Trade mark infringement suit stayed during pending rectification proceedings, while passing off claim may continue separately.

Section 124(1) of the Trade Marks Act, 1999 was treated as mandatory where validity of a registered trade mark is under challenge and rectification proceedings are already pending. On that basis, the infringement component of the suit had to be stayed until disposal of the rectification proceedings before the statutory forum. Prior decisions under Section 111 of the Trade and Merchandise Marks Act, 1958 were regarded as consistent with this approach because the provisions were treated as in pari materia. The passing off claim was not subject to the same bar and could continue independently.

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Issues: Whether, during pendency of rectification or cancellation proceedings concerning a registered trade mark, the suit for infringement must be stayed under Section 124(1) of the Trade Marks Act, 1999, and whether the passing off claim may continue.

Analysis: Section 124(1) was treated as mandatory in a pending suit where the validity of registration is questioned and rectification proceedings are already pending before the statutory forum. The provision was read as requiring a stay of the infringement part of the suit until disposal of the rectification proceedings. The earlier decisions under Section 111 of the Trade and Merchandise Marks Act, 1958 were treated as consistent with this approach, as that provision was regarded as in pari materia. The authorities relied upon against stay were distinguished on the ground that they proceeded on concession or dealt with a different context. The Court also clarified that a passing off claim is not hit by the same bar and can proceed independently.

Conclusion: The infringement proceedings relating to the registered trade mark had to be stayed pending the decision of the Intellectual Property Appellate Board, while the passing off action could continue.

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