India: Stay Of Proceeding In A Trademark Infringement Suit

Last Updated: 21 November 2012
Article by Kamakhya Srivastava

Trademark battles on the Indian turf has already generated an impressive precedent of case laws but the fight over the letter mark "FT" between The Financial Times UK and Bennett Coleman & Co. Ltd (BCCL) is a story of its own. Since the institution of the suit, the parties have relentlessly been on a warpath. Lately, a judgment in the instant case has raised some finer points of trademark jurisprudence in India.

An application was filed by BCCL for stay of proceeding, under section 124 of the Trade Marks Act 1999, questioning the validity of the registration of the mark FT held by Financial Times. BCCL contended that a prima facie consideration of the mark holds the same to be of a non-distinctive nature and also that the material on record is negligible to show that the letter mark `FT' has any inherent or acquired distinctiveness.

The Indian trademark law provides for stay of proceeding in a suit for infringement of a trademark in cases where the defendant pleads for invalidity of the plaintiff's mark or the plaintiff pleads the invalidity of the defendant's mark against the defendant's defence of the exercise of the right to use an identical or nearly resembling trademark given by registration under the Act.

The court, in order to stay the proceedings in the infringement suit, is required to see whether any proceedings for rectification of the register in relation to the plaintiff's or defendant's trademark are pending before the Registrar or the Appellate Board. In case of a pending rectification proceeding, the suit is stayed till the final disposal of such proceedings. When there is no rectification proceeding pending and the court is satisfied that the plea of invalidity of the plaintiff or defendant's mark is prima facie tenable, the suit is adjourned for a period of three months from the date of the framing of issues in order to apply for the rectification of the register.

BCCL contended that the inexonerable operation of sec 124 is such that when an application for rectification is moved before the Appellate Board, the Court at best has to be satisfied that the said request is prima facie tenable and if so proceed to stay the suit, to which the Court factored in the considerable delay by BCCL in filing rectification proceedings and preferring an application for stay of the suit under sec 124 of the Act after pleading invalidity in their written statement in the suit. Furthermore the Court also emphasized that it is conscious that a blanket acceptance of the BCCL's plea of prima facie tenability of the argument that letter marks are inherently incapable of distinctiveness may colour the Appellate Board's view and hence lead to unforeseen results.

Finally the Court dismissed BCCL's application as unmerited and held that the reasoning sought to in the instant case cannot be invoked under all circumstances because sec 124 does empower prima facie examination of tenability, but the pleas taken in the suit and the materials supporting the case does not make it an appropriate case where a prima facie view that the defence (non-distinctiveness of the letter mark) is tenable can be taken resulting in stay of the suit.

The Court made a very significant observation that while exercising the jurisdiction under prima facie examination of tenability of the plea of invalidity of a mark, a fine distinction has to be kept in mind between the nature of "tenability" of such a plea, while considering a temporary injunction motion, and one for the stay of suit.

The instant case, although fraught with delays of an extraordinary nature on the part of the defendant, brings forth the nuance of the trademark law in a very succinct manner. The registration of the mark under the Act, in all legal proceedings is an evidence of prima facie presumption of validity. Thus a plea of invalidity of the registered trademark in an infringement suit allows for rectification proceeding to be instituted and disposed before deciding on the issue of identical or deceptive similar trademarks likely to cause confusion on the part of public, which is likely to have an association with the registered mark. The Court in the instant case observes that the plea of invalidity is tested on different threshold levels while being examined during hearing of an application for interim injunction under civil procedure code and the stay of proceeding under sec 124 of the Act. Although the Court has stopped short of elucidating on the fine distinction between the two threshold levels, it seems that that the threshold for prima facie examination of tenability of the plea of invalidity of a mark in an application under sec 124 of the Act is at a higher level as against the threshold for the same in a motion for interim injunction. This is presumably due to the inherent nature of the provisions under which the applications are preferred. In an application for interim injunction, the determination of the prima facie case involves a composite appreciation of the facts and circumstances with respect to the plea of infringement and invalidity of the mark, whereas the stay of proceeding under sec 124 of the Act is specific to the case where only validity of the mark is questioned. Thus a high threshold becomes imperative to examine the prima facie tenability of the plea of invalidity.

The "tenability" of a validity challenge is a significant part of almost all the trademark litigations where issues with respect to rectification of the register, are pleaded by either of the parties. Thus, in order to bring a case within the purview of such "tenability", an applicant must show, with respect to registration of a trademark, either –

  1. An entry duly registered has been removed from the register or omitted there from for no valid reason; or
  2. An entry has been entered in the register although the mark has not been registered; or
  3. An entry is wrongly remaining in the list although there is already an order of removal or rectification; or
  4. A particular entry has been registered, but there is some error or defect in that entry thereby making it as one which is not the exact one, which was granted registration.

In conclusion, while the text of Section 124 undoubtedly indicates that the Court has to be satisfied that the non-registrability of a mark is prima facie tenable, at the same time, the Court's approach has to be circumspect since any determination about prima facie tenability would impinge on the marks of the rectification proceedings itself.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions