This article examines the implications of the abolition of the Intellectual Property Appellate Board (IPAB) and the subsequent vesting of powers to entertain cancellation petitions with the High Courts, specifically in the context of a trademark suit.

The case under discussion involves the trademark "HAIR SPA," where the Plaintiff has filed a suit for trademark infringement, while the Defendant has filed a cancellation petition against the registered trademark of the Plaintiff.

The Hon'ble High Court of Delhi, faced with the Defendant's request for a stay on the suit proceedings due to the invalidity issue being framed, rendered a significant decision regarding the interplay of the suit and cancellation proceedings.

Background
The Plaintiff filed a trademark suit in relation to the trademark "HAIR SPA," asserting its exclusive rights over the mark. Simultaneously, the Defendant filed a cancellation petition, challenging the validity of the Plaintiff's registered trademark. Both matters were brought before the Hon'ble High Court of Delhi.

Defendant's Request for Stay
During the process of framing issues in the case, the Defendant insisted on framing an issue regarding the invalidity of the Plaintiff's registered trademark and requested a stay on the suit proceedings until the cancellation petition was resolved. The Defendant's argument was based on the premise that if the registered trademark is found to be invalid, the suit for trademark infringement would become redundant.

Court's Decision
The Hon'ble High Court of Delhi acceded to the Defendant's request and framed an issue regarding the invalidity of the Plaintiff's registered trademark. However, contrary to the Defendant's request for a stay, the Court declined to halt the suit proceedings. The Court reasoned that the recent Tribunal Reforms Act, 2021, abolished the IPAB and transferred jurisdiction for cancellation or rectification of trademarks to the High Courts. Given this change, the Court found it appropriate not to stay the suit proceedings.

The Court further justified its decision by highlighting that the issues for determination in both the suit and the rectification petition were likely to overlap and be common. Consolidating both proceedings under Rule 26 of the IPD Rules, the Court aimed to streamline the litigation process and ensure efficient resolution of the case.

Impact of IPAB Abolition
The abolition of the IPAB and the subsequent vesting of jurisdiction in the High Courts for cancellation or rectification of trademarks mark a significant shift in the trademark dispute resolution landscape. Traditionally, the IPAB served as the specialized body to handle such matters, but with its dissolution, High Courts now assume these responsibilities.

This change has had practical implications for the case under discussion. By consolidating the suit and the cancellation petition proceedings, the Hon'ble High Court of Delhi sought to avoid potential conflicts, prevent contradictory decisions, and streamline the adjudication process. It demonstrated the Court's readiness to take on the IPAB's former role and effectively handle trademark disputes.

Concluding Note
This case of "HAIR SPA" highlights the jurisdictional impact of the IPAB's abolition and the transfer of powers to the High Courts for handling trademark cancellation and rectification matters. The decision of the Hon'ble High Court of Delhi to frame the issue regarding the invalidity of the Plaintiff's registered trademark while refusing to stay the suit proceedings reflects a proactive approach in light of the recent legal changes. Consolidating both proceedings further indicates the Court's commitment to efficiently adjudicate trademark disputes.

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

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