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5. That is how, as indicated earlier, defendant is in appeal before this court.

6. Mr. Gaurav Chopra, learned counsel for the defendant, in reference to Section 124 of the Act, submits that in a suit for infringement of a trade mark, if the defendant pleads that the registration of the plaintiff's trade mark is invalid or vice-versa, and if before the institution of the suit, the IPAB was already seized of the rectification proceedings, the court shall have to stay the suit. But, in the event, no such proceedings were pending, For Subsequent orders see CM-16925-CII-2016 8 of 64 but the court is satisfied that the plea of invalidity set up by the defendant or the plaintiff, as the case may be, is prima facie tenable, the court shall adjourn the suit for a specified period to enable the party concerned to move the IPAB for rectification of the register. And, if indeed such an application is moved, within the stipulated time, the trial of the suit shall stand stayed in terms of Section 124(2) of the Act. In the matter in hand, he submits that, no rectification proceedings were pending before the institution of the suit, for the defendant indeed moved the IPAB subsequently, and that too without any order of the court under Section 124(1)(ii). But, that is inconsequential, for the right to invoke the jurisdiction of the Board is not dependent upon any prima facie determination of the plea of invalidity by the civil court. In reference to paragraph 64(1)(a) of the decision of the Full Bench of Delhi High Court in Data Infosys Ltd. And Ors. v. Infosys Technologies Ltd., 2016(65) PTC 209, he submits that IPAB has the exclusive jurisdiction to decide upon the plea of invalidity of registration of a trade mark, and Section 124 does not control the choice of a litigant to seek rectification of the register. That is how, he asserts, the trial court being cognizant of the plea of invalidity set up in defence, pendency of the rectification proceedings before the IPAB, and on consideration of the specific application, under Section 124, moved by the defendant, stayed the suit, which implies that court found the invalidity plea to be prima facie tenable. For, otherwise the suit could never be stayed under Section 124(2) of the Act. Thus, he asserts, once the trial court found the plea of invalidity to be prima facie tenable how could, it still hold that there also exists a prima facie case in favour of the plaintiff, and grant injunction.

For Subsequent orders see CM-16925-CII-2016 11 of 64

7. Per contra, Mr. Gaurav Arora, learned counsel for the plaintiff also referred to the provisions of Section 124 of the Act, to narrate its operation and scheme. He too has placed reliance upon the majority view of the Full Bench of Delhi High Court in Data Infosys Ltd. (supra), and a Single Bench decision of the same Court in Stokely Van Camp Inc and Anr. v. Heinz India Private Ltd., 2012(52) PTC 540, to contend that there are only two situations in which infringement action can be stayed: (I) Under Section 124(1)(i), when rectification proceedings were pending before filing of the suit. (II) If no such proceedings were pending at the time of institution of the suit, then only, if the court finds the plea of invalidity to be prima facie tenable in terms of Section 124(1)(ii). Further, if despite opportunity granted by the court a party concerned does not move the IPAB or plea of invalidity is not found to be tenable, then the only consequence that ensues is the deemed abandonment of the invalidity plea. In reference to the matter in hand, he submits that concededly at the time of institution of the suit on 12.05.2014, no rectification proceedings were pending. In fact, after the defendant was served, and he caused appearance in the suit, he on his own, by circumventing the provisions of Section 124(1)(ii) of the Act, moved the IPAB for rectification of the register. And, since the defendant did not opt to follow the procedure set out in Section 124(1)(ii) of the Act, he, on his own, volition abandoned the plea of invalidity. Rather, he submits that, in the given situation, the trial court ought not to have even stayed the suit, and was required to proceed with the matter as regards the other issues. Resultantly, he asserts that the defendant has lost the right to question the validity of registration of plaintiff's trade mark in these proceedings.

14. A bare analysis of the provisions of Section 124(1)(i) reveals that where in any suit for infringement of a trade mark, defendant pleads that registration of the plaintiff's trade mark is invalid or he sets up a defence in terms of clause (e) of sub-section (2) of section 30 of the Act, and the plaintiff questions the validity of registration of defendant's trade mark, the court shall stay the suit, if the rectification proceedings are pending before the IPAB, till the final decision is reached in those proceedings. And, in case no such proceedings are pending, and the court finds the plea of invalidity to be prima facie tenable, in terms of Section 124(1)(ii), it would raise an issue in this regard, and adjourn the matter for a specified time to enable the party concerned to apply to the Appellate Board for rectification of the register. And, if the rectification proceedings are initiated within the specified time, the court shall stay the suit, in terms of Section 124(2) of the Act, to await final decision in the rectification proceedings. However, in the event no such application is moved, sub- section (3) of Section 124 postulates that the issue as to the validity of registration of the trade mark shall be deemed to have been abandoned, and the court shall proceed with the suit in regard to other issues. And, under sub-section (4) of section 124, the final order made in the rectification For Subsequent orders see CM-16925-CII-2016 21 of 64 proceedings shall be final and binding upon the parties, and the court shall dispose of the suit in terms thereof, in so far as it relates to the issue as to the validity of registration of the trade mark. Sub-section (5) of Section 124 suggests that even though the suit is stayed, it shall still not preclude the court from making any interlocutory order during the period of the stay of the suit.

15. Ex facie, to stay the proceedings in an infringement suit, pendency of the rectification proceedings alone is not the pre-requisite, but a plea of invalidity, in sync with Section 124(1)(a) or Section 124(1)(b), as the case may be, must co-exist. Needless to assert that what, indeed, precedes the stage before the defendant sets up a plea of invalidity in defence or plaintiff questions the registration of defendant's trade mark, is the institution of the suit itself, service upon the defendant(s), defendant(s) causing appearance in the proceedings, and filing the written statement. It is at that stage, alone it is feasible for the defendant to set out a plea of invalidity. And, it would be viable, thereafter, for the plaintiff to question the registration of defendant's trade mark, provided the latter has set up a defence in terms of clause (e) of sub-section (2) of Section 30. The precise moment in the suit to ascertain or the necessity to seek an answer to the question; whether any rectification proceedings were/are pending, would arise only when the court trying the suit, on completion of the pleadings of the parties, takes cognizance of the dispute for the first time and applies its mind. Be that for the purpose of framing the issues or deciding an injunction application. And, if at the moment the IPAB is seized of the rectification proceedings the court shall have to stay the suit under Section 124(1)(i), For Subsequent orders see CM-16925-CII-2016 22 of 64 notwithstanding whether those proceedings were initiated before or post institution of the suit.