Section 124 of Trademarks Act 1999 is a unique provision which provides for
stay of suit involving trademarks infringement, in certain situation. This
provision pertain to Suit pertaining to Trademark Infringement as the opening
word of this provision clearly indicates that.
Trademarks Registration provides exclusive right to the Registered proprietor.
When a Suit is filed for infringement of Trademark, then registered proprietor
is only required to show registration certificate. Section 31 of the Trade Marks
Act 1999 provides prima facie presumption in favor of registered proprietor.
Section 124 of Trademarks Act provides as under:
Section 31 : Registration to be prima facie evidence of validity:
- In all legal proceedings relating to a trade mark registered under this
Act (including applications under section 57), the original registration of
the trade mark and of all subsequent assignments and transmissions of the
trade mark shall be prima facie evidence of the validity thereof.
- In all legal proceedings as aforesaid a registered trade mark shall not
be held to be invalid on the ground that it was not a registerable trade
mark under section 9 except upon evidence of distinctiveness and that such
evidence was not submitted to the Registrar before registration, if it is
proved that the trade mark had been so used by the registered proprietor or
his predecessor in title as to have become distinctive at the date of
In such a situation the Defendant is granted remedy to seek cancellation of
Trademark cancellation under Section 124 of Trademarks Act 1999. This Section
provides two situation. In situation one when cancellation petition is filed
prior to institution of suit. In this situation, the suit proceeding is bound to
be stayed awaiting the outcome of the rectification proceeding.
In second situation , where invalidity of registered trademark is pleaded and
party raising such objection satisfies the court that the registration of
trademark is prima facie invalid, then subject to filing the trademark
cancellation petition by such party within 3 months , suit proceeding has to be
stayed. This is another thing that still under Section 124 (5) of the Trademarks
Act 1999, the Court can pass interlocutory order.
Suit for infringement of trademark and passing off are, though different in
nature, still for all practical purpose the same involves similar pleadings and
documents. Hence in almost all cases, where right holder is registered
proprietor the same files combined suit for trademark infringement and passing
What would be effect of Section 124 of Trademarks Act 1999 in such suit where
relief of infringement of trademark and passing off are sought in one suit. This
issue was dealt with by Hon'ble High Court of Delhi in CM (M) No.428 of 2021
titled as Parveen Kumar Gupta vs Mr. Ravi Chadha And Ors
disposing off the afore mentioned petition vide Judgement dated 06.08.2021, the
Hon'ble High Court of Delhi observed as under:
9. It is apparent from this order that this court had noted the submissions to
the effect that the suit was also one for passing off, delivery, etc., which was
not covered under Section 124(1) of the Trade Marks Act, and which fact had been
overlooked in the orders of the learned Trial Court. It was in the light of
these submissions that when the petitioner sought liberty to approach the Trial
Court with a Review Petition, the prayer was allowed. It does appear that the
question of limitation had not been agitated before this court during those
The learned Trial Court appears to have fallen into error in rejecting the
application under Section 5 of the Limitation Act by observing that it was
taking a 'holistic reading' of the order dated 6th December, 2017. In our view,
a 'holistic reading' would have pointed out to the learned Trial Court, that
permission to file a review petition had been granted in the backdrop of the
submission that while a suit for infringement could be stayed under Section 124
of the Trade Marks Act, the suit for passing off could continue.
10. This court was dealing with a similar issue in J. K. Oil Industries (supra)
where it referred to several decisions including those that have been relied
upon by the learned Trial Court in its order dated 6th March, 2017 to stay the
suit, namely, Data Infosys Ltd. (supra) and Micolube India Ltd.
as also the judgments of the Division Bench of this court in Puma Stationer
P. Ltd. v. Hindustan Pencils Ltd.
, 2010 (43) PTC 479 (Del)(DB) and
Formica International Ltd. v. Caprihans (India) Pvt. Ltd.
, AIR 1966 Cal 247,
to hold that a suit for passing off can continue even when the suit for
infringement of trade mark was liable to be stayed under Section 124 of the
Trade Marks Act.
11. The settled law is thus that Section 124 of the Trade Marks Act does not
provide for stay of action against passing off and is applicable only where a
rectification application/cancellation has been sought against the registered
trade mark that a plaintiff claims to be exclusively its own. This is intended
to avoid conflicting decisions by the Civil Courts and the Tribunal."
Thus the Hon'ble High Court of Delhi has reaffirmed the previous finding of its
predecessor court in its Judgement reported as J. K. Oil Industries v. Adani
, 2018 SCC OnLine Del 9367 , where in it has already been laid
down that Trademarks Act 1999 is effective for the relief pertaining to suit
involving trademark infringement and not for passing off.
It is because the suit for infringement of trademark is based on the
registration. On the other hand passing off remedy is based on common law right
and has got nothing to do with trademark registration. This is the reason why
Section 124 of Trademark Act 1999 and stay contemplated there in have no bearing
to the passing off action.
Written By: Ajay Amitabh Suman, Advocate
, Hon'ble High Court Of Delhi