trade marks “Pune Mirror” and “Sunday Pune Mirror”. The plaintiffs have also prayed for an injunction restraining the defendants from using any other mark of the plaintiffs containing the word “Mirror”. The plaintiffs have further prayed for Rs. 100,00,00,000/- as damages for the alleged infringement of the plaintiffs’registered trade marks.
4. To decide the defendants’ application, it is necessary to consider the rival pleadings and the issues involved in the suit.
PLEADINGS IN THE PLAINT:
5. The plaintiffs claim rights in the registered trade marks, “Pune Mirror” and “Sunday Pune Mirror” as well as other registered “Mirror” formative trademarks such as “Mumbai Mirror”, “Sunday Mumbai Mirror”, “Ahmedabad Mirror”, “Bangalore Mirror on Saturday” and “Bangalore Mirror on Sunday”. The plaintiffs claim to have a non-exclusive license to use the word/mark “Mirror”, per se, for newspapers and related goods and services, including other “Mirror” formative marks bearing different city names.
6. The suit is filed to prevent the defendants from infringing and passing off by using the registered trade marks “Pune Mirror” and “Sunday Pune Mirror”. The plaintiffs claim to have the marks “Pune Mirror” and “Sunday Pune Mirror” registered in Class 9, Class 16, and Class 41 of the Fourth Schedule to the Trade Marks Rules. The plaintiffs pleaded the particulars of the websites by the title names of the registered trade marks and the particulars of the advertising and publications of the newspapers with the word “Mirror”. The plaintiffs have alleged that the defendants' adoption of the trademarks Pune Mirror and KM Kothrud Mirror caused confusion and deception in the minds of the public. According to the plaintiffs, the defendants adopted the impugned trade marks with the intent to commercially exploit and trade on the goodwill and reputation of the plaintiffs' “Mirror” trade marks.
PLEADINGS IN THE WRITTEN STATEMENT:
7. The defendants have filed the written statement and pleaded that the Registrar of Newspapers for India (“RNI”), being the constituted authority appointed by the Central Government under Section 19(a) of the Press and Registration of Books Act, 1867 (“the said PRB Act”), is vested with the powers of issuing a Certificate of Registration in respect of the newspapers. After receiving the declaration under Section 6 of the said PRB Act, the authority de-blocked the titles “Pune Mirror” and “Sunday Pune Mirror”, which were verified in the pla
