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14. In reply, on behalf of the respondent, it is contended that the provisions of Section 111 of the 1958 Act particularly sub-sections (3) and (4) thereof make it very clear that once the Civil Court is satisfied with regard to the prima facie tenability of the issue of invalidity of the registration of a trade mark that may be raised before it by any party to an infringement suit, the said question has to be decided in a rectification proceeding and not in the suit. The suit will remain stayed and the final decision of the statutory authority in the rectification proceeding will govern 3 ( 2008) 38 PTC 576 Madras DB 4 2016 (65) PTC 209 Delhi FB the parties to the suit. It is contended on behalf of the respondents that rectification proceedings under Sections 46 and 56 of the 1958 Act govern a situation where no suit for infringement is pending. In a situation where a suit for infringement has been filed and the question of validity of registration arises therein and the Civil Court is satisfied as to the prima facie tenability of the issue of invalidity of the registration of the trade mark, the provisions of Section 111 would take over and govern the proceedings in the suit including the issue of invalidity. It is further contended that there is a deemed abandonment of the rights conveyed under Sections 46 and 56 of the 1958 Act in the event a suit for infringement is pending wherein the question of invalidity has been raised and found to be prima facie tenable. It is urged that the rights under Sections 46 and 56 on the one hand and those contained in Sections 107 and 111 on the other must be understood to be operating in two different fields; both sets of provisions cannot mutually exist as such mutual existence and operation may lead to conflicting decisions on the same question i.e. by the High Court under the 1958 Act or by the IPAB under the 1999 Act on the one hand and the Civil Court adjudicating the infringement suit on the other. It is also submitted on behalf of the respondents that the abandonment of the plea of invalidity contemplated by Section 111(3) of the 1958 Act is a complete relinquishment for all practical purposes and not only for the purpose of the suit. The abandonment contemplated by Section 111 (3) of the 1958 Act does not keep alive the plea of invalidity to be urged/agitated separately in a rectification proceeding under Section 46/56 of the 1958 Act. Insofar as the decisions of the Madras High Court in B. Mohamed Yousuff (supra) and the Delhi High Court in Data Infosys Limited and Others (supra) are concerned, the respondents contend that the ratio of the said judgments are not in consonance with the true purport and effect of the legislative scheme and therefore this Court may conclusively and authoritatively decide the issue.

20. The issue arose once again before the Delhi High Court in Data Infosys Limited (supra) which was referred to a Full Bench, perhaps, for a closer look into the matter in view of the conflict of opinions in Astrazeneca UK Ltd. (supra) and B. Mohamed Yousuff (supra). After an elaborate consideration of the matter, the Full Bench of the Delhi High Court concluded that where registration of a trade mark is questioned after initiation of a suit for infringement it is open for the party setting up the plea of invalidity to apply to the IPAB under Sections 47 and 57 of the 1999 Act for rectification. The High Court went on to hold that the effect of the prima facie evaluation of the tenability of the plea of invalidity does not impinge on the right of the party raising such a plea to apply to the IPAB for rectification. In other words, the right to seek rectification under Sections 47 and 57 of the 1999 Act does not stand extinguished in a situation where in a suit for infringement the plea of invalidity is found to be prima facie not tenable. The only difference according to the High Court is that while under Sections 47 and 57 of the 1999 Act, the aggrieved party can move the Registrar for rectification, in the latter situation i.e. where a suit is pending it is the IPAB which alone acquires jurisdiction to the exclusion of the Registrar.

21. In Data Infosys, the Full Bench of the Delhi High Court further took the view that the provisions of Section 124(3) of the 1999 Act should be interpreted to mean that if rectification proceedings are not filed within the period stipulated under Section 124(2) of the 1999 Act, or any extended period, the issue of invalidity of the registered trade mark would not survive to be decided and the said plea would be deemed to have been abandoned. But all these consequences will follow in the suit. If the aggrieved party files a rectification application under Sections 47/57 of the 1999 Act after expiry of the period stipulated under Section 124(2) of the 1999 Act, or the extended period, as may be, the rectification application would still be maintainable and would have to be decided on merits by the IPAB and the final decision of the Board on the rectification application would have no bearing on the suit notwithstanding the fact that the plea of invalidity is deemed to have been abandoned therein. The only effect of the belated filing of the rectification proceeding would be that there would be no stay of the suit. According to the Full Bench, the jurisdiction to decide disputes with regard to validity of registration of a trade mark is exclusively vested in the statutory authorities i.e. the Registrar or the IPAB and the Civil Court’s jurisdiction to go into the merits of the plea of invalidity is statutorily barred. Therefore the jurisdiction of the IPAB vested under the statute cannot be ousted on the Civil Court’s determination of the prima facie tenability of the plea of invalidity or upon the failure of the aggrieved party to move a rectification application within the time stipulated under Section 124(2) of the 1999 Act.

27. Rather, from the resume of the provisions of the 1958 Act made above it becomes clear that all questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, infact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the Civil Court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity.