What happens when a trademark owner files an infringement suit, but the defendant argues that the plaintiff’s trademark registration itself is invalid?
This question is particularly important in Indian trademark litigation because trademark infringement and trademark validity are related but distinct legal issues.
Section 124 of the Trade Marks Act, 1999 provides a statutory mechanism for dealing with situations where the validity of a trademark registration is questioned during an infringement suit. Section 57, on the other hand, deals with cancellation, variation and rectification of entries in the Register of Trade Marks. (India Code)
Understanding the relationship between Section 124 and Section 57 is therefore essential for businesses, trademark owners and practitioners involved in trademark disputes.
What Is Section 124 of the Trade Marks Act, 1999?
Section 124 is titled:
“Stay of proceedings where the validity of registration of the trade mark is questioned, etc.”
The provision applies in the context of a pending trademark infringement suit.
Broadly, it addresses situations where:
- The defendant pleads that the plaintiff’s trademark registration is invalid; or
- In the circumstances specified in Section 124(1)(b), the validity of the defendant’s trademark is raised by the plaintiff.
Where the statutory conditions are satisfied, the civil court follows the mechanism prescribed under Section 124, which can involve a stay of the infringement proceedings while the validity issue is pursued through rectification proceedings. (IndiaCode by eCourtsIndia)
Trademark Infringement vs Trademark Validity
These are two different legal questions.
Question 1: Is the trademark being infringed?
The court may examine whether the defendant’s use amounts to infringement under the applicable provisions of the Trade Marks Act.
Question 2: Is the plaintiff’s trademark registration valid?
The defendant may contend that the registration should not remain on the Register because of grounds recognized under the Act.
These questions can arise in the same litigation, but the validity challenge is subject to the statutory mechanism under the Act.
This distinction is central to understanding Section 124.
Example: How Section 124 Can Arise
Suppose Company A owns a registered trademark called “ORBITA” and files an infringement suit against Company B for using a similar trademark.
Company B argues:
“Company A’s registration itself is invalid.”
Company B may rely on facts suggesting that the registration was wrongly granted or should be cancelled under the applicable provisions of trademark law.
The dispute now involves two issues:
ORBITA registration + infringement claim
versus
ORBITA registration + validity challenge
Section 124 becomes relevant because the validity of the registration has been questioned within an infringement suit.
What Happens When the Defendant Challenges the Validity of the Plaintiff’s Trademark?
Section 124 lays down a specific procedure.
Where the relevant conditions are met, the civil court considers the plea concerning invalidity. If the court is satisfied that the plea is prima facie tenable, the statutory procedure provides for framing an issue regarding validity and staying the suit to enable the concerned party to pursue rectification proceedings before the appropriate forum.
The statutory framework is important because the validity issue is not simply converted into an ordinary infringement question before the civil court.
The Supreme Court’s decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd., reported as (2018) 2 SCC 112, is a leading authority concerning the relationship between infringement proceedings and rectification/validity proceedings. (Indian Kanoon)
Section 124 and Section 57: What Is the Difference?
This is one of the most important questions in trademark litigation.
Section 57
Section 57 deals with:
- Cancellation of trademark registration
- Variation of registration
- Rectification of the Register
- Removal or correction of entries in appropriate circumstances
The present statutory framework allows applications under Section 57 to be made to the High Court or Registrar, as applicable. (IndiaCode by eCourtsIndia)
Section 124
Section 124 deals specifically with the situation where validity becomes an issue during an infringement suit.
Therefore:
Section 57 → Rectification/cancellation mechanism
Section 124 → Procedural mechanism when validity is questioned in an infringement suit
The two provisions should not be treated as interchangeable.
Can a Defendant Still Seek Rectification Under Section 57 After an Infringement Suit Is Filed?
This issue has been considered by the Delhi High Court.
In Anubhav Jain v. Satish Kumar Jain, 2023 SCC OnLine Del 233, the Delhi High Court considered the relationship between Section 57 and Section 124.
The Court held, in the circumstances before it, that the right under Section 57 and the right contemplated under Section 124(1)(b)(ii) are independent. The Court also observed that Patel Field Marshal was not authority for the proposition that filing an infringement suit automatically extinguishes the right available under Section 57. (Indian Kanoon)
This distinction is significant because it demonstrates that the existence of an infringement suit does not, by itself, mean that every independent statutory remedy relating to rectification disappears.
However, where the specific procedural mechanism under Section 124 is triggered, practitioners must comply with that mechanism.
What Did Patel Field Marshal Agencies Decide?
The Supreme Court’s decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd. examined the statutory scheme concerning challenges to trademark validity in the context of infringement proceedings.
The Court considered the relationship between infringement proceedings and rectification proceedings and emphasized the special statutory procedure governing a validity challenge arising within an infringement suit. (Indian Kanoon)
The judgment is particularly relevant when determining:
- When a validity plea can trigger the Section 124 mechanism
- The role of the civil court
- The requirement of a prima facie tenable plea
- Framing of the validity issue
- The subsequent rectification proceedings
- The relationship between infringement litigation and rectification
The case remains an important authority when analysing trademark validity challenges in infringement litigation.
Has the IPAB Been Replaced?
Older trademark judgments frequently refer to the Intellectual Property Appellate Board (IPAB).
However, the institutional framework has changed following the abolition of the IPAB.
The current statutory framework places relevant rectification jurisdiction with the High Court or Registrar, as applicable. Section 57 itself now reflects the High Court/Registrar framework. (IndiaCode by eCourtsIndia)
Therefore, when reading older judgments, practitioners should read references to the former Appellate Board in light of the current legal and institutional structure.
How Is a Trademark Rectification Application Filed?
Under Rule 97 of the Trade Marks Rules, 2017, an application to the Registrar under specified rectification provisions, including Section 57, is made in Form TM-O and must contain the relevant statement setting out the applicant’s interest, facts and relief sought. (IP India)
The rectification procedure then proceeds according to the applicable statutory and procedural framework.
Broadly, the process can involve:
Rectification Application → Notice to Registered Proprietor → Counterstatement → Evidence → Further Proceedings → Decision
Rule 98 provides for the registered proprietor’s counterstatement and subsequent evidence procedure. Rules 97–100 are specifically contained in the chapter dealing with rectification and correction of the Register. (IP India)
Is Rectification the Same as Cancellation by a Civil Court?
Not exactly.
A defendant’s allegation that a trademark registration is invalid does not automatically cancel the registration.
The Trade Marks Act establishes a statutory framework for challenging the Register.
Therefore, parties should distinguish between:
A plea of invalidity
and
An actual order cancelling or varying the registration.
A registration continues to exist unless and until it is affected through the appropriate legal process.
This is why the procedural requirements surrounding Section 124 are important.
Why Is Section 124 Important in Trademark Litigation?
Section 124 becomes particularly important because the validity of a registered trademark can directly affect an infringement claim.
Consider this sequence:
Registered Trademark
↓
Infringement Suit
↓
Defendant Challenges Validity
↓
Court Considers Section 124 Mechanism
↓
Rectification Proceedings
↓
Validity Determined Through Appropriate Proceedings
The outcome of the validity proceedings can have significant consequences for the infringement litigation.
Section 57 vs Section 124: Quick Comparison
| Feature | Section 57 | Section 124 |
|---|---|---|
| Main purpose | Rectification/cancellation/variation of registration | Procedure where validity is questioned in infringement litigation |
| Context | Rectification proceedings | Pending infringement suit |
| Key issue | Whether an entry/registration should be cancelled, varied or rectified | How validity challenge affects the infringement suit |
| Procedural framework | Section 57 + applicable Rules | Section 124 + applicable procedural provisions |
| Current institutional framework | High Court/Registrar, as applicable | Civil court + appropriate rectification forum |
| Form for rectification before Registrar | TM-O under Rule 97 | Depends on the statutory stage and forum |
| Automatic cancellation? | No | No |
The exact procedural route depends on the facts, the nature of the validity challenge and the stage of the infringement proceedings.
Common Mistakes in Trademark Validity Challenges
1. Treating a registration as completely immune from challenge
Trademark registration provides statutory rights, but the Register can still be challenged under the Act.
2. Assuming that merely alleging invalidity cancels the trademark
A bare allegation does not itself remove a trademark from the Register.
3. Ignoring Section 124
Where validity is questioned within an infringement suit, the Section 124 mechanism may become critical.
4. Confusing Section 57 with Section 124
Section 57 and Section 124 serve different statutory functions.
5. Relying only on old judgments without checking the current framework
Older cases may refer to the IPAB and provisions of earlier trademark legislation. The current institutional and statutory framework should be verified before relying on them.
Practical Checklist for Defendants Challenging a Trademark Registration
If you are defending a trademark infringement suit and believe that the plaintiff’s registration is invalid, consider the following:
- Identify the exact ground of invalidity.
- Examine the plaintiff’s trademark registration.
- Check the registration history and relevant documents.
- Identify the statutory provision supporting the validity challenge.
- Plead the invalidity issue appropriately.
- Examine whether Section 124 is attracted.
- Assess whether a prima facie tenable issue exists.
- Consider the appropriate rectification forum.
- Prepare the necessary evidence supporting the validity challenge.
- Monitor the procedural timelines carefully.
- Avoid treating the validity allegation as equivalent to cancellation.
Because the consequences can be significant, the procedural strategy should be determined from the specific facts of the case.
Conclusion: Understanding the Link Between Infringement and Rectification
Section 124 of the Trade Marks Act, 1999 plays an important procedural role when the validity of a registered trademark is questioned during an infringement suit.
At the same time, Section 57 provides the statutory framework for rectification, cancellation and variation of entries in the Register.
The Supreme Court’s decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd. and the Delhi High Court’s decision in Anubhav Jain v. Satish Kumar Jain are important authorities for understanding the relationship between these provisions. (Indian Kanoon)
The key takeaway is:
Trademark infringement and trademark validity are connected, but they are not the same legal question.
A registered trademark can be challenged through the statutory mechanisms provided under the Trade Marks Act, but a mere allegation of invalidity does not automatically cancel the registration.
For businesses and trademark owners, this reinforces an important point: registration provides valuable statutory protection, but maintaining and defending the validity of the registration can become equally important when serious trademark litigation arises.