MR. AMRISH AGGARWAL TRADING AS M/S MAHALAXMI PRODUCT vs M/S VENUS HOME APPLICANCES PVT LTD. & ANR

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 07 February 2024
Judgment pronounced on: 17 May 2024

+ CO (COMM.IPD-TM) 258/2022
MR AMRISH AGGARWAL TRADING AS M/S
MAHALAXMI PRODUCT ….. Petitioner

Through: Mr. Ajay Amitabh Suman, Adv.

versus

M/S VENUS HOME APPLICANCES PVT LTD &
ANR ….. Respondents
Through: None.

Counsels Assisting the Court:-

Mr. R.K. Aggarwal, Ms. Ayushi Bansal, Mr. Vinay Padam, Advs.
Mr. Rohan J.Alva, Adv.
Mr. Manish Vashisht, Sr. Adv., Mr. Sameer Vashisht, Mr. Vanshay Kault, Ms. Harshita Nathrani, Ms, Vedansh Vashisht, Mr. Aman Singh
Mr. Anirudh Bakhru, Mr. Umang Tyagi, Ms. Vijay Laxmi, Advs.
Dr. Farrukh Khan, Ms. Tanzeela, Ms. Vidhi Jain, Advs.
Mr. Adarsh Ramanujan, Adv.
Mr. Arjun Natarajan, Ms. Kamana Pradhan Adv.
Ms. Yashi Agrawal, Adv.

CORAM:
HON’BLE MR. JUSTICE YASHWANT VARMA
HON’BLE MR. JUSTICE RAVINDER DUDEJA

J U D G M E N T
YASHWANT VARMA, J.

