The Supreme Court examined the various sections under the Trade & Merchandise Marks Act 1958 and Trademarks Act, 1999 to determine whether a person could resort to rectification proceedings before the statutory authorities (Registrar/IPAB) even in a situation where infringement proceedings had been instituted and the plea of validity of registration has not been taken or in case not taken up within the time limit specified.
The appellants [Patel field Marshall Agencies] contended that infringement proceedings and rectification proceedings are independent remedies and a ‘person aggrieved’ includes a person against whom infringement action is taken or threatened. However, the respondents [Anr. v. P M Diesels Ltd & Anr] contended that in a case where infringement proceedings are pending and the question of invalidity is found tenable by the Civil Court, the party has to move an application within prescribed time limit. There is a deemed abandonment of plea of invalidity and it is not open to the party to separately agitate the issue of rectification.
The Supreme Court in its judgement dated 29-11-2017, held that the Trademarks Act does not contemplate permission of civil court to override other provisions for filing of rectification application. The Apex Court was of the view that rectification proceedings are governed by the specific provisions and the satisfaction of the Civil Court that the invalidity plea is tenable provides an opportunity for the party to agitate the same during pendency of infringement proceedings.
However, it is not a grant of permission by the Court to agitate the issue afresh even though validity was not assailed earlier or within time prescribed. It was hence held that while rectification proceedings are an independent right vested by the statute, during pendency of infringement proceedings the satisfaction of the Civil Court on whether it is a triable issue will determine if the person can seek rectification.