Section 124 of the Trade Marks Act, 1999 envisages a stay of a lawsuit for infringement when validity of the registration has been questioned.
Section 124 of the Trade Marks Act, 1999, which is pari materia to Section 111 of the previous legislation, the Trade and Merchandise Marks Act, 1958, envisages a stay of a lawsuit for infringement when validity of the registration has been questioned. This provision has courts enunciating varying interpretations.
Section 124 mentions two situations where a lawsuit may be stayed by a court. Firstly, when rectification proceedings, or any such proceedings involving the trademarks of either party, are pending prior to the filing of the lawsuit and secondly, when no such proceedings are pending. In the second case, the party pleading invalidity of the trademark is required to satisfy the court that its plea is prima facie tenable.
The court then has to frame an issue as to invalidity and adjourn the lawsuit for three months to allow the party to apply for rectification at the Intellectual Property Appellate Board (IPAB). The trial is stayed until the rectification proceeding is concluded. The court can also pass an interlocutory order, inter alia, of temporary injunction.
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India Trade Marks Act, rectification
