Author: Uroosa Shahzad
In the matter of Therelek Machines Private Limited v. Therelek Engineers Private Limited & 2 Ors. [W.P. No. 28029 of 2023], a Single Judge (Anant Ramanath Hegde, J.) of the High Court of Karnataka vide order dated February 28, 2024, allowing a writ petition, has held that even if a rectification application filed by third-party is pending, an application can be filed for stay of proceedings for trademark infringement.
Section 124(1)(i) of the Trade Marks Act, 1999 (“the Act”) states that “Where in any suit for infringement of a trade mark—(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;” The issue was whether for filing an application under Section 124 of the Act for stay of trademark infringement suit, the pending rectification application must have been filed by the same party.
The Petitioner contended that as an application for rectification of the disputed trademark was pending, they can move an application under Section 124 of the Act for the stay of proceedings for trademark infringement. The Respondent No. 1, on the other hand, contended that since the rectification application was not filed by the Petitioner but a third-party, the suit cannot be stayed. Respondent No. 1 submitted that a conjoint reading of relevant provisions of the Act leads to the conclusion that only a party to the rectification proceeding can file an application under Section 124.
The Court rejected Respondent No. 1’s contention and held that the party filing the application for stay of trademark infringement suit does not need to be the same party who filed the rectification application. The Court stated that “…words used in Section 124 of the Act of 1999 do not indicate that application for rectification…and application under Section 124 of the Act of 1999 ought to be filed by the same person. What is contemplated under Section 124 of the Act of 1999 is, ‘an application for rectification of either plaintiff’s trademark or the defendant’s trade mark’. The provision does not say that party to the suit must have filed an application.”
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