Court Rules Pendency of Rectification Applications Before Registrar Cannot Stall Suit; No Prima Facie Case of Invalidity Made Out by Defendants
In a significant decision delivered on October 21, 2026, the Bombay High Court, presided over by Justice Gauri Godse, dismissed an interim application seeking a stay of proceedings in a long-pending trademark infringement suit filed by Metropolitan Media Company Ltd. against Kothrud Mitra Newspapers Pvt. Ltd. The suit involves allegations of infringement of the registered trademarks "Pune Mirror" and "Sunday Pune Mirror," among other "Mirror" formative marks owned by the plaintiffs.
The defendants had filed rectification applications before the Registrar of Trade Marks, challenging the validity of the plaintiffs' registered trademarks on grounds of non-use and lack of bona fide use. They sought to stay the suit proceedings under Section 124 of the Trade Marks Act, 1999, pending disposal of these rectification applications. Additionally, the defendants requested the court to frame an issue regarding the invalidity of the plaintiffs' trademarks and defer the suit to enable them to pursue rectification before the appropriate forum.
The court, after a detailed examination of pleadings and legal precedents, held that the mere pendency of rectification applications before an incompetent authority-the Registrar of Trade Marks in this instance-cannot be a ground for staying a suit under Section 124. The High Court emphasized that once a suit for infringement concerning a registered trademark is pending, issues of validity should be determined only by the High Court and not by the Registrar. Since the defendants had not pleaded invalidity of the plaintiffs' trademarks in their written statement and raised the rectification applications only after the suit was instituted and at the stage of final arguments, their plea could not justify framing an additional issue or staying the suit.
The judgment relied heavily on the Supreme Court's ruling in Patel Field Marshal Agencies v. P. M. Diesels Ltd. and others, which clarified the procedural interplay between infringement suits and rectification proceedings. The court noted that a low-threshold prima facie case on invalidity must arise from the pleadings to warrant framing of an issue under Section 124. However, in the present case, the defendants had only denied infringement and claimed bona fide use of their marks without making out any prima facie case of invalidity under the Trade Marks Act.
Moreover, the court clarified that pleas based on registration or title under the Press and Registration of Books Act, 1867, do not ipso facto constitute a challenge to trademark validity under the Trade Marks Act. The defendants had relied on their registration with the Registrar of Newspapers for India and proceedings under the PRB Act to assert title over "Pune Mirror," but such grounds do not substitute for a legally recognized plea of invalidity under trademark law.
The court also addressed the defendants' delay in raising the invalidity plea, rejecting the argument that the plea was abandoned, since no issue on invalidity was framed during the trial, and the rectification applications were filed belatedly.
In conclusion, the Bombay High Court refused to stay the infringement suit, allowing the matter to proceed to final arguments on merits. The ruling reinforces the principle that challenges to trademark validity in infringement suits must be raised properly and timely, and that the civil courts have a defined, limited role in adjudicating such issues in line with the statutory framework.
Bottom Line:
Trade Marks Act, 1999 Section 124 stay of infringement suit - Mere filing of rectification applications before incompetent authority and at stage of final arguments is no ground to stay suit - Plea of invalidity must arise from pleadings and must make out at least a low-threshold prima facie case - Pleas under Press and Registration of Books Act do not ipso facto amount to plea of invalidity under Trade Marks Act.
Statutory provision(s): Trade Marks Act, 1999 Sections 47, 57, 124, 125; Press and Registration of Books Act, 1867 Sections 6, 8B, 19
Kothrud Mitra Newspapers Pvt. Ltd., (Bombay) : Law Finder Doc Id # 3000315
