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(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, 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 party concerned to apply to the High Court for rectification of the register. (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 for 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.

13. The question that arises for consideration is whether a petition under Section 471 or 572 of the Trade Marks Act, for removal of a trademark from the Register of Trademarks and consequent rectification of the register would lie only before the High Court having territorial jurisdiction over the office of the Trademark Registry where the impugned mark was registered, or could be filed in another High Court; specifically in the present case, this Court.

Signing Date:04.09.2023 12:22:12 hand, I am of the concerned opinion that this Court is competent to entertain the present applications/petitions.

24. At the outset, it must be noted that there is only one provision, in the Trade Marks Act, which provides for rectification of the Register of Trade Marks, by removing, therefrom, a registered mark, which is Section 57. The application for rectification of the register of Trade Marks, to which Section 124(ii) alludes, would also, therefore, have to be filed under Section 57 alone, and under no other provision. The only difference is that a rectification petition/application, if filed under Section 124(1)(ii), has to necessarily be filed in the High Court, whereas a rectification petition under Section 57 can be filed either before the Registrar or in the High Court. The High Court which would have to be approached directly under Section 57, therefore, is the same High Court which would have to be approached through the more circuitous route of Section 124(1)(ii).

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 mark 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 that 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 party concerned to apply to the High Court for rectification of the register. Section 111(2) of the 1958 Act provides that in case an application for rectification is filed within the time allowed the trial of the suit shall remain stayed. Sub-