1. Introduction to Trademark Law
The law of trademarks serves as an essential pillar in the protection of intellectual property, primarily aimed at safeguarding the identity and distinctiveness of goods and services in the marketplace. A trademark, as defined under Section 2(zb) of the Trade Marks Act, 1999, is a mark capable of distinguishing the goods or services of one person from those of another. The primary objective of trademark protection is twofold: to protect the interests of consumers by ensuring that they are not misled or deceived, and to secure the rights of businesses by preserving the goodwill and reputation they have built around their brand. By fulfilling these twin functions, trademarks guarantee authenticity of source, assure a standard of quality, and operate as powerful marketing tools in trade and commerce. As observed in Imperial Tobacco Co. v. Registrar of Trade Marks (AIR 1968 Cal 582), a trademark acts as a guarantee that the buyer will receive the product from the manufacturer or trader he intends to trust.
The law makes a clear distinction between registered and unregistered trademarks. A registered trademark is entered in the official register and enjoys statutory protection under the Trade Marks Act, 1999. Registration confers upon the proprietor an exclusive right to use the mark in relation to the goods or services for which it is registered and entitles them to sue for infringement under Sections 28 and 29 of the Act. Conversely, an unregistered trademark, while lacking statutory protection, is not devoid of legal remedy. Such marks may still be protected under the common law principle of passing off, where the emphasis lies on preventing misrepresentation and protecting the goodwill and reputation attached to a mark. The Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) recognized that even domain names, though often unregistered, are capable of protection under passing off.
The rights conferred by registration, set out under Section 28, are significant. Registration provides the proprietor with an exclusive right to use the trademark in respect of the goods or services covered by registration, as well as the ability to seek legal remedies in case of infringement. These rights, however, are not absolute; they are subject to conditions such as the coexistence of identical or similar marks on the register, where rights may be shared or limited. In American Home Products Corporation v. Mac Laboratories Pvt. Ltd. (1986), the Supreme Court emphasized that while registration grants exclusivity, such rights are conditioned by principles of honest use and the broader public interest.
A central theme in trademark jurisprudence is the distinction between infringement and passing off. Infringement is a statutory remedy available exclusively to registered trademarks. Here, the claimant must show that the defendant has used a mark identical with, or deceptively similar to, the registered mark in relation to goods or services for which the mark is registered. Importantly, the law does not require proof of actual deception; the likelihood of confusion among consumers is sufficient. Passing off, on the other hand, is a common law remedy available even in respect of unregistered marks. The claimant must establish the so-called “classic trinity” test: goodwill in the mark, misrepresentation by the defendant, and damage or likelihood of damage to the claimant’s goodwill. The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) clearly distinguished these two actions, noting that while infringement is statutory, passing off is rooted in common law. The Court’s later decision in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) reiterated the importance of preventing consumer deception, especially in the context of medicinal products, where public health is at stake and a stricter test of deceptive similarity must apply.
Thus, the introductory principles of trademark law lay the foundation for understanding its dual character: protecting registered rights through statutory enforcement while preserving common law remedies to guard against misrepresentation and unfair competition.
2. Trademark Rectification
2.1. Meaning of Rectification
Rectification of the trademark register refers to the process of correcting, amending, or removing an entry that has been wrongly made or wrongly remains on the register. The Trade Marks Act, 1999 recognizes that the register is not infallible and may contain errors due to oversight, fraud, or improper registration. Rectification thus serves as a corrective mechanism, ensuring that only valid and lawfully registrable trademarks remain on record. It acts as a safeguard against monopolization of generic, descriptive, or otherwise unregistrable marks and balances the rights of proprietors with the public interest.
2.2. Grounds for Rectification
The grounds upon which rectification may be sought are varied, but broadly include cases where the mark has been entered without sufficient cause or remains on the register without justification. Common grounds include non-use of the mark for a continuous period of five years and three months, fraudulent or erroneous registration, violation of conditions subject to which registration was granted, or where the entry is contrary to provisions of the Act. In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003) 11 SCC 92, the Supreme Court clarified that rectification proceedings can be initiated to purge the register of marks that are wrongly remaining on it, stressing that the purpose is to maintain the purity of the register.
2.3. Who Can File Rectification (Aggrieved Party)
The law allows “any aggrieved person” to file for rectification. The expression is interpreted liberally to include not only competitors but also any party whose business interests are or may be affected by the wrongful presence of a mark on the register. In Kabushiki Kaisha Toshiba v. Tosiba Appliances (2008) 10 SCC 766, the Supreme Court observed that even where a person’s trade is not directly affected, they may still qualify as an aggrieved person if they can demonstrate a legitimate interest in ensuring that the register is not cluttered with wrongful entries. Thus, the remedy is not confined to direct competitors but extends to any party with a genuine stake in the purity of the register.
2.4. Forums for Rectification
The appropriate forum for rectification depends on the context in which the application is made. Generally, rectification proceedings can be initiated before the Registrar of Trademarks, who has the authority to correct or remove wrongful entries. However, where the validity of a registration is questioned during the pendency of a trademark infringement suit, Section 125 of the Trade Marks Act mandates that rectification must be filed before the High Court (earlier before the Intellectual Property Appellate Board). This ensures that the issue of validity is decided by a specialized judicial forum, avoiding conflicting decisions between the Registrar and civil courts.
2.5. Effect of Rectification on Infringement Proceedings
The filing of a rectification petition has a direct impact on infringement suits. Where rectification is sought in relation to a trademark that forms the subject of an infringement dispute, the civil court may stay the infringement proceedings until the rectification petition is disposed of. This is to ensure that the question of validity is conclusively settled before deciding whether infringement has occurred. If rectification is allowed and the trademark is removed from the register, the foundation of the infringement suit collapses. Conversely, if the rectification is dismissed, the infringement suit may proceed on the basis of the validity of the registration.
In sum, rectification serves as an important corrective mechanism within trademark law, enabling aggrieved parties to challenge wrongful entries on the register and ensuring that statutory monopoly is enjoyed only by legitimately registrable marks. The decisions in Hardie Trading and Kabushiki Kaisha Toshiba underline that rectification is not merely a private remedy but also serves the larger public interest by keeping the register accurate and uncluttered.
3. Trademark Infringement Suit
3.1. Definition and Scope of Infringement
Trademark infringement is a statutory remedy available only to the proprietor of a registered trademark. It occurs when an unauthorized party uses a mark that is identical or deceptively similar to a registered trademark in such a manner that it is likely to cause confusion in the minds of the public. Section 29 of the Trade Marks Act, 1999 lays down the situations constituting infringement. These include the use of an identical mark for identical goods or services, the use of a deceptively similar mark likely to cause confusion, and even the use of a registered mark in relation to dissimilar goods or services if the mark has a reputation in India and such use takes unfair advantage or is detrimental to its distinctive character. The protection extends not only to word marks but also to logos, shapes, packaging, and even certain aspects of trade dress, provided they are registered. The underlying principle is to prevent consumer deception and to safeguard the goodwill and reputation that a proprietor has built around the mark.
3.2. Essential Elements of Infringement
To succeed in an infringement suit, the plaintiff must establish the following essential elements: first, that the plaintiff’s trademark is validly registered under the Act; second, that the defendant has used a mark in the course of trade without authorization; and third, that the impugned mark is either identical or deceptively similar to the plaintiff’s registered mark, such that it is likely to cause confusion among consumers. Importantly, the law does not require proof of actual deception—mere likelihood of confusion is sufficient. The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) emphasized this distinction, holding that once a registered mark is infringed, the plaintiff need not prove actual loss of business, as the statutory right itself is violated. Similarly, in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001), the Court highlighted that in the case of medicinal products, a stricter standard must apply because even a small degree of confusion can have grave consequences for public health.
