01 January 0001

Trademark – Section 124 applicable to stay infringement suit and not suit for passing-off

Observing that the defendant had never abandoned the plea of invalidity and had filed the rectification proceedings within three months before IPAB, Delhi High Court has stayed the suit for infringement of trademark, under Section 124 of the Trademarks Act, 1999.

 Reliance in this regard was placed upon Supreme Court’s recent decision in Patel Field Marshall.

The Court in its decision dated 29-5-2018, however, observed that the proceedings in a suit for passing-off would continue as Section 124 stay was applicable only to suits for infringement till the final decision on the pending rectification.

Relying upon Division Bench decisions in the cases of Puma Stationer P. Ltd. and Micolube India Ltd., the court in case of J.K. Oil Industries v. Adani Wilmar observed that Section 124 is very specific and makes it clear that it is applicable only to suits for infringement.

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