Chambers of Ishaan Garg
Ch. No. 217, Western Wing, District & Sessions Court, Tis Hazari, New Delhi, Delhi 110054
+91 8851742417, +91 8800386163
Delhi HC
The plaintiff in the present case instituted a petition u/s 57 of the Act for the cancellation/ rectification of the register. However, the defendant contested the maintainability of the present petition as it does not follow the process laid down u/s 124 of the Act. It is to be noted that the in the present case there was no question of invalidity raised in the trial court by the defendants.
Thus, the court framed the following issues-
Whether S.47 and S. 57 become abrogated in compliance with the S. 124 of the Act and whether the rights under S.124 in derogation of the rights available under S.57?
Whether the party can go for recourse under the S. 47 and S.57 of the Act when S.124 is not raised in a suit?
The Delhi High Court held that the right under S. 57, for cancellation of a mark and rectification of the register remains available. However, if an infringement suit that has been filed by either of the parties and one of them against it pleads invalidity of the mark as a ground of defense to the suit, then the party filing the infringement suit would acquire an independent right under Clause (ii) of S.124 of the Act to move the IPAB (now the High Court) for rectification of the register. Therefore, S. 124 must be read as an “additional relief” and must not be read as the only right available, in abrogation of S. 57 (para 24-26). Therefore, it is possible to go for recourse under S. 47 and 57 of the Act and as well as in S.124 when the plea of invalidity is raised in a suit.
The High Court points out in para 30 of the Patel Field Marshal judgment which was relied on by the opposite counsel in the present case that- “In cases where the parties have not approached the Civil Court, S. 46 and S.56 (pari matria to S.47 & S.57 of the Act) provides an independent statutory right to an aggrieved party to seek rectification of a trade mark.” The SC further remarked that the Patel Field Marshal case lays down the procedure under Clause (ii) of the second part of Section 124 of the Act is set in motion. It states when the High Court, would acquire seisin over the issue of validity of the contested trademark. That does not, in any manner take away from the right of the defendant to independently invoke Section 57.