1. A learned Single Judge, doubting the correctness of the view expressed by the Court in Sana Herbals Pvt. Ltd. vs. Mohsin Dehlvi1 has framed the following question for the consideration of this Bench:-
“Whether the view by the Coordinate Single Bench in para 7 of Sana Herbals, that, after the abolition of the IPAB, there is no requirement of staying a civil suit during pendency of the rectification petition, even where the rectification petition is instituted under Section 124 of the Trade Marks Act, can sustain, in view of Section 124(2)?”
2. The issue arises in the context of Section 124 of the Trade Marks Act, 19992 and which envisages proceedings in a suit for infringement or passing off being stayed if it be found that proceedings for rectification have been initiated or were pending on the date when the suit comes to be instituted. As would be evident from a plain reading of Section 124 of the 1999 Act, it contemplates situations where either the defendant or the plaintiff were to raise an issue of invalidity of a mark. It also envisions a plurality of contingencies dependent upon whether a rectification action had already been initiated on the date when the suit proceedings commenced or were to be raised in the course thereof. In all such eventualities, the statute contemplates the suit proceedings being placed in abeyance.
3. Section 124 (1) (i) deals with a situation where the Trial Judge is apprised of rectification proceedings having already been initiated and pending on the date of initiation of the action before it. In terms of clause (ii) of Section 124(1), a plea of invalidity when raised is liable to be tried by the suit court solely on the anvil of whether the plea is prima facie tenable and if that question be answered in the affirmative, grant an opportunity to the applicant to initiate appropriate proceedings for rectification of the Register and consequently stay the proceedings on the suit awaiting the outcome of those proceedings.
4. Sana Herbals took note of the amendments introduced by virtue of the Tribunal Reforms Act, 20213 pursuant to which the Intellectual Property Appellate Board4 came to be abolished and the jurisdiction conferred upon it reverting to the High Court. In view of the aforesaid statutory amendments, the Court in Sana Herbals observed that since both the rectification application as well as the suit would come to be tried by a High Court, the possibility of any conflict would stand obviated and thus there would be no requirement of staying the suit proceedings. It is the aforesaid view which has been prima facie found to be untenable by the learned Single Judge while referring the matter for our consideration.
5. According to the learned Single Judge, the aforenoted observation as appearing in Sana Herbals is contrary to what was held by the Court in Elofic Industries (India) vs. Steel Bird Industries5 and which decision stood affirmed by a Division Bench of our Court in Puma Stationer P. Ltd. and Anr. vs. Hindustan Pencils Ltd6. The learned Single Judge was also of the opinion that Sana Herbals insofar as it declared that proceedings in the suit need not be stayed would also be contrary to the judgment of the Supreme Court in Patel Field Marshal Agencies vs. P.M. Diesels7. It is in the aforesaid backdrop that the matter has reached this Court. However, and before we proceed further, for the purposes of answering the reference which is made, we deem it apposite to notice the following skeletal facts.
6. The respondent had instituted an action for infringement and passing off before the Additional District Judge and which authority was exercising the powers of the designated Commercial Court. In the written statement which came to be filed by the petitioner, a challenge was raised to the validity of the mark held by the respondent-plaintiff. Accordingly, the petitioner moved an application referable to Section 124(1) of 1999 Act for the framing of an issue with respect to alleged invalidity. During the pendency of the said application and even before the Commercial Court could render an opinion on prima facie tenability, the application for rectification came to be filed before this Court.
7. The learned Single Judge firstly flagged for consideration the issue whether the rectification petition could have been filed at all, even before the Commercial Court had satisfied itself with respect to the tenability of the challenge which stood raised. While dealing with the aforesaid aspect, the learned Single Judge observed as under:-
“5.9 Though neither has the learned Single Judge in Elofic, nor has the Division Bench in Puma Stationer, particularly addressed the issue of whether, in a suit which has already been instituted, a rectification petition could be filed even before issues are framed under Section 124(1)(ii) by the Court and the suit is adjourned, that in fact was what was done in Elofic. In Elofic, the rectification petition was filed simultaneously with the filing of the written statement. The applicable provision at that time was Section 111 of the Trade and Merchandise Act 1958 (the TMAA 1958). Paras 10 and 42 of the judgment of the Supreme Court in Patel Field Marshal v. P.M. Diesels Ltd recognises that Section 111 of the TMAA 1958 is in pari materia with Section 124 of the present Trade Marks Act and that the law that developed with respect to Section 111 of the TMAA 1958 would apply mutatis mutandis to Section 124 of the present Trade Marks Act.
“10. The aforesaid question which arises in the present appeals in the context of the 1958 Act continues to be a live issue in view of the pari materia provisions contained in the Trade Marks Act, 1999 i.e. Sections 47, 57, 124 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as “the 1999 Act”).
*****
42. While Section 32 of the 1958 Act, undoubtedly, provides a defence with regard to the finality of a registration by efflux of time, we do not see how the provisions of the aforesaid section can be construed to understand that the proceedings under Sections 46 and 56 on the one hand and those under Sections 107 and 111 on the other of the 1958 Act and the pari materia provisions of the 1999 Act would run parallelly. As already held by us, the jurisdiction of rectification conferred by Sections 46 and 56 of the 1958 Act is the very same jurisdiction that is to be exercised under Sections 107 and 111 of the 1958 Act when the issue of invalidity is raised in the suit but by observance of two different procedural regimes.”
5.10 The Division Bench in Puma Stationer has approvingly cited Elofic, in which the rectification petition was filed along with the written statement, before framing of any issue in the suit or adjournment of the proceedings.
5.11 Sitting singly, I do not deem it appropriate, therefore, to enter into the issue of whether a rectification petition could be instituted by the defendant after filing of the suit even before an issue regarding validity is framed by the court and the matter is adjourned.
5.12 In view of the decision in Puma Stationer, the present rectification petition cannot, therefore, be dismissed as not maintainable merely because it has been filed in advance of any issue being framed by the learned Commercial Court on the tenability of the challenge, by Mahalaxmi, to the VENUS mark of Venus, or the framing of an issue in that regard.”
8. The learned Single Judge further clarified that the Court was not intending to rule on the issue of prima facie tenability since that would be an aspect which would have to be necessarily examined by the Commercial Court and which was in seisen of the suit itself. The Court accordingly proceeded to hold that the examination of the rectification petition would have to await a decision being taken by the Commercial Court on the question of whether the rectification action merited further consideration.