3.3. Remedies Available in Infringement Suits
The Trade Marks Act provides both civil and criminal remedies for infringement, though civil remedies are more commonly invoked. The primary remedy is an injunction, which may be temporary or permanent, restraining the defendant from continuing the infringing use. Courts may also award damages or an account of profits, requiring the defendant to compensate the plaintiff or to disgorge profits wrongfully earned through infringement. Additionally, the plaintiff may seek delivery-up or destruction of infringing goods, packaging, and promotional material. Criminal provisions under the Act also punish the falsification of trademarks and apply where counterfeiting is involved. These remedies reflect the dual objective of preventing unfair competition and protecting consumer interests, while also preserving the economic value of trademarks as commercial assets.
3.4. Jurisdiction of Courts
Jurisdiction in trademark infringement suits is determined under Section 134 of the Trade Marks Act, 1999. A suit can be instituted in the District Court or High Court having jurisdiction where the plaintiff resides or carries on business, or where the cause of action arises. This provision was designed to provide convenience to proprietors, allowing them to file suits in places where they carry on business, even if the infringing act occurred elsewhere. However, courts have also stressed that this provision cannot be abused to create artificial jurisdiction in places where no genuine business exists. Thus, jurisdictional challenges often arise, particularly in cases involving multiple offices or branches.
Key Case Laws
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) – clarified distinction between infringement (statutory remedy) and passing off (common law).
- Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 – emphasized strict test for deceptive similarity in medicinal products.
- American Home Products Corp. v. Mac Laboratories (1986) 1 SCC 465 – reinforced the exclusive rights of registered proprietors under Section 28.
In essence, an infringement suit is the statutory weapon in the hands of a registered proprietor to enforce exclusivity over a trademark. It shields consumers from confusion and businesses from unfair competition, while also ensuring that the economic and reputational value attached to a mark is not diluted or misappropriated. The combination of wide definitions under Section 29, expansive remedies, and flexible jurisdictional rules makes infringement litigation a powerful tool in Indian trademark law.
4. Interplay between Infringement Suits and Rectification
4.1 Section 124 — Stay of Suit
Section 124 addresses what should happen when the validity of a registered trademark is challenged in the course of an infringement suit. In essence, when in an infringement action the defendant pleads that the plaintiff’s registration is invalid (or when the plaintiff questions a defendant’s registration in response to a defence under the Act), the civil court is empowered to stay the infringement proceedings so that the validity question can be determined by the appropriate forum for rectification. The policy behind this provision is straightforward: a determination on validity is often dispositive of the infringement claim, and allowing two different forums to decide related issues (one on validity and another on infringement) risks inconsistent and contradictory outcomes. Importantly, Section 124 expressly contemplates that a stay of the substantive suit does not bar the court from making interlocutory or ancillary orders during the period of the stay — for example, granting or continuing an interim injunction, directing an account to be kept, appointing a receiver, or attaching property — so that urgent or protective relief is not frustrated merely because the main suit is stayed. The decision to stay is, however, still a judicial (discretionary) act: courts will consider the substance of the challenge to validity, the conduct and timing of the parties, whether the rectification application is bona fide, and whether staying the suit would cause prejudice to either side.
The Delhi High Court’s decisions illustrate the practical operation of Section 124. In the Godrej Sara Lee v. Reckitt Benckiser litigation the court dealt with a pending rectification challenge and held that where rectification proceedings are legitimately invoked under the conditions contemplated by Section 124, the civil court should ordinarily refrain from finally deciding the infringement issue until the validity question is resolved — i.e., the civil court should stay the suit and permit the rectification forum to examine the registrability/ownership issues which go to the root of the infringement claim. That decision underscores both the preventive and curative purpose of Section 124: it prevents multiplicity of proceedings and ensures that the issue of registrability is given specialised judicial attention before the merits of infringement are determined.
