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5. On 22.03.2008, respondent filed Application no.ORA/93/08/TMLH before Intellectual Property Appellate Board ('IPAB' for short) for rectification of Trademark no.721518. It was however dismissed for non-prosecution on 01.07.2011. And on 11.09.2008, petitioner filed application no.ORA/211/08/TM/ DEL/6427 before IPAB, for rectification of Trademark no.1093578. Therefore, both rectification applications were filed during pendency of suit.

7. On 27.06.2014, when suit was at stage of arguments, defendants no.1 and 2 filed I.A.no.XX under Section 124 of TM Act read with Section 151 of Code of Civil Procedure, 1908 ('CPC' for short) for stay of suit pending out-come of rectification proceedings before IPAB.

8. It was submitted that petitioner filed objections against application contending that application filed by defendants before IPAB was dismissed for non-prosecution and therefore, requirements of Section 124 of TM Act were not met. Further, plea of invalidity of trademark was not taken in written statement and finally on ground that application for rectification could not be filed without obtaining leave of Court.

"10. (ii) In my opinion the ratio of the judgment of the Supreme Court in the case of Patel Field Marshal Agencies (supra) has to be read that there is abandonment of the plea of invalidity of plaintiff's registration if this plea is not raised before the suit is set down for trial/leading evidence after framing of issues. The observations of the Supreme Court of abandonment of plea of invalidity of plaintiff's registration to have meaning will have to be read that the plea of invalidity of plaintiff's registration for approaching IPAB will be before the stage of trial inasmuch as raising the plea of invalidity of plaintiff's registration and for approaching IPAB is related to the passing of directions to stay trial of the suit. Trial of the suit starts after framing of issues and commencement of leading of evidence with respect to the issues framed and therefore stay of trial is before the commencement of trial and not after commencing of trial. Once therefore the defendant in an infringement suit does not seek framing of an issue of invalidity of plaintiff's registration by the Court by taking a prima facie view on invalidity of plaintiff's registration of its trademark before the commencement of trial then the defendant is deemed to have abandoned its right to question the 2018 SCC OnLine Del 8549 validity of the registration of the plaintiff's trademark and such right to question plaintiff's registration is lost and will no longer survive."

31. Though the counsel for the plaintiff has sought to contend that no plea is required to be raised and it is 2018 SCC OnLine Del 6657

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sufficient for the litigant to merely plead invalidity, inasmuch as the Civil Court does not have the jurisdiction to decide the plea of invalidity, but no merit is found in the said contention. Supreme Court, in Patel Field Marshal Agencies supra has held that in cases where proceedings for rectification are not pending at time of institution of the suit, IPAB will come into seisin of the matter of rectification only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit and once an issue to the said effect is framed, the matter will have to go to the IPAB and the decision of the IPAB will thereafter bind the Civil Court. It thus cannot be urged today that the plea of invalidity has to be any different from a plea on which the CPC requires an issue to be framed and which as aforesaid, has to be in terms of Order XIV Rule 1 of the CPC.