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                                                                                      NEUTRAL CITATION




     C/SCA/5927/2024                              CAV JUDGMENT DATED: 22/07/2024

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3. In the suit for infringement filed by the plaintiff on 06.02.2020, the defendants have filed their written statement on 12.03.2020. The interim injunction application was rejected by the competent Court on 14.03.2020. On 19.11.2022, the defendants have filed application seeking amendment in the written statement to add pleadings with respect to the validity of the registered trade mark of the plaintiff. The amendment application was initially rejected on 04.05.2023 by the trial court, however, on a challenge before this Court in Special Civil Application No. 9620 of 2023, on 09.08.2023, this Court set aside the order of the trial court and allowed the request of the petitioner for amendment of the written statement. The application under Section 124 of the T.M.Act, 1999 was, thereafter, filed before the trial court to frame an issue on the plea of the defendant regarding the invalidity of the registration of the plaintiff's trade mark and adjourn the suit proceedings for a period of three months from the date of framing of the issue in order to enable the defendant to apply to the High Court for rectification of the Register of the Trade Mark.

8. Section 47, 57, 124 and 125 of the T.M.Act, 1999 have been placed before us to submit that the defendants, who are aggrieved persons, have right to seek for rectification of the registered trade mark of the plaintiff by requesting the Registrar to impose limitations on the ground of non-use of the trade mark in relation to those goods or services by the proprietor.

9. Placing Section 124 of the T.M.Act, 1999, it was urged by the learned counsel for the petitioner that the only requirement while deciding the application moved by the defendants is to see the prima NEUTRAL CITATION C/SCA/5927/2024 CAV JUDGMENT DATED: 22/07/2024 undefined facie tenability regarding the validity of the registration of the plaintiff's trade mark. Section 124(1)(b)(ii) requires the Civil Court (Commercial Court) to examine the prima facie tenability of the claim of the defendants who raised an issue regarding the same, to adjourn the case for a period of three months from the date of the framing of the issue to enable the defendants to apply to the High Court for rectification of the Register. Only genuineness of the plea of the defendant was to be looked into and it was not open for the trial court to enter into the merits of the claim of the defendant about the validity of the registered trade mark of the plaintiff, inasmuch as, the said jurisdiction lies with the High Court, which is empowered for rectification of the Register on a plea of the defendant under Section 124(1)(b)(ii). Once a triable issue has been raised by the defendants, there was no option before the trial court but to adjourn the proceedings of the suit for a period of three months, so as to enable the defendant to apply the High Court for rectification of the Register in terms of Section 124 of the T.M.Act, 1999.

(3) The Registrar or the High Court, as the case may be, may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The Registrar or the High Court, as the case may be, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

29. The above seems to become more clear from what is to be found in Section 111 of the 1958 Act which deals with "stay of proceedings where the validity of registration of the trade mar k is questioned" . The aforesaid provision of the 1958 Act specifically provides that if a proceeding for rectification of the register in relation to the trade mark of either the plaintiff or the defendant is pending before the Registrar or the High Court, as may be, and a suit for infringement is filed wherein the aforesaid plea is raised either by the defendant or by the plaintiff, the suit shall remain stayed. Section 111 further provides if no proceedings for rectification are pending on the date of filing of the suit and the issue of validity of the registration of the plaintiff's or the defendant's trade mark is raised/arises subsequently and the same is prima facie found to be tenable, an issue to the aforesaid effect shall be framed by the Civil Court and the suit will remain stayed for a period of three months from the date of framing of the issue so as to enable the concerned party to apply to the High Court for rectification of the register. Section 111(2) of the 1958 Act provides that in case an NEUTRAL CITATION C/SCA/5927/2024 CAV JUDGMENT DATED: 22/07/2024 undefined application for rectification is filed within the time allowed the trial of the suit shall remain stayed. Sub-Section (3) of Section 111 provides that in the event no such application for rectification is filed despite the order passed by the Civil Court, the plea with regard to validity of the registration of the trade mark in question shall be deemed to have been abandoned and the suit shall proceed in respect of any other issue that may have been raised therein. Sub-section (4) of Section 111 provides that the final order as may be passed in the rectification proceeding shall bind the parties and the civil court will dispose of the suit in conformity with such order insofar as the issue with regard to validity of the registration of the trade mark is concerned."