A few practical points follow from Section 124 and the case law. First, either party to an infringement suit (plaintiff or defendant) may raise the validity question and thereby trigger Section 124; the stay is not available only to defendants. Second, because the statute permits interlocutory relief during the stay, parties frequently obtain or seek interim injunctions even while substantive proceedings remain stayed — so a stay does not automatically leave the plaintiff without remedies. Third, courts will probe the bona fides and timing of the rectification application; sham or dilatory rectification petitions intended solely to delay enforcement are likely to be scrutinised and the court may refuse a stay in such situations. For a statutory text and statutory detail see the Trade Marks Act provisions dealing with stay and ancillary orders.
4.2 Section 125 — Forum for Rectification when Infringement is Pending
Section 125 complements Section 124 by specifying the appropriate forum in which a rectification application must be made when the issue of validity arises in the context of a pending infringement suit. The section provides that where, in a suit for infringement, the validity of the plaintiff’s registration is questioned by the defendant — or where in such a suit one party raises a defence that depends upon the validity (or invalidity) of another party’s registration — the question of rectification must be pursued before the Appellate Board (the Intellectual Property Appellate Board, IPAB, as originally enacted), rather than by an ordinary application to the Registrar. The rationale is again to centralize and entrust the validity issue to a specialist, appellate-type forum so that the civil court adjudicating infringement and the rectification forum do not reach conflicting conclusions. In short, when validity is contested in an existing suit, rectification does not proceed before the Registrar but must be taken to the specialised forum designated by statute.
Two important practical consequences flow from Section 125. First, both plaintiff and defendant in an infringement suit can invoke Section 125 — a plaintiff prosecuting an infringement action can itself file for rectification of the defendant’s registered mark, and a defendant can file for rectification of the plaintiff’s registration when relying on invalidity as a defence. Second, the requirement to approach the specialised forum avoids a multiplicity of concurrent proceedings and preserves the hierarchical flow of adjudication: validity is examined first by the specialist body; the civil court then proceeds to determine infringement in the light of that decision. These principles were applied, for example, in the AstraZeneca v. Orchid line of cases where the court (and later divisions of the High Court) held that rectification challenges which were interwoven with pending infringement litigation had to be brought before the appellate/tribunal forum (IPAB at the time), and the existence of such rectification proceedings could and should affect how the civil court proceeds with the infringement suit.
Post-IPAB change: who hears Section 125 rectification applications now?
A critically important procedural development since the Trade Marks Act was first enacted is that the IPAB has been abolished under the Tribunals Reforms legislation and its functions have been reallocated. Consequent to that reform, powers and proceedings that would previously have been dealt with by the IPAB were assigned to the Registrar of Trademarks and to the High Courts (often via their commercial/IPR benches). Practically, this means that rectification applications which Section 125 would have required to be filed before the IPAB are, in many instances, now pursued before the High Courts (or under the adapted procedure specified by each High Court for transferred IPAB matters). Courts and practitioners have therefore treated Section 125’s “Appellate Board” requirement as now importing the High Court (or the designated forum), and High Courts have framed procedures to deal with transferred IPAB proceedings. Because this is a procedural and jurisdictional change rather than a substantive rewriting of Section 125, parties and practitioners should check the current practice directions of the particular High Court (or the Registrar’s practice) before filing.
Short synthesis and litigation strategy (practical takeaways)
Bringing Sections 124 and 125 together: whenever the validity of a registered mark is put squarely in issue during an infringement suit, the civil court will normally step back and allow the specialist rectification forum to decide that threshold question. That rectification petition — whether filed by plaintiff or defendant — must be taken to the forum mandated by Section 125 (formerly the IPAB; in current practice, the High Court or transferred-tribunal forum). The civil suit may be stayed pending the outcome, but interlocutory relief can still be granted or continued by the civil court. For litigants, the strategic implications are clear: if you are a plaintiff, consider whether to institute rectification against a defendant’s registration early (and in the correct forum) to avoid a later, surprising defence of validity; if you are a defendant, be prepared to raise invalidity early and invoke Section 124 so that the registrability question is decided first. Finally, because of procedural changes (abolition of IPAB), always verify current filing rules in the relevant High Court or the Registrar’s office before initiating rectification under Section 125.