9. The second issue which appears to have arisen for consideration pertained to Section 124(2) of the 1999 Act and led to the learned Single Judge posing the question whether a filing of a rectification petition would ipso facto result in a stay of the suit proceedings. It was while trying the aforesaid issue that the learned Single Judge doubted the correctness of the observations as appearing in Sana Herbals. The Court finding itself unable to sustain or affirm the view that was expressed in Sana Herbals, firstly relied upon the plain language of Section 124(2) of the 1999 Act and observed that Sana Herbals clearly appears to have come to a conclusion which was contrary to the plain text of the statute. The Court also took into consideration Section 124(2) of the 1999 Act contemplating an order providing for a stay of suit proceedings as a necessary corollary to the filing of a rectification petition. The learned Judge found that the statute did not appear to confer any discretion in a court to consider staying suit proceedings or refusing to place its proceedings in abeyance. The stay of the suit according to the learned Judge was an “inexorable legislative consequence to the filing of the rectification petition”. The Court also took into consideration the indubitable fact of the transfer of jurisdiction from the abolished IPAB to the High Court coupled with the fact that the Legislature had made consequential amendments in Section 124(1) of the 1999 Act itself.
10. The learned Judge thus came to conclude that the observations in Sana Herbals were apparently contrary to the legal position as was enunciated in Puma Stationer. It was on an overall conspectus of the aforesaid that the referring Court proceeded to hold as follows:-
“6.8 Fourthly, Sana Herbals, in holding that there is no requirement of staying the suit, rules contrary to Puma Stationer, rendered by a Division Bench, which it has not noticed. Puma Stationer dealt with an identically worded Section 124, which contemplated the rectification petition being filed before the High Court. The decision specifically holds that, once a rectification petition is filed, stay of the pending suit, at least qua infringement, is mandatory, though the suit can proceed so far as passing off is concerned.
6.9 The Coordinate Bench has, in holding that it is not necessary to stay the suit once a rectification petition is filed under Section 124(1)(ii), justified the decision on the premise that, now, with the abolition of the IPAB, rectification proceedings are also decided by the High Court. In my respectful opinion, the learned Coordinate Bench has effectively held Section 124(2) to be no longer applicable after the abolition of the IPAB and the transfer, to the High Court, of the jurisdiction of rectification earlier vested in the IPAB. I have serious doubts as to whether such a finding can be returned by a Court, especially where Section 124(2) was never under challenge.
7. Moreover, it is not as though the retention of Section 124(2) on the statute book is an incidence of legislative oversight. Consequent on rectification jurisdiction returning to the High Court, after the abolition of the IPAB, Section 124(1) has been amended by the Legislature by the Tribunal Reforms Act, 2021. The words “Appellate Board” in Section 124(1) have been replaced by the words “High Court”. The Legislature has, therefore, duly recognised the fact that rectification proceedings would have to be instituted before the High Court and not before the IPAB and has duly amended Section 124(1). Even so, the legislature has not chosen either to delete or repeal, or even modify, Section 124(2). Section 124(2) stands as it is. The provision clearly and categorically envisages stay of the suit pending disposal of the rectification proceedings, even where the rectification proceedings are to be instituted before the High Court.
8. Any view by the Court that there is no requirement of staying the suit would, therefore, be directly contrary to Section 124(2). Where the Legislature has not chosen to delete Section 124(2) from the statute book, I have my serious reservations as to whether the Court can adopt a view that, given the present scenario, there is no requirement of staying the suit pending disposal of the rectification proceedings. At the cost of repetition, the stay of depending infringement suit, on a rectification petition being filed under Section 124(1)(ii), does not require any judicial order; it is an inexorable statutory consequence of the filing of the rectification petition.”
11. When the matter was initially called before us, learned counsels had underlined the significance of the questions which stood raised and the likelihood of the Reference impacting a large number of pending matters. We had, in light of the aforesaid submission, invited members of the Bar to address submissions on this reference. Responding to our request, we have had the benefit of hearing submissions advanced by Mr. Manish Vashisht, learned senior counsel as well as Mr. Anirudh Bakhru, Mr. Adarsh Ramanujan, Mr. Arjun Natarajan and Ms. Yashi Agrawal learned counsels who appeared before us. We deem it appropriate to place a sincere note of appreciation for the invaluable assistance which was extended by the members of the Bar and the erudite submissions which were advanced. The depth and clarity of their submissions has lightened the task at hand.
12. Mr. Vashisht, learned senior counsel at the outset submitted that the Court in Sana Herbals while holding that there was no imperative to stay suit proceedings clearly propounds a rule which is directly in conflict with the decision of the Division Bench in Puma Stationer. It was submitted that a plain reading of clauses (i) and (ii) of Section 124(1) of the 1999 Act would establish a legislative mandate operating upon the suit court to stay its hands if it be informed of a pending rectification action. According to learned senior counsel, the statute contemplates of similar consequences where a rectification petition comes to be preferred during the pendency of or post the institution of a suit. Mr. Vashisht pointed out that as per the statute, the only additional stipulation which operates in the case of the latter is of the suit court finding the rectification petition to be prima facie tenable and proceeding thereafter to place the proceedings in abeyance in order to enable the applicant to formally institute proceedings for rectification of the offending mark. According to Mr. Vashisht, the statute does not place any discretion in the hands of the court trying the suit to refuse placing further proceedings in abeyance once it has come to the conclusion that the action for rectification would merit further consideration.
13. It was submitted that as per the scheme of the Act, a plea of invalidity can be raised both by the plaintiff as well as the defendant. According to learned senior counsel, Section 124 of the 1999 Act is essentially structured so as to avoid the spectre of conflicting decisions and multiplicity of proceedings. It was his submission that the obligation to stay proceedings in the suit is manifest from the Legislature having consciously used the expression “shall stand stayed until the final disposal of the rectification proceedings” in Section 124(2).
