Permission U/S 124 of The Trade Marks Act to file rectification
In case a suit for infringement is pending between the two parties in a civil court and either of the parties wishes to challenge the registered trademark of the other side, the procedure to initiate rectification action is duly prescribed under section 124 of the Act.
In a recent decision, in the matter of Resilient Innovation Pvt. Ltd. vs Phone Pay Pvt. Ltd. (11.11.2021), the Hon’ble Delhi High Court has clearly observed that in view of the provisions of section 124 a rectification petition is not maintainable unless the civil court (where infringement suit is pending) has framed an issue regarding the validity of the trademark in question. The Hon’ble Delhi High Court has relied upon the observation of the Hon’ble Supreme Court in the matter of Patel Field Marshal Agencies and Anr. vs P M Diesels and Ors. Similar was the view taken by Hon’ble Mr. Justice Valmiki Mehta in the matter of Country Inn Pvt. Ltd. vs Country Inn Suits by Carlton Inc. where the Hon’ble Court observed that the intention of the legislature in framing section 124 of the Act is very clear, i.e. the issue of rectification has to be raised before the trial of the suit is set down.
One of the most crucial aspect which arises out of section 124 of the Act is “at what stage section 124 will come into play”. The answer can be found in the judgment of Patel Field Marshal vs P M Diesel ltd. delivered by Hon’ble Mr. Justice R. Balia and Hon’ble Mr. Justice Dave of Hon’ble Gujrat High Court, wherein, the Hon’ble Court observed:
..therefore the grounds on which the plea of invalidity of registration of the a mark, that has been raised or could have been raised on facts existing on the date the plea of invalidity of such marks has been raised in the suit will be the starting point of the limitation for filing a rectification application arising under the plea, no other point can be substituted for it.
The above observation and the judgment of the division bench of the Gujrat High Court was upheld by the Hon’ble Supreme Court in the matter of Patel Field Marshal Agencies and Anr. Vs P M Diesels and Ors. in the year 2017.
(Intellectual Property Law Firm)