The interplay between Sections 124 and 57 of the Trademarks Act 1999 has long been a subject of legal debate in India. Specifically, the question arises as to whether Section 124, which mandates obtaining leave from the court before challenging the validity of a registered trademark, operates to bar the initiation of rectification petitions under Section 57 independently. This article analyzes a recent judgment by the Hon'ble High Court of Delhi, which provides crucial insights into the compatibility of these provisions.

Section 124 of Trademarks Act 1999:
Section 124 of the Trademarks Act 1999 prescribes the requirement for obtaining leave from the court when challenging the validity of a registered trademark in a suit. It serves as a protective mechanism for registered trademark holders and prevents frivolous challenges to the validity of their marks.

Section 57 of Trademarks Act 1999:
On the other hand, Section 57 of the same Act allows for the initiation of rectification proceedings for the cancellation of a registered trademark independently of any pending suit. This provision empowers interested parties to seek rectification of the register based on various grounds, including the invalidity of the trademark.

The Case at Hand:
In a recent case before the Hon'ble High Court of Delhi, the petitioner, Mr. Anubhav Jain, filed a cancellation petition under Section 57 and Section 125 of the Trademarks Act 1999, seeking the cancellation of Certificate No. 2772286 dated 18th June 2021. Notably, Mr. Jain did not seek leave under Section 124 before initiating the rectification proceedings.

The Respondent's Contention:
The respondent, in response to rectification petition, raised a preliminary objection based on Section 124 of the Trademarks Act. Citing the Supreme Court's judgment in Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018) 2 SCC 112, the respondent contended that once a suit for infringement is filed by the plaintiff against the defendant, and the defendant raises the plea of invalidity of the plaintiff's mark as a ground of defense, the defendant forfeits the right to independently invoke Section 57 to seek rectification and cancellation of the plaintiff's mark.

The Court's Interpretation:
The Hon'ble High Court of Delhi, in its judgment, rejected the respondent's interpretation of the law. The court made several noteworthy observations to clarify the relationship between Sections 124 and 57 of the Trademarks Act 1999.

Firstly, the court emphasized that the decision in Patel Field Marshal Agencies did not conclusively establish that the right to seek cancellation of a mark under Section 57 and the right to seek rectification under Clause (ii) of the second part of Section 124 are mutually destructive to each other.

"The court held that the right to seek cancellation and rectification, as conferred by Section 57 and Clause (ii) of the second part of Section 124, respectively, are independent rights. Therefore, an interested party retains the right to invoke Section 57 of Trademarks Act 1999, even in the absence of leave obtained under Section 124."

The Concluding Note:
The judgment of the Hon'ble High Court of Delhi provides a significant clarification on the relationship between Sections 124 and 57 of the Trademarks Act 1999. It highlights that these provisions operate independently, allowing interested parties to initiate rectification proceedings under Section 57 without being barred by the absence of leave obtained under Section 124.

Case Law Discussed:
Case Title:Anubhav Jain Vs Satish Kumar Jain
Date of Judgement:09/01/2023
Case No. Co Comm IPD TM 55 of 2021
Neutral Citation No: 2023:DHC:7089-DB
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge:C Hari Shankar

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539