5. Position of Plaintiff vs Defendant
5.1. Position of Plaintiff
The plaintiff in a trademark infringement suit occupies the offensive role of asserting rights conferred by registration under Section 28 of the Trade Marks Act, 1999. By filing an infringement action, the plaintiff seeks to restrain the defendant from unauthorized use of a mark that is identical with or deceptively similar to its registered trademark. However, the plaintiff’s position can be complicated if the defendant itself owns a registered trademark. In such situations, the plaintiff is not barred from suing; instead, it can adopt a two-pronged strategy.
First, under Section 125, the plaintiff may challenge the validity of the defendant’s registered mark by filing a rectification petition before the High Court (earlier the IPAB). This is particularly useful when the defendant’s registration is arguably invalid on grounds such as descriptiveness, lack of distinctiveness, or non-use. Second, under Section 124, the plaintiff may request the civil court hearing the infringement suit to stay proceedings until the validity of the defendant’s registration is resolved through rectification. This ensures that the infringement dispute is decided only after the foundation of the defendant’s defense — its registration — has been tested for validity.
This dual mechanism strengthens the plaintiff’s hand: while it asserts its own exclusive rights, it simultaneously seeks to strip the defendant of the shield of registration. Strategically, plaintiffs often initiate rectification proceedings alongside or shortly after filing the infringement suit to avoid delay and to preempt the defendant’s reliance on registration as a defense.
5.2. Position of Defendant
The defendant in an infringement suit is not without weapons. A central defense available to the defendant is to rely on its own registration under Section 30 of the Act. Where the defendant holds a valid registration, it can argue that its use of the mark is protected and lawful, thereby negating the claim of infringement. This defense was recognized in Bajaj Electricals Ltd. v. Metals & Allied Products (1988 PTC 133), where the court acknowledged that registration provides a statutory shield that the defendant can invoke against an infringement claim.
However, the defendant is not limited to a defensive posture. It may also attack the plaintiff’s position by challenging the validity of the plaintiff’s registered trademark. Under Section 125, such rectification proceedings must be filed before the High Court (earlier the IPAB) if an infringement suit is already pending. This allows the defendant to argue that the plaintiff’s registration was wrongly granted or is wrongly remaining on the register. If rectification succeeds, the plaintiff’s infringement claim collapses, since only a valid registration gives rise to infringement rights. The Delhi High Court in Himalaya Drug Co. v. SBL Ltd. (2013) 55 PTC 1 confirmed that defendants are entitled to file rectification proceedings against the plaintiff’s mark and that such challenges must be considered seriously, as they go to the root of the plaintiff’s cause of action.
The defendant, therefore, stands in a hybrid role — simultaneously relying on statutory defenses while also attacking the plaintiff’s title. This dual capacity makes rectification an equally powerful tool for defendants as it is for plaintiffs, but the forum for doing so is constrained by Section 125.
Synthesis of Plaintiff vs Defendant Roles
The positions of the plaintiff and defendant in trademark litigation are carefully balanced under the Act. While the plaintiff wields the statutory right of exclusivity and may directly attack the defendant’s registration, the defendant is equally empowered to rely on its own registration as a shield and to undermine the plaintiff’s registration through rectification. Sections 124 and 125 thus function as procedural safeguards ensuring that disputes over validity are resolved by specialized judicial bodies, while the civil courts manage infringement suits in light of those outcomes. The symmetry between the two positions underscores the fairness of the system: neither party enjoys an unqualified advantage merely by virtue of holding a registration; both must withstand scrutiny of their registrations if challenged.
6. Practical Strategy in Trademark Litigation
Trademark litigation is not merely a question of statutory rights; it is equally a matter of timing, forum selection, and tactical choices. Both plaintiffs and defendants use infringement suits and rectification proceedings strategically to either protect or weaken the position of the other party. The following discussion highlights the main strategic considerations.
