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(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 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 issues in the case.

Uday AppL674.2012-23.12.2014-D

22. Section 124 of the 1999 Act contains provisions which are in pari materia with Section 111 of the 1958 Act. These provisions under the new Act as well as the old Act, provide that where a challenge to the validity of the plaintiff's trade mark is raised in a suit for infringement of a trade mark before a Civil Court and the Civil Court finds the said challenge as prima facie tenable, the Civil Court will 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 defendant to apply to the Appellate Board for rectification of the register. If the defendant satisfies the Civil Court that he has made any such application within the specified time or the extended time, the trial of the suit shall stand stayed till the final disposal of the rectification proceedings. However, such stay does not preclude the Civil Court from making any interlocutory order (including any order granting an injunction) during the period of the stay of the suit. If such application is not made by the defendant within the specified or the extended time, 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 with regard to the other issues in the case. If any final order is made in the rectification proceedings, such final order shall be binding upon the parties and the Civil Court shall dispose of the suit in conformity with such final order, in so far as it relates to the issue as to the validity of the registration of the trade mark.

It is clear that till the enactment of the Trade Marks Act, 1999, the forum for deciding the suit for infringement and the forum for rectification proceedings was the same,viz., the High Court. The High Court, therefore, could take up both, the suit for infringement and the rectification proceedings, simultaneously, and Uday AppL674.2012-23.12.2014-D therefore, Section 28 and Section 31 operated with same content and contours in the suit for infringement as well as in the rectification proceedings. The presumption in Section 31 of the 1958 Act regarding "prima facie evidence of the validity" of the trade mark, therefore, operated both during pendency of the suit and during pendency of the rectification proceedings. However, the material change brought about by the 1999 Act now provides that while the suit for infringement of a trade mark may be pending before the District Court or a High Court, where the defendant questions the validity of the registration of the plaintiff's trade mark, such question shall be finally determined only on an application for the rectification of the register to be made to the Appellate Board.

Thus, the question can be answered only by the Intellectual Property Appellate Board and not by the Civil Court or the High Court trying the suit for infringement.

Even so what the Civil Court/High Court can do under Section 124 of the new Act is that if the Court is satisfied that the plea regarding invalidity of the registration of the plaintiff's trade mark is prima facie tenable, the Court will raise an issue regarding the same and adjourn the case for three months to enable the defendant to apply to the Appellate Board for rectification of the register and upon such application being made, the trial of the suit shall stand stayed until final disposal of the rectification proceedings. Thus, Section 124 read with Section 125 bars the jurisdiction of the Civil Court from deciding the question raised by Uday AppL674.2012-23.12.2014-D the defendant about validity of the registration of the plaintiff's trade mark. Sub-section (5) of Section 124 of the 1999 Act, like sub-section (5) of Section 111 of the 1958 Act, however, expressly permits the Civil Court to make an interlocutory order including an order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property during the period of the stay of the suit. Provisions of Section 124 therefore contemplate that if the defendant's plea regarding validity of the registration of the plaintiff's trade mark is frivolous, the Court is not bound to grant the defendant time to file rectification proceedings before the Appellate Board and even if such proceedings are pending, the Civil Court can grant injunction in favour of the plaintiff in the suit for infringement of the plaintiff's trade mark.