14. Mr. Vashisht then contended that Sana Herbals appears to have mistakenly proceeded on the premise that both the suit as well as the rectification action would invariably come to be instituted before the High Court. It was pointed out by learned senior counsel that in terms of the provisions of the Commercial Courts Act, 20158 and dependent upon the specified value of the suit, the same could come to be instituted either before the designated Commercial Court or before the High Court dependent upon its pecuniary value. Learned senior counsel pointed out that Section 6 of the 2015 Act confers jurisdiction upon all commercial courts to try any suit or application relating to a commercial dispute of a specified value. It was pointed out that in terms of Section 3 of the 2015 Act, commercial courts may come to be constituted either at the District level or as Commercial Divisions in High Court which are otherwise empowered to exercise ordinary original civil jurisdiction.
15. It was thus argued that in case a suit alleging infringement or passing off were pending before a commercial court, a rectification petition once filed before the High Court would necessarily entail the court staying further proceedings awaiting the outcome of the rectification petition. It was submitted that even if both the actions were pending before a High Court, they need not necessarily be before the same Bench of the Court. In view of the above, Mr. Vashisht submitted that Sana Herbals erroneously holds that no specific order of stay need be entered.
16. Mr. Anirudh Bakhru firstly referred to the legislative history of trade mark law and submitted that undisputedly, prior to 1940, there was no statutory code which governed trademarks and disputes relating to that subject thus being governed by principles forming part of the common law. Mr. Bakhru submitted that the Trade Marks Act, 19409 represented the first codified statute in respect of trademarks. Our attention was drawn to Section 46 of the 1940 Act and in terms of which rectification petitions could be filed either before the Registrar or the High Court. Mr. Bakhru also referred to Section 73 of the 1940 Act pursuant to which an infringement suit was liable to be instituted before a District Court. Learned counsel submitted that although the 1940 Act envisaged challenges to the validity of registration being laid, it provided no mechanism which would ensure “congruence and consistency” between courts deciding infringement actions and the High Court or the Registrar ruling on a plea of validity.
17. Our attention was then drawn to the decision of the Union Government to set up the Trade Marks Enquiry Committee in 1953, chaired by Shri Justice N. Rajagopala Ayyangar, which submitted the Report of Shri Justice N. Rajagopala Ayyangar on Trade Marks Law Revision, 195510. It was this Report which recommended reintroducing the words “if valid” as appearing in Section 21 of the 1940 Act. Our attention was also drawn to the recommendations of the Ayyangar Committee that rectification actions should be decided exclusively by the High Court. It was the submission of Mr. Bakhru that it was the Ayyangar Committee which first recommended that suit proceedings should be stayed awaiting outcome of rectification proceedings. According to learned counsel it was the aforenoted recommendations which led to the adoption and incorporation of appropriate measures in the statute. We deem it apposite to extract Paras 61 and 62 of the Ayyangar Committee Report hereinbelow:-
“61. I am, however, in agreement with the Committee that every Court trying an infringement action or dealing with a prosecution under the relevant sections of the I.P.C. should not be vested with Jurisdiction to decide on the validity of the registration, The scheme which I am formulating, would, while vesting the power to order rectification of the register in such circumstances exclusively in the High Court, enable the defence of the validity of the registration being raised before every court trying an infringement action or a prosecution in respect of an offence in connection with a registered trade mark.
62. The question that next follows is how the exclusive jurisdiction vested in the particular High Courts to rectify the register should be correlated with proceedings in an infringement action which might be instituted before any District Court. I have considered the matter deeply and the best solution I am able to offer is, that in cases where a defendant in an infringement action raises a defence as regards the invalidity of the registration of the plaintiffs mark, such defence will not be gone into by the District Court or other Court trying the action. The defendant will be required within a reasonable time granted to him (in the draft I have suggested three months as reasonable) to take out appropriate proceedings for rectification before the Competent Court for that purpose. If he does this, the trial of the infringement action will be stayed. The Court trying the infringement action will however retain jurisdiction to pass, notwithstanding the stay, interim orders necessary to protect the rights of parties pending the decision of the suit. When the rectification proceeding is completed and readies a stage of finality, the result of those proceedings should be declared binding on the Court trying the infringement action. If, in the rectification proceedings; the registered trade mark is ordered to be taken off the register, the issue as to validity of registration will be decided against the plaintiff in the action; and the rest of the action, if anything remains, will be proceeded with. If on the other hand, the rectification proceeding fails and the mark is retained on the register, the other defences, if any, will be investigated and the action will proceed to trial on those other matters. Of course from the decision of the District Court, even without special provision in that regard in this Act, an appeal would lie to the higher courts right up to the Supreme Court in appropriate cases.”
18. Proceeding further, Mr. Bakhru then took us through the relevant provisions contained in Trade and Merchandise Marks Act, 195811 and to Sections 56 and 105 of the 1958 Act as they existed. Sections 56 and 105 of the 1958 Act are reproduced hereinbelow:-
“56. Power to cancel or vary registration and to rectify the register-
(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think it.
(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section(1) or sub-section (2).
(5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectifying the register accordingly.
(6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.
Section 105. Suit for infringement etc., to be instituted before District Court.
—No suit—
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered;
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.”
19. Mr. Bakhru also drew our attention to Sections 107 and 111 as they existed in the 1958 enactment and which read as under:-
“107. Application for rectification of register to be made to High Court in certain cases.—(1)Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (d) of sub-section (1) of Section 30 and the plaintiff questions the validity of the registration of the defendant’s trade mark, the issue as to the validity of the registration of the trademark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in Section 46, sub-section (4) of Section 47 or Section 56, such application shall be made to the High Court and not to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under Section 46 or sub-section (4) of Section 47 or Section 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court.
111. Stay of proceedings where the validity of registration of the trade mark is questioned etc.—
(1) Where in any suit for the infringement of a trade mark—
(a) the defendant pleads that the registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (d) of sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendant’s trade mark;
