Trade marks act,
prabhakar singh
(Expert) 11 August 2011
CHAPTER XIII
MISCELLANEOUS
124. (1) Where in any suit for infringement of a trade mark---
(a) the defendant pleads that registration of the plaintiff’s trademark
is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2)
of section 30 and the plantiff 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 plantiff’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.
52 of 1962
45 of 1860
Limitation of
prosecution
Information as
to commission
of offences
Punishment of
abetment in
India of acts
done out of
India.
Instructions of
central govern
ment as to
permissable
variation to be
observed by
criminal courts.
Protection of
action take in
good faith
Certain persons
to be public
servants
Stay of
proceedings
where the
validity of
registration of
the trade mark
is questioned,
etc.42 THE GAZETTE OF INDIA EXTRAORDINARY [PART-II
(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 subsection (1) or sub-section(2) shall be binding upon the paries 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 form making any interlocutory order (including any order granting
an injections, directing account to be kept, appointing a receiver or attaching any property).
during the period of the stay of the suit.
