Defining the powers and jurisdiction of specialized judicial
bodies and the Courts is essential to ensure proper functioning of
the legal system. Often there is an overlap between the powers of
specialized judicial bodies and Courts; thereby creating ambiguity
in legal proceedings. Section 124(1)(b)(ii) of the Trademark Act
has been subjected to different interpretation by various Courts in
the country. The Application for rectification of a mark before the
IPAB deals with validity of trademark registration when a suit is
pending before a civil Court. The question is whether prior
approval of the Court is necessary in such cases. The Delhi High
Court, in the case of Data Infosys Ltd & Ors vs Infosys
Technologies Ltd., has made an attempt to define the powers of
Courts and the IPAB.
Infosys Technologies (Respondent) had filed a suit for trademark
infringement against Data Infosys (Applicant). During the pendency
of this suit, the Applicant's mark was registered by the
Trademark Registrar. The Respondent filed for rectification of the
registration of the mark before the IPAB, the Applicant petitioned
the Court that the Respondent could not file an application for
rectification of mark under S.124 (1) (b)(ii) without obtaining the
prior permission of the Hon'ble Court. The Applicant cited
Asterazeneca UK Ltd. & Anr. vs Orchid Chemicals and
Pharmaceuticals Ltd(Astrazeneca case) to substantiate their
claims. The Respondent, on the other hand, relied upon the Madras
High Court decision in the case of B. Mohamed Yousuff vs Prabha
Singh Jaswant Singh & Ors where it had been ruled that a
right to file an application for rectification is a statutory
right, conferred upon a party who is aggrieved by an entry made in
the register. The Delhi High Court decided in favor of the
Respondent's claims and overruled its previous decision in the
Astrazeneca case. The Court ruled that, the IPAB's power of
assessing the tenability of a plea for invalid trademark
registration was not dependent upon the ruling of civil Courts. The
Court further opined that, when a plea for invalid trademark
registration is pending before the IPAB under Section 124(1) (i)(a)
the suit before the Court (concerning the same matter) ought to be
stayed until the decision of the IPAB. However, if there is no
application for rectification before the IPAB when the suit is
pending before the Court and a party to the infringement suit
wishes to challenge it after the filing of the suit, it may do so
within an allotted period of time. If a party does not file a
rectification suit during the allotted time frame granted by the
Court (under Section 124(1) (b)(ii)), such a party is barred from
raising this plea.
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