the court trying the suit (hereinafter referred to as the court), shall—
(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;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order insofar as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.”
20. It was the submission of learned counsel that both Sections 111 and 107 of the 1958 Act were provisions identical and pari materia to Sections 124 and 125 of the 1999 Act. According to Mr. Bakhru, the 1999 Act clearly contemplates that once a plea of invalidity is raised either by a plaintiff or a defendant, proceedings in the suit must necessarily be placed in abeyance. It was his submission that in case a prior rectification petition were pending in relation to either the plaintiff or the defendant’s trademark before the Registrar or the High Court, Section 124 of the 1999 Act mandates the suit proceedings being stayed awaiting the outcome of the rectification petition.
21. Mr. Bakhru further submitted that similarly even where no prior rectification action be pending, a court trying an infringement action may be called upon to examine a plea of invalidity that may be raised either by the plaintiff or the defendant. Upon such an objection being taken, Mr. Bakhru submitted, the Trial Judge is obliged to adjourn the suit for three months in order to enable the party to apply to the High Court for rectification of the Register. It was submitted that in either of the aforenoted scenarios, the outcome of the rectification proceedings would be binding on the court trying the infringement action.
22. The legal position in this respect, according to learned counsel, in any case stands conclusively settled by the Supreme Court in Patel Field Marshal Agencies. Our attention was specifically drawn to following passages from that decision:-
“29. The above seems to become more clear from what is to be found in Section 111 of the 1958 Act which deals with “stay of proceedings where the validity of registration of the trade mark is questioned”. The aforesaid provision of the 1958 Act specifically provides that if a proceeding for rectification of the register in relation to the trade mark of either the plaintiff or the defendant is pending before the Registrar or the High Court, as may be, and a suit for infringement is filed wherein the aforesaid plea is raised either by the defendant or by the plaintiff, the suit shall remain stayed. Section 111 further provides that if no proceedings for rectification are pending on the date of filing of the suit and the issue of validity of the registration of the plaintiff’s or the defendant’s trade mark is raised/arises subsequently and the same is prima facie found to be tenable, an issue to the aforesaid effect shall be framed by the civil court and the suit will remain stayed for a period of three months from the date of framing of the issue so as to enable the party concerned to apply to the High Court for rectification of the register. Section 111(2) of the 1958 Act provides that in case an application for rectification is filed within the time allowed the trial of the suit shall remain stayed. Sub-section (3) of Section 111 provides that in the event no such application for rectification is filed despite the order passed by the civil court, the plea with regard to validity of the registration of the trade mark in question shall be deemed to have been abandoned and the suit shall proceed in respect of any other issue that may have been raised therein. Sub-section (4) of Section 111 provides that the final order as may be passed in the rectification proceeding shall bind the parties and the civil court will dispose of the suit in conformity with such order insofar as the issue with regard to validity of the registration of the trade mark is concerned.
xxxx xxxx xxxx
31. Rather, from the résumé of the provisions of the 1958 Act made above, it becomes clear that all questions with regard to the validity of a trade mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the civil court. The civil court, in fact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the civil court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil court as regards the prima facie tenability of the plea of invalidity.
xxxx xxxx xxxx
41. Section 111 of the 1958 Act, and the corresponding Section 124 of the 1999 Act, nowhere contemplates grant of permission by the civil court to move the High Court or the IPAB, as may be, for rectification. The true purport and effect of Sections 111/124 (of the old and new Act) has been dealt with in detail and would not require any further discussion or enumeration. The requirement of satisfaction of the civil court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in the statutory authority to deal with the issue of invalidity by no means, tantamount to permission or leave of the civil court, as has been contended. It is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit.”
23. It was Mr. Bakhru’s submission that the principle as propounded in Sana Herbals is clearly erroneous since consolidation cannot possibly constitute a basis to interpret Section 124 of the 1999 Act. It was submitted that consolidation itself would be a contingency which could possibly arise only before the five High Courts which are conferred with original ordinary civil jurisdiction.
24. Mr. Bakhru pointed out that the Act itself does not contemplate rectification proceedings and a suit for infringement being filed before the same forum. Learned counsel thus submitted that Sana Herbals clearly fails to bear in consideration that infringement proceedings may be instituted before a commercial court at the District level and not necessarily before a High Court. It was in the aforesaid backdrop that leaned counsel urged us to hold that Sana Herbals proceeds on a wholly incorrect premise and if not rectified could lead to the possibility of conflicting decisions coming to be rendered dependent upon the court before which the infringement and rectification proceedings may come to be instituted.
25. Mr. Bakhru then submitted that the Court in Sana Herbals incorrectly proceeds to rest its conclusion or an understanding that the abolition of the IPAB, and which was a development which occurred after the judgment had been rendered in Patel Field Marshal Agencies would be determinative of the question. Mr. Bakhru submitted that the Court in Sana Herbals evidently failed to notice that the abolition of the IPAB had reverted the position back to as it stood under the 1958 Act. This too, according to learned counsel, renders the observations appearing in that decision untenable. Learned counsel consequently urged us to affirm and reinforce the view expressed by the learned Judge while making the instant Reference.
26. Mr. Adarsh Ramanujan also questioned the correctness of the conclusions rendered by the Court in Sana Herbals. Mr. Ramanujan underlined the evident and mandatory command of Section 124 of the 1999 Act while using the word “shall” and thus being liable to be presumed to be of imperative character requiring the suit court to stay proceedings upon finding that the pre-conditions as enshrined in Section 124 of the 1999 Act were fulfilled. Mr. Ramanujan also doubted the correctness of Sana Herbals insofar as it chose to proceed on a presumption of consolidation. Learned counsel has, in Paragraph 9 of his Written Submissions, also highlighted the apparent conflicts which may arise if one were to proceed on a hypothesis of consolidation. Paragraph 9 of the Written Submissions submitted by Mr. Ramanujan is reproduced hereinbelow:-
“9. Secondly, Sana Herbals incorrectly assumes that consolidation obviates the need for a stay without appreciating that consolidation is neither automatic nor possible at all times:

Rectification forum

Infringement
suit forum

HC with
supervisory
jurisdiction/
Same HC
HC without
supervisory
jurisdiction/
Different HC
Registrar in
Same State
Registrar in
Different
State

District Court
Consolidation possible if suit is transferred to
HC under S.24, CPC
Consolidation
not possible,
except if suit
is transferred
by SC under
S.25, CPC
Consolidation
not possible because District
Court has no
jurisdiction to
decide rectification
unless both are transferred to
HC under S.24, CPC
Consolidation
not possible because District Court
has no
jurisdiction to
decide
rectification

High Court exercising original jurisdiction
Consolidation possible in same court
Consolidation
not possible unless
transfer
ordered by
SC under
S.25, CPC
Consolidation
possible by HC
under Art. 227
Consolidation
not possible
unless
transfer
ordered by
SC under
S.25 CPC

27. Mr. Ramanujan also took us through the legislative scheme of the 1958 and 1999 Acts as also the recommendations made by the Ayyangar Committee Report to submit that while District Courts could try infringement suits, they were never conferred the power to rule on invalidity. That power, Mr. Ramanujan highlighted, was always conferred upon High Courts, which had been placed with the exclusive jurisdiction to decide on trademark validity. According to Mr. Ramanujan, this position prevails even today as would be evident from the fact that where a defence of invalidity is raised, the court trying the infringement action must await a finding being rendered in the rectification proceedings. According to learned counsel, the entire purpose of the aforesaid legislative measure was to ensure sequencing of decision making with the statute clearly contemplating and mandating validity being decided before infringement.
28. Mr. Natarajan drew our attention to Section 124(2) of the 1999 Act and advanced the following submissions based on first principles of interpretation. Learned counsel alluded to the “hypothetical syllogism” comprised in Section 124(2) of the 1999 Act, which was stated to be in the standard ‘if X then Y’ format’, i.e., if the party concerned proves to the court that he has made any such application as referred to under Section 124(1)(b)(ii) of the 1999 Act, either within the time specified therein or within such extended time as the court may allow, then the suit would be stayed until the final disposal of the rectification proceedings.
29. Mr. Natarajan argued that the stay of a suit until final disposal of the rectification proceedings is contingent upon the party concerned fulfilling the requirements under Section 124(2) of the 1999 Act of proving to the court that it has made such an application as referred to under Section 124(1)(b)(ii) of the 1999 Act, within the time limit specified or allowed. However, upon the fulfillment of the aforementioned requirements as laid down under Section 124(2) of the 1999 Act, according to learned counsel, the party concerned shall enjoy a vested right to a stay of the suit until final disposal of the rectification proceedings.
30. In view of the above, Mr. Natarajan contended that the abolition of the IPAB would not result in a dispensation of the statutory mandate to stay the suit until final disposal of the rectification proceedings and that any position to the contrary would not sustain, as the same would tantamount to depriving the party concerned of their vested right to a stay of the suit proceedings.
31. Ms. Yashi Agrawal had also addressed submissions similar to those addressed by Mr. Vashisht, Mr. Bakhru and Mr. Ramanujan, and which have been noticed hereinabove.
32. Ms. Agrawal argued that the decision of the learned Single Judge in Sana Herbals had incorrectly interpreted the decision in Patel Field Marshal Agencies, which mandated that the proceedings in the suit for infringement be stayed upon the institution of an appropriate application under Section 124 of the 1999 Act and the establishment of prima facie tenability of the plea regarding invalidity of the concerned party’s registered trademark. Learned counsel drew our attention to Paragraph 7 of the decision in Sana Herbals, which is reproduced hereinbelow:
“7. In Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, the Supreme Court observed that where, during the pendency of a suit, a rectification application is filed, the application can be pursued only upon a finding by the Civil Court on the prima facie tenability of the plea of invalidity. If the Civil Court does not find a triable issue on the plea of invalidity, then the said application cannot be pursued. The Supreme Court noted that this was necessary so as to avoid multiple proceedings on the same issue and the possibility of conflicting decisions. However, there have been subsequent developments since the passing of judgment in Patel Field Marshal Agencies (supra). In terms of the Tribunals Reforms Act, 2021, the IPAB has been abolished and the jurisdiction to decide rectification petitions now vests with the High Court under Section 21 of the Act. Therefore, now the suit as well as the rectification applications have to be decided by one authority alone i.e. the High Court and resultantly, there cannot be any possibility of conflicting decisions. Hence, the rectification petitions can be clubbed with the civil suits and there is no requirement of staying the civil suit.”

33. As per Ms. Agrawal, the decision of Sana Herbals was erroneous in law because the learned Single Judge failed to appreciate that while the power to entertain rectification petitions vests with the High Court, a suit for infringement as per Section 134 of the 1999 Act could come to be instituted before any court not being inferior to a District Court having jurisdiction to try the suit. As a result of the above, learned counsel contended, it could not have been said that the infringement suit and the rectification petition would necessarily be heard together. Learned counsel further submitted that the decision in Sana Herbals had failed to correctly appreciate Patel Field Marshal Agencies since the latter had considered both Section 124 of the 1999 Act prior to the abolition of the IPAB as well as Section 111 of the 1958 Act and which are pari materia to Section 124 of the present enactment, to conclude that a suit for infringement shall be stayed, upon a satisfaction of the requirements envisaged under Section 124(1)(b)(ii) of the 1999 Act being reached.
34. At this juncture, we also deem it appropriate to take note of the submissions advanced by Mr. Ajay Amitabh Suman and Mr. R.K. Agarwal, learned counsels for the petitioner and respondent respectively. Learned counsel for the petitioner submitted that the decision in Sana Herbals was correct in law and that there was no requirement for staying the suit proceedings as per Section 124 of the 1999 Act. Learned counsel relied upon Rule 26 of the Delhi High Court Intellectual Property Rights Division Rules, 202212 to submit that the Delhi High Court, being vested with the discretion to consolidate proceedings in Intellectual Property Right matters that pertain to similar disputes, would thereby have the power to consolidate the suit and rectification proceedings, and which would remove the need for a stay of the suit proceedings. Mr. Suman further submitted that without prejudice to his preceding argument, even if the Court were to arrive at a finding that suit proceedings are liable to be stayed as per Section 124 of the 1999 Act, the same would not extend to a passing off action since that is outside the purview of Section 124 of the 1999 Act. Mr. Suman would therefore contend that suit proceedings were not liable to be stayed under Section 124 of the 1999 Act.
35. However, Mr. Agarwal, learned counsel for the respondent, rendered submissions common to those made by the members of the Bar and submitted that the decision in Patel Field Marshal Agencies as well as a textual interpretation of Section 124 of the 1999 Act would lead one to the inevitable conclusion that the abolition of the IPAB would not eliminate the need for a stay of suit proceedings.
36. In order to holistically examine the issues which stand posited, we deem it appropriate to firstly extract a comparative chart of the provisions as they existed in the erstwhile 1958 Act and corresponded to Section 124 of the present enactment. That chart is reproduced hereinbelow:
COMPARATIVE CHART ON THE TRADE MARKS ACT
Trade and Merchandise Marks Act, 1958
Trade Marks Act, 1999 (Pre- IPAB abolition)
Trade Marks Act, 1999 (Post IPAB abolition)
S. 111: Stay of proceedings where validity of registration of the trade mark is questioned etc.
(1) Where in any suit for the infringement of a trade mark—
(a) the defendant pleads that the registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (d) of sub-section (1) of Section 30 and the plaintiff pleads the invalidity of the registration of the defendant’s trade mark;
the court trying the suit (hereinafter referred to as the court), shall—
(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;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order insofar as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.
S. 124: Stay of proceedings where the validity of registration of the trademark is questioned, etc.-
(1) Where in any suit for the infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(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 Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be
kept, appointing a receiver or attaching any property), during the period of the stay of the suit.
S. 124: Stay of proceedings where the validity of registration of the trademark is questioned, etc.-
(1) Where in any suit for the infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(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;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the [High Court] for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

37. As is plainly evident from a perusal of Section 111 of the 1958 Act, the statute provided in unambiguous terms that where a defendant were to plead invalidity of the plaintiff’s trademark or raise a defence under Section 30(1)(d) of the 1958 Act in response to a challenge raised by the plaintiff to the validity of the registration of the defendant’s mark in a pending suit for infringement, the court trying the suit was mandated to place further proceedings in abeyance upon being satisfied that the plea of invalidity was prima facie tenable. Similar consequences were constructed if the court trying a suit were to find that proceedings for rectification were pending either before the Registrar or the High Court.
38. Upon the formation of the IPAB, various amendments were made in the 1999 Act and thus conferring powers which were otherwise being exercised by High Courts in the hands of that Board. The power to examine petitions for rectification consequently came to be conferred and vested upon the Registrar or the IPAB. However, the imperatives for a stay of suit proceedings in cases where a rectification petition may have preceded the institution of that suit or where a plea pertaining to the validity of a mark were to be raised either by the plaintiff or the defendant, proceeded along lines similar to those created under Section 111 of the 1958 Act.
39. Post the abolition of the IPAB the statute reverted to the position as it existed under Section 111 of the 1958 Act and thus resurrected the position of High Courts being entitled to examine rectification challenges alongside the Registrar. As we read Section 124 of the 1999 Act as it presently stands, it is manifest that a court trying a suit is placed under a legislative mandate to stay proceedings thereon, if it be apprised of rectification proceedings having been initiated prior to its institution. The only additional qualification which applies is where a plea of invalidity comes to be raised in the course of the suit proceedings itself. In such a situation the Trial Judge is firstly obliged to evaluate the prima facie tenability of the plea as raised and if coming to the conclusion that the challenge would merit further consideration, to stay the proceedings in the pending suit for a period of three months, enabling the applicant to apply to the High Court for rectification of the Register.
40. The plain intent underlying the aforesaid procedure of placing suit proceedings in abeyance was lucidly explained by the Supreme Court in Patel Field Marshal Agencies, albeit with reference to Section 111 of the 1958 Act. This becomes apparent from a reading of the following passages of that decision:
“26. Insofar as its earlier view in AstraZeneca UK Ltd. [AstraZeneca UK Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd., 2006 SCC OnLine Del 1668 : (2006) 32 PTC 733] is concerned, the Full Bench [Data Infosys Ltd. v. Infosys Technologies Ltd., 2016 SCC OnLine Del 677 : (2016) 65 PTC 209] was of the opinion that the appellate jurisdiction of the High Court would only be confined to a consideration of the question of the prima facie assessment of tenability which would not touch upon the question of invalidity of the trade mark on merits. The view expressed in AstraZeneca UK Ltd. [AstraZeneca UK Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd., 2006 SCC OnLine Del 1668 : (2006) 32 PTC 733] was held to be unacceptable on that basis. Insofar as the abandonment of the plea of invalidity is concerned, the Full Bench was of the opinion that Section 124(3) merely contemplates abandonment of the plea/defence of invalidity in the suit and not an abandonment to claim rectification under Sections 47/57 of the 1999 Act.
27. Registration of a trade mark vests in the registered owner an exclusive right to use the mark in relation to the goods in respect of which the mark has been registered. This is, however, subject to such conditions and limitations as may be incorporated in the registration itself. It also grants to the registered owner a right to seek and obtain relief in case of infringement of the mark. Section 46 in Chapter VI of the 1958 Act contemplates removal from the register of any registered trade mark, inter alia, on the ground that the same was registered without any bona fide intention of use and, in fact, such mark has not been used up to one month prior to the date of the application for removal or that for a continuous period of five years there has been no bona fide use of the mark. Chapter VII of the 1958 Act deals with rectification and correction of the register of trade marks. Under Section 56, the Tribunal (Registrar or, as the case may be, the High Court), on application, may cancel or vary the registration of a trade mark on the ground of any contravention, or failure to observe a condition subject to which registration was granted.
28.  In cases where in a suit for infringement of a registered trade mark the validity of the registration of the trade mark is questioned either by the plaintiff or by the defendant, Section 107 of the 1958 Act provides that an application for rectification shall be made to the High Court and not to the Registrar notwithstanding the provisions contained in Section 46 or Section 56 of the 1958 Act. This would seem to suggest that in such cases (where a suit for infringement is pending) the legislative scheme is somewhat different.
29. The above seems to become more clear from what is to be found in Section 111 of the 1958 Act which deals with “stay of proceedings where the validity of registration of the trade mark is questioned”. The aforesaid provision of the 1958 Act specifically provides that if a proceeding for rectification of the register in relation to the trade mark of either the plaintiff or the defendant is pending before the Registrar or the High Court, as may be, and a suit for infringement is filed wherein the aforesaid plea is raised either by the defendant or by the plaintiff, the suit shall remain stayed. Section 111 further provides that if no proceedings for rectification are pending on the date of filing of the suit and the issue of validity of the registration of the plaintiff’s or the defendant’s trade mark is raised/arises subsequently and the same is prima facie found to be tenable, an issue to the aforesaid effect shall be framed by the civil court and the suit will remain stayed for a period of three months from the date of framing of the issue so as to enable the party concerned to apply to the High Court for rectification of the register. Section 111(2) of the 1958 Act provides that in case an application for rectification is filed within the time allowed the trial of the suit shall remain stayed. Sub-section (3) of Section 111 provides that in the event no such application for rectification is filed despite the order passed by the civil court, the plea with regard to validity of the registration of the trade mark in question shall be deemed to have been abandoned and the suit shall proceed in respect of any other issue that may have been raised therein. Sub-section (4) of Section 111 provides that the final order as may be passed in the rectification proceeding shall bind the parties and the civil court will dispose of the suit in conformity with such order insofar as the issue with regard to validity of the registration of the trade mark is concerned.
30. Following well-accepted principles of interpretation of statutes, which would hardly require a reiteration, the heading of Section 111 of the 1958 Act i.e. “Stay of proceedings where the validity of registration of the trade mark is questioned, etc.”, cannot be understood to be determinative of the true purport, intent and effect of the provisions contained therein so as to understand the said section to be contemplating only stay of proceedings of the suit where validity of the registration of the trade mark is questioned. Naturally, the whole of the provisions of the section will have to be read and so read the same would clearly show lack of any legislative intent to limit/confine the operation of the section to what its title may convey.
31. Rather, from the résumé of the provisions of the 1958 Act made above, it becomes clear that all questions with regard to the validity of a trade mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the civil court. The civil court, in fact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the civil court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil court as regards the prima facie tenability of the plea of invalidity.”