6.1. Strategy of the Plaintiff
For the plaintiff, the primary strategy is to enforce exclusivity swiftly and decisively. When faced with an infringing party, the plaintiff often moves for interim injunctions at the earliest stage of litigation to immediately restrain the defendant’s activities, thereby preventing dilution of goodwill and consumer confusion. This urgency is especially pressing in sectors like pharmaceuticals, fashion, or fast-moving consumer goods where delay can cause irreparable harm.
If the defendant itself holds a registered mark, the plaintiff may simultaneously file a rectification petition under Section 125 before the High Court. By challenging the validity of the defendant’s registration, the plaintiff attempts to strip the defendant of its legal defense under Section 30. The plaintiff may also invoke Section 124 to seek a stay of the infringement proceedings until rectification is decided, thereby avoiding a premature ruling on infringement before the defendant’s title is scrutinized. This dual strategy—asserting infringement while undermining the defendant’s registration—often tilts the litigation in the plaintiff’s favour. Courts have recognized this approach as legitimate, provided it is pursued bona fide and not simply to delay proceedings.
6.2. Strategy of the Defendant
The defendant’s strategy is necessarily twofold: defensive and offensive. On the defensive side, the most potent weapon is the defendant’s own registration. By invoking Section 30, the defendant argues that its use is protected, effectively neutralizing the claim of infringement. Courts have consistently held, as in Bajaj Electricals Ltd. v. Metals & Allied Products (1988 PTC 133), that valid registration provides a statutory shield. Even if the marks are similar, the defendant may argue that coexistence of two valid registrations means neither party can claim absolute exclusivity.
On the offensive side, the defendant can file for rectification of the plaintiff’s mark, arguing that the registration was wrongly granted or has become liable for removal due to non-use, descriptiveness, or lack of distinctiveness. If rectification succeeds, the plaintiff’s statutory cause of action evaporates. As held in Himalaya Drug Co. v. SBL Ltd. (2013) 55 PTC 1 (Del), defendants are entitled to initiate rectification and thereby challenge the very foundation of the plaintiff’s infringement claim. This often serves as a strong bargaining chip in settlement discussions, as the plaintiff risks losing not just the case but also the registration itself.
6.3. Timing Considerations
Timing is critical in trademark disputes. Plaintiffs benefit from filing promptly upon discovering infringement; delay can weaken their claim for interim relief, as courts may infer acquiescence. Defendants, conversely, may exploit delay to argue that the balance of convenience does not favour an injunction.
In rectification matters, early filing is equally important. A plaintiff who anticipates that the defendant will raise its registration as a defense often pre-empts by filing rectification at the outset. Similarly, a defendant who suspects vulnerability in the plaintiff’s registration may file rectification quickly to stall or undermine the infringement suit. Courts have noted that rectification should not be misused as a dilatory tactic; still, when deployed strategically and bona fide, it can decisively alter the course of litigation.
6.4. Forum and Jurisdictional Strategy
Another crucial strategic element concerns forum shopping and jurisdiction. Section 134 allows the plaintiff to institute infringement suits in the place where it carries on business, even if infringement occurred elsewhere. Plaintiffs often choose forums with specialized commercial benches or those perceived as favourable in granting injunctions. Defendants, in turn, challenge jurisdiction to delay proceedings or shift the case to a more neutral venue.
Rectification, however, is constrained by Section 125: when linked to a pending infringement suit, the rectification must go to the High Court (earlier the IPAB). This limits parties’ ability to manipulate forums, ensuring that validity issues are decided by a specialized judicial authority. Still, because High Courts vary in their speed and approach to IP cases, forum choice can have subtle but significant consequences.
6.5. Settlement and Commercial Considerations
Finally, both plaintiffs and defendants use infringement and rectification proceedings as levers in settlement negotiations. For plaintiffs, the threat of interim injunctions creates commercial pressure on defendants to cease use or rebrand. For defendants, the filing of rectification challenges signals a risk to the plaintiff’s very registration, often prompting compromise. Because trademark litigation is costly and reputationally sensitive, many disputes end in negotiated settlements once each party has deployed its strongest statutory weapons.
