Right To Seek Rectification Of Register Under Section 57 Or Section 124 (1)(b)(ii) Of Trade Marks Act Are Independent Rights: Delhi High Court

The Delhi High Court has ruled that the right to seek cancellation of a mark and rectification of the register, conferred by Section 57 and by Clause (ii) of the second part of Section 124(1) of the Trade Marks Act, 1999, are independent rights, which are both available for invocation by an interested party. “…. while the right under Section 57, for cancellation of a mark and rectification of the register remains available, if an infringement suit has been filed by the opposite party and the defendant pleads invalidity of the plaintiff’s mark as a ground of defence to the suit, the defendant would acquire an independent right under Clause (ii) of Section 124 of the Trademarks Act to move the learned IPAB (now the High Court) for rectification of the register," the court said. Justice C. Hari Shankar made the observations while dealing with a petition filed under Sections 57 and 125 of the Trademarks Act, 1999, by Anubhav Jain, a director of Jain Shikanji Private Limited (JSPL), for cancellation of the registration granted to the device mark of respondent Satish Kumar Jain, and consequent rectification of the trademark register.Satish Jain had earlier filed a suit against JSPL alleging that the manner in which the latter was using the mark 'Jain Shikanji' was same as his registered mark 'Jain Shikanji'. In November 2022, the trial court passed an interlocutory injunction against JSPL - the matter is pending in appeal before the high court now. Raising a preliminary objection against the maintainability of the petition filed by Anubhav Jain, Satish Jain relied on Section 124 of the Trademarks Act since a suit alleging infringement of trademark is pending before the civil court. The court noted for Section 124(1)(a) to apply, it would be necessary for JSPL to have pleaded in the suit for trademark infringement that the registration of Satish Jain’s trademark was invalid. However, the court was told no such plea of invalidity of Satish Jain's trademark has been raised. "Even on this sole ground, therefore, it would be apparent that Section 124 would not apply in the present case at al," said the court.The court added: "Assuming such a plea had been raised, what the clause envisages, in a situation where no proceeding for rectification of the register of trade mark is pending and the learned Trial Court is satisfied regarding prima facie tenability of the plea regarding invalidity of the registration of the trade mark, as raised as a defence in the suit, is that the learned Trial Court would, then, raise an issue regarding validity of the contested trademark and adjourn the case for three months to enable the contesting defendant to apply to the High Court (earlier the learned IPAB) for rectification of the register of trade marks." Observing that Section 124 has no application in the case as JSPL never raised the defence of invalidity of Satish Jain's trademark in the suit for infringement, the court said: “Even otherwise, Section 124 cannot possibly be read in a manner as to defeat the right of the petitioner (defendant in the suit) to defend the independent right of the petitioner to invoke Section 57 of the Trademarks Act, seeking rectification of the register of trademark and cancellation of the trademark of Respondent 1. That as an independent right, independently conferred by Section 57 of the Trademarks Act.” Referring to the decision of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, the Court said, “…..right conferred on the defendant in an infringement suit, to move the learned IPAB, or this Court, for rectification of the register of marks is an independent right. This clearly indicates that it is a right which is independent of other rights available under the Trade Marks Act for the same purpose. It has, therefore, to be treated as available in addition to the right available and conferred by Section 57. It cannot be read as the only right available, in abrogation of Section 57 of the Trade Marks Act.” The bench thus concluded that the right available under Clause (ii) of the second part of Section 124 of the Trademarks Act is not in derogation of the right available under Section 57. It is in addition to the said right and does not detract from the right that Section 57 otherwise confers, said the court. “There is no clause in Section 57 of the Trade Marks Act, which makes it subject to any other provision in the Trade Marks Act. Nor does one find in Section 124 of the Trade Marks Act, any non obstante clause which would accord it pre-eminence over other provisions in the Trade Marks Act," the court added. Dismissing the preliminary objection raised by the respondent, the Court thus ruled that the petition was maintainable. Case Title: Anubhav Jain versus Satish Kumar Jain & Anr.Citation: 2023 LiveLaw (Del) 52Counsel for the Petitioner: Ms. Kangan Roda and Mr. Nitesh Jain, Advs ...

Right To Seek Rectification Of Register Under Section 57 Or Section 124 (1)(b)(ii) Of Trade Marks Act Are Independent Rights: Delhi High Court

Parina Katyal

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