India: Fine Distinction To Be Made Between The Nature Of "Tenability" Of A Plea, While Considering A Temporary Injunction Motion On The One Hand , And For Stay Of Suit On The Other, While Exercising Jurisdiction Under Section 124 Of The Trademarks Act, 1999
In the case of Financial Times Ltd. v Bennett Coleman &
Co. Ltd. an application was made under Section 124 by Bennett
Coleman & Co. Ltd (Defendants No. 1 and 2) who sought for the
stay of the proceedings.
Relying upon the case of Puma Stationer Pvt. Ltd. and Anr. v
Hindustan Pencils Ltd; where the court had held that when an
application for rectification under Section 124 is moved before the
Board, Court should proceed to stay the suit, only when it is
satisfied that the request is prima facie tenable. The
defendants contended that prima facie Financial Times Ltd's
(the Plaintiff) letter mark 'FT' applied for in1987, in
respect of which the present infringement action had been filed,
was not distinctive. Further, they argued that the Courts enquiry
should have stopped and concluded at the point of time when the
application had been made by the Plaintiff.
It was contended by the Plaintiff that Section 124(1) (ii) is
essentially discretionary and that the Court had to first conclude
an appraisal of the materials on record, that the plea of non -
registrability was, prima facie, tenable. Further, they argued that
the suit was a composite one claiming infringement as well as
alleged passing off. Lastly, it was argued that the Defendants had
lost their credibility since they had applied for an identical mark
'FT' with the Trade Mark Registry.
After careful consideration of the submissions, the Court
observed, that all that it is required to do in a situation where a
rectification proceeding is pending, as on the date of the suit,
is, to stay it in the event when it is satisfied that, the
Defendant's plea of the invalidity of the Plaintiff's trade
mark is a prima facie tenable plea. In regard to Section
124 (1)(b)(i) if the rectification proceedings are pending as on
the date of the suit, the court has no option but to stay the
It was held that even though the Defendants No.1 and 2 pleaded
invalidity of the mark, they had chosen to approach the court for
stay only after 3 years of filing the application for
rectification. Further, the Defendants had not stated why they had
sought for rectification only after five years of filing the
written statement. The court furthermore explained that it was
conscious that a blanket acceptance of the Defendant's plea of
prima facie tenability of the argument that the letter
marks is incapable of distinctiveness would lead to unforeseen
results. This would invariably colour the competent Tribunal's
view and tilt the proceedings unfairly in favour of the
In conclusion, the Court stated that while exercising the
jurisdiction of Section 124, a fine distinction has to be kept in
mind between the nature of "tenability" of such a plea,
while considering a temporary injunction motion on the one hand ,
and for stay of suit on the other. The Court further opined that
this was not an appropriate case where a prima facie view
that the defence is tenable could be taken resulting in stay of the
suit. The Court also could not help noticing that the
Defendants No.1 and 2 had claimed distinctiveness of the letter
mark 'FT' and had applied for its registration, almost
concurrently with the filing of the present application. Therefore,
the application was held to be unmerited.
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