Synthesis
In sum, trademark litigation under the Trade Marks Act, 1999 is not only a matter of statutory rights but also of litigation strategy. Plaintiffs wield infringement suits and rectification petitions to enforce exclusivity and undermine the defendant’s defenses. Defendants counter with their own registration as a shield and by attacking the plaintiff’s registration through rectification. Both sides must carefully time their actions, choose their forums, and weigh the commercial risks of prolonged litigation versus settlement. The statutory provisions of Sections 28, 29, 30, 124, and 125, read with the jurisprudence developed in cases like Bajaj Electricals and Himalaya Drug Co., create a balanced system where strategy often determines success as much as substantive rights.
7. Conclusion
The law of trademarks, as structured under the Trade Marks Act, 1999, is designed to balance the exclusive rights of registered proprietors with the public interest in keeping the register clean and preventing unjust monopolies. At its core, the Act protects consumers from deception and ensures that businesses can rely on the distinctiveness of their marks as valuable commercial assets.
An infringement suit under Sections 28 and 29 provides the registered proprietor with the statutory power to restrain unauthorized use. Yet, the defendant is not helpless; Section 30 allows reliance on its own registration as a shield, while Sections 124 and 125 create a structured mechanism for both parties to question the validity of each other’s marks through rectification. This duality ensures fairness: the plaintiff cannot enforce an invalid registration, and the defendant cannot hide behind one.
Sections 124 and 125 thus serve as the procedural glue that holds the system together. Section 124 allows civil courts to stay infringement suits pending the outcome of rectification proceedings, thereby ensuring that questions of validity are not prematurely bypassed. Section 125 mandates that when validity is in dispute within an infringement suit, rectification must be filed before the High Court (earlier IPAB), creating uniformity and preventing conflicting decisions. Together, they reinforce that validity is the bedrock of exclusivity.
Case law has consistently reinforced these principles. Hardie Trading and Kabushiki Kaisha Toshiba underscore that rectification is vital to maintain the purity of the register; Durga Dutt Sharma and Cadila delineate the boundaries of infringement and passing off; Bajaj Electricals and Himalaya Drug confirm that both plaintiffs and defendants may wield rectification strategically; while Godrej Sara Lee and AstraZeneca illustrate the courts’ insistence on proper forums and procedural discipline.
Ultimately, the positions of plaintiff and defendant are finely balanced. The plaintiff begins with the advantage of statutory exclusivity but must be prepared to defend the validity of its mark. The defendant enjoys the protective shield of its own registration but risks exposure if that registration is shown to be invalid. Both sides have equal opportunity to use rectification as a sword or shield, and both must carefully time and frame their litigation strategies to maximize their chances of success.
Thus, trademark litigation in India is as much about strategy and procedure as it is about substantive rights. By intertwining infringement and rectification, the Act creates a fair, robust, and flexible system that protects consumers, preserves competition, and ensures that the register reflects only valid, distinctive marks.
⚖️ Procedural Flow: Infringement + Rectification
Here’s a step-by-step textual flow of how these processes interact:
- Plaintiff files infringement suit → alleging unauthorized use of its registered trademark.
- Defendant raises defenses → may rely on its own registration (Sec. 30) or challenge plaintiff’s mark as invalid.
- Validity challenged →
- Plaintiff may file rectification against defendant’s mark.
- Defendant may file rectification against plaintiff’s mark.
- Section 124 invoked → Civil court considers validity challenge. If bona fide, it may stay the infringement suit (but can still grant interim injunctions).
- Section 125 applies → Rectification must be filed before High Court (earlier IPAB), not before Registrar. Applies to both plaintiff and defendant.
- Rectification decided →
- If registration cancelled → infringement claim/defense collapses.
- If registration upheld → infringement suit resumes on merits.
- Civil court resumes proceedings → final decision on infringement in light of rectification outcome.
- Reliefs granted → injunction, damages, account of profits, delivery-up of infringing goods, or dismissal if no infringement.
