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33. It is to be noted, at the outset, that in the present matter, before the filing of the suit, an application for rectification/cancellation has already been filed by the plaintiff on 16th March, 2020, which is pending. Under Section 124(1)(i) of the T.M. Act, the present suit has to be stayed pending final disposal of such rectification/cancellation proceedings. However, as pointed out by learned counsel for the plaintiff and rightly conceded to by the learned counsel for the defendants No.1 to 4, under Section 124(5) of the T.M. Act, the court is not precluded from making any interlocutory order, including any order granting an injunction directing accounts to be kept, appointing a Receiver or attaching property, during the period of the stay of the suit. Therefore, this Court will now proceed to consider whether the plaintiff has disclosed a case for an interlocutory order, namely, an injunction against the defendants restraining them from the use of the Trade Mark / .

(b) The decision in Astrazeneca UK Ltd. v. Orchid Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB) (Del) and all other judgments which hold that the plea of rectification can be raised by a party to an infringement suit, only if the court trying the suit, rules it to be prima facie tenable and that if such finding is not recorded, the party cannot avail the remedy of rectification of a registered trademark, is accordingly overruled.

2. This Court holds, by its majority judgment (Vipin Sanghi, J dissenting on this point) that the two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124(1)(i)) and after the plea of invalidity is held to be prima facie tenable under Section 124(1)(ii)). In the first situation, if such plea exists, before the filing of the suit, the Court has to stay the suit to await the decision of the IPAB. In the second situation, if there is no application for rectification before the IPAB when the suit is filed and a party to the infringement suit, wishes to challenge it after the filing of the suit, it may do so, but the court has to assesses the tenability of the invalidity plea-if it finds it prima facie tenable, then and then alone, would it stay the suit to enable the party to approach the IPAB within a time period. If the party does not avail of this, or approaches the IPAB after the period given, the court would proceed with the suit; the plea of invalidity is deemed abandoned in the infringement suit.

58. The suit [CS(COMM) 263/2020] is stayed, to be revived by either party after the disposal of the rectification/cancellation proceedings. Needless to state that the view taken is on a prima facie basis and will not reflect on the merits of the suit or the rectification proceedings.

59. The application stands disposed of.

60. The order be uploaded on the website forthwith.