41. The Supreme Court in the aforenoted decision explained the clear legislative intent to be the imperative need to avoid multiplicity of proceedings and to ensure that a suit does not proceed parallelly while a petition for rectification were to be awaiting consideration and disposal. In Puma Stationer, the very same issue arose for consideration yet again. However, by this time the 1999 Act had come into force and the Court was thus called upon to answer the issue of stay of suit proceedings in the context of Section 124 of the 1999 Act. The Court while rendering its decision in Puma Stationer firstly referred to the exposition of the legal position in Elofic Industries and ultimately went on to approve the same. This would be manifest from a reading of the following passages from Puma Stationer:
“8. Similarly, in Elofix Industries (India) v. Steel Bird Industries, AIR 1985 Del 25813: (1985) 5 PTC 161 (Del) in composite proceedings for alleged infringement and passing off the learned Single Judge in paragraph 5 of the Report came to the conclusion that the suit is liable to be stayed:
“It is not disputed that after the service of the summons in the present suit, the defendants filed their written statement on 14-9-1983 and simultaneously filed C.O. No. 17/1983, a petition under Sections 107, 46 and 56 of the Trade & Merchandise Marks Act for the rectification of the plaintiffs trade Mark No. 252967-B in Class 7, dated. 7-11-1968 Section 111 seeks to prevent parallel enquiries in the same matter. The intention of the Legislature is that the Court trying the suit must wait for the result of rectification proceedings before it passes any final order or decree involving the validity of the registration. Instead of requiring the Court to raise as issue regarding the invalidity of the plaintiff’s registration of the trade mark, the defendant filed the rectification proceedings. In my opinion this is a substantial compliance with the provisions of Clause (B)(ii) of Sub-section 1 of Section 111 of the Trade & Merchandise Marks Act. Even otherwise under Section 151 of the Code P.C. this Court under its inherent powers can grant the stay of the action of the plaintiff, as no useful purpose would be served by proceeding with the case while the plaintiff’s trade mark is in jeopardy and the outcome of the rectification proceedings is awaited.”
9. We see no reason to differ with the view taken by two learned Single Judges of this Court on a plain reading of Section 111 of the Trade and Merchandise Marks Act, 1958 which is in pari materia with Section 124 of the Trade Marks Act, 1999.
10. Learned Counsel for the Respondent, however, drew our attention to Bhavnesh Mohanlal Amin v. Nirma Chemicals Works Ltd., (2006) 1 SCC 540 : JT (2005) 10 SC 232 : (200