04 March 2016

Rectification proceedings before IPAB without permission of Court trying infringement suit

Deliberating on the question as to whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 for rectification of a registered trademark, during the pendency of a suit, the Larger Bench of the Delhi High Court on 5-2-2016 has held that the structure of Section 124 does not indicate that jurisdiction of IPAB is conditional upon the civil court’s determination of the prima facie tenability of the invalidity plea. It was observed that there was nothing in the provisions to suggest that a party is precluded from moving the Registrar/IPAB for rectification at any point of time and that the right to claim rectification is never taken away. The Bench in this regard was of the view that in respect of matters relating to invalidity of registration of a trademark, the jurisdiction to decide the merits of the dispute is exclusively that of the statutory authorities-i.e. the Registrar or the IPAB, and that even in the event of such dispute being raised after the filing of an infringement suit, the civil court’s jurisdiction to go into the merits of the plea of invalidity is barred.

The Court for this purpose observed that if the rectification plea is pending before the filing of the infringement suit, the court has no choice but to adjourn the suit and await the final disposal of the challenge before the IPAB, however, if no such plea is pending at the time of filing of the infringement suit, the court has to examine, if urged in the written statement, only the prima facie tenability of the invalidity plea. It was held that if the Court holds the plea to be tenable, it should adjourn the matter to enable the party to approach IPAB, and that there cannot be an automatic stay, in view of the express phraseology of Section 124(1)(ii) which mandates exercise of discretion. The Larger Bench was of the view that access to IPAB to invoke its exclusive jurisdiction to test the invalidity of a trademark registration is not precluded even in the case where civil court, based on its prima facie assessment, finds that the invalidity plea is not tenable.


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