India: Power Of Registrar To Accept Rectification Application During The Pendency Of Suit

Last Updated: 14 December 2006
Article by Manisha Singh Nair

Sec. 57 of the Trade and Merchandise Marks Act, 1958 gives power to registrar to rectify the register. However, the plain reading of this section gives rise to a conflicting situation in light of section 107 of the Act, which puts a bar on power of registrar in this regard. The Intellectual Property Appellate Board, Chennai addressed the question of power of registrar to accept rectification application during a pendency of suit in High Court, in the of Sun Pharmaceutical Industries Ltd v. Stadmed Pvt.Ltd &Ors., 2006 (33) PTC 506 (IPAB).


The rectification application is filed by Stadmed Pvt.Ltd (respondent) against M/s Sun Pharmaceutical Industries Ltd who is the appellant in this case. The Sun pharmaceuticals are the manufacturers of medicines and medicinal preparations. They are selling the medicines under the registered trademarks ‘ALZOLAM’ and ‘ZOLAM’. . The trademark ‘ZOLAM’ was first applied and registered by a company named FDC Limited during 1986.The mark was later on assigned to one Mr.Harish Uchil who in turn assigned the said mark to the appellant. The petitioners are presently the proprietors of the said mark.

The appellant claims that they have filed an infringement suit against respondent in the High court of Calcutta for the infringement of said marks. However, the injunction granted in that case was ultimately vacated.

Later on, tadmed Pvt Ltd filed an application for rectification on the ground that the trade mark ‘ZOLAM’ is not distinctive and the same was registered without any bonafide intention to use and that there is infact no bonafide use of the said mark for the time being. One month before the date of application or that up to the date of one month before the date of application a continuous period of five years have elapsed during which the trademark ZOLAM was not used and hence, it is liable to be removed from the registrar. It was further pointed out that the application of the Stadmed to the said mark is pending before the registrar.

Respondent further preferred another application for rectification on the ground that the trademark ‘ALZOLAM’ was also not registrable as it is deceptively similar to the basic drug ‘ALPRAZOLAM’ and the registrar decided against respondent i.e. Stadmed Pvt. Ltd.

The case of the Sun Pharmaceuticals is that when the registrar had allowed the rectification of the mark a suit for the infringement of the same was pending before the High Court and, hence the application ought to have been made to the High Court as per Section107 of the Trade and Merchandise Marks Act 1958, and registrar have no jurisdiction to entertain the petition.

The Deputy registrar by his order held that the Act or Rules are silent as to whether the registrar should not deal with the rectification application or whether the same should be withdrawn and refiled while the suit is pending before the High Court, and hence proceeded with the matter and asked appellant to file counter statement. The registrar after recording the evidence, allowed the application for rectification for the trade mark ‘ZOLAM’ and disallowed the rectification application on ‘‘ALZOLAM’. The present appeal is against this order of Deputy Registrar.


The specific contention raised by the appellant is that the Deputy registrar had failed to appreciate that section 107(1) provides that in a suit for infringement, where the validity of the registration is questioned by the defendant, he issue of the validity has to be decided by an application made to the High Court. Hence, the deputy registrar ought to have dismissed the application as per the provisions of Section 107(1) of the Act and ought to have been referred the same to the High Court as per the Section 107(2) of the Act.

In order to buttress their argument they relied on the Whirlpool Corporation v. Registrar of Trademarks, Mumbai & Ors, 1998 PTC (18) 717 (SC); where the Court held that " The extent of jurisdiction conferred by the Section 56 of the Registrar to rectify the Register, is however, curtailed by Section 107 which provides that an application for rectification shall, in certain situation, be made4 only to the High court. These situations are mentioned in Sub-section (1) of section 107, namely where in a suit for infringement of the registered Trademark, the validity of the registration is questioned by the Defendant or the defendant, in that suit, raises the defense contemplated by section 30(1) (d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defense questions the validity of the registration of defendant’s trademark. In these situations, the validity of the registration of the Trademark can be determined only by the High Court and not by the registrar".

On the other hand, respondent contented that they are carrying on with the manufacture of medicines and they had applied for the registration of the mark ‘ZOLAM’ which they have invented and adopted for pharmaceutical products since 1991. Further, it was pointed out that the said suit in the Calcutta High Court was stayed on the ground that an application for rectification is pending before the Registrar and this has not been challenged by Sun pharmaceuticals. It is alleged that the Sun pharmaceuticals have approached the court with unclean hands and hence the appeal is to be dismissed. Owing to the above facts, it is contented that the issue cannot be reopened.


The court placed its reliance on the Whirlpool Corporation case and held that the registrar have no power to entertain the application for rectification under section 107 of the Trade and Merchandise Marks Act, 1958 when the suit is pending before the High Court.


Section 107(1) and (2) of the Trade and Merchandise Act, 1958 categorically holds that when a suit for infringement is pending before the High Court the registrar has no power to entertain an application for rectification. The view of the deputy registrar that the Act or rules are not are not clear in this matter is unfounded. If a matter is pending before the higher court, it is the prerogative of that court to decide the matter and the lower court is not expected to make any observations in the same case. The objective is to give finality to the judgment of the Court and this seems to be the rationale for section 107(1) and (2). The case can also be considered as an example of purposive interpretation given to the two provisions.

Though the case is based on the Trade and Merchandise Marks Act, 1958 but the procedure with regard to powers of registrar for accepting a rectification application during Pendency of suit is similar in the Trade Marks Act, 1999 – the present Act in force. The corresponding section to 107 of Trade and Merchandise Marks Act, 1958 is section 125 of the Trade Marks Act, 1999 which states that "notwithstanding anything contained in section 47 or section 57, such application shall be made to the Appellate Board and not to the Registrar".

© Lex Orbis 2006

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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.