The Delhi High Court, recently, held that a rectification petition could be filed against trade mark registration even before the court trying the suit is satisfied regarding the tenability of the challenge.
In this case, the Respondent/Plaintiff (“Venus”) had filed a suit against the Petitioner/Defendant (“Mahalaxmi”) alleging trade mark infringement and passing off. Thereafter, Mahalaxmi filed an application seeking the court’s permission to file a rectification petition against Venus’ registered trade mark. While this application was pending disposal, Mahalaxmi went ahead and filed the rectification petition. In these circumstances, the court questioned the maintainability of a rectification petition in relation to a trade mark registration which is already the subject matter of a pending suit.
Mahalaxmi placed reliance on the decision of a two-judge bench in Puma Stationer P. Ltd. v. Hindustan Pencil Ltd [(2010) 43 PTC 479], which affirmed the decision of a single judge in a case where the rectification petition and the written statement were filed simultaneously. The single judge had held that (a) even if a rectification petition is filed subsequent to the institution of a suit, it would be in compliance with the statute, and (b) even otherwise, since the court has inherent powers to stay the suit proceedings till disposal of the rectification petition, no useful purpose would be served by proceeding in the suit till the outcome of the rectification proceeding.
The court, in this case, held that though the rectification petition cannot be dismissed as being not maintainable, the issue of tenability of the challenge of validity is still open to the court adjudicating the suit, and the rectification petition would be heard on merits only once the court finds Mahalaxmi’s challenge to Venus’ trade mark tenable.
As regards the stay of the civil suit, the court has referred the issue for consideration to a two-judge bench as to whether the view taken in Sana Herbals Pvt. Ltd. V. Mohsin Dehlvi [2022 SCC OnLine Del 4482], that after abolition of the Intellectual Property Appellate Board, there is no requirement of staying a civil suit during the pendency of the rectification petition.
Mr. Amrish Aggarwal, trading as M/s Mahalaxmi Product v. M/s Venus Home Appliances Pvt. Ltd. & Anr. [C.O.(COMM.IPD-TM) – 258/2022], Order dt. September 27, 2023
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