Once Abandoned, Forever
Lost: The Doctrine of Deemed Abandonment of Trademark Invalidity Plea Under
Section 111 of the Trade and Merchandise Marks Act, 1958
An Analysis of Patel Field
Marshal Agencies and Ors. v. P.M. Diesels Ltd. and Ors. (2017)
Introduction
The law of trademarks in India is built upon a careful balance between
two competing interests. On one hand, the registered owner of a trademark
enjoys a powerful bundle of rights — the exclusive right to use the mark, the
right to stop others from using something similar, and the right to seek
damages and injunctions in court. On the other hand, the law also recognizes
that a trademark registration is not always beyond challenge. If a mark was
registered wrongly — say, without genuine intention to use it, or after a long
period of non-use — any person who is harmed by such registration has the right
to go to the appropriate authority and seek its removal from the register. This
second right is what trade mark law calls the right to seek 'rectification.'
The question that has troubled courts for years is this: what happens
when both these aspects — a lawsuit for infringement on one side and a
challenge to the registration's validity on the other — collide in the same
legal dispute? Can a defendant in an infringement suit, who initially raises
the question of the mark's validity but then fails to pursue that argument
before the proper authority, later come back and launch a fresh attack on the
registration through a separate rectification application? Or does the failure
to pursue the validity challenge in time permanently shut that door?
This is precisely the question that the Supreme Court of India resolved,
with clarity and finality, in its judgment dated 29th November 2017 in Patel
Field Marshal Agencies and Ors. v. P.M. Diesels Ltd. and Ors.
[MANU/SC/1509/2017]. A bench comprising Justice Ranjan Gogoi and Justice Navin
Sinha answered this question by holding that when a party raises the invalidity
of a trademark in an infringement suit but fails to follow through and file a
rectification application within the time prescribed by Section 111 of the
Trade and Merchandise Marks Act, 1958, the plea of invalidity is deemed to have
been abandoned — and this abandonment is permanent. It is not merely a procedural
concession made for the purpose of the suit; it extinguishes the substantive
right to challenge the registration altogether through a separate proceeding
under Sections 46 and 56 of the same Act.
The case has particular importance because it not only resolves the
question under the old 1958 Act but also gives authoritative guidance on the
corresponding provisions of the Trade Marks Act, 1999 — specifically Sections
47, 57, 124 and 125 — which are in virtually identical terms. The ruling thus
shapes trademark litigation practice under the currently applicable law as
well.
Factual and Procedural Background
The respondent in the main appeals, P.M. Diesels Ltd., is the registered
owner of three trademarks, each built around the words 'Field Marshal.' The
Registrar of Trade Marks had issued registration certificates in favour of the
respondent company (through its predecessor) for the mark 'Field Marshal'
bearing Registration No. 224879, dated 16th October 1964; for the mark 'Field
Marshal' in a distinctive lettering style bearing Registration No. 252070,
dated 4th October 1968; and for the combined mark 'FM Field Marshal' bearing
Registration No. 252071-B, also dated 4th October 1968. These registrations
thus had a long pedigree, stretching back to the mid-1960s.
Sometime in the year 1982, the appellants — Patel Field Marshal Agencies
and their associated concerns — applied for the registration of the trademark
'Marshal' for their own use. When P.M. Diesels Ltd. came to know of this
application, it perceived a clear similarity between the mark 'Marshal' being
sought by the appellants and its own registered marks centred on the words
'Field Marshal.' Accordingly, the respondent served a legal notice on the
appellants dated 23rd July 1982 calling upon them to stop using the mark
'Marshal.'
Despite this notice, the matter escalated. In the year 1989, P.M.
Diesels Ltd. filed a suit before the High Court of Delhi, being Suit No. 1612
of 1989, seeking three forms of relief: first, a declaration of infringement of
its registered trademarks; second, a rendition of accounts of the profits
earned by the appellants through the use of the mark 'Marshal'; and third, a
permanent injunction restraining the appellants from using the trading styles
'Patel Field Marshal Agencies' and 'Patel Field Marshal Industries.' Along with
the suit, an application for a temporary injunction was also filed.
The appellants, who were defendants in the suit, contested the claims on
two grounds — first, that the Delhi High Court had no jurisdiction over the
matter (both pecuniary and territorial), and second, on the merits of the
infringement allegation. Importantly, in their written statement, the
defendants also challenged the validity of the respondent's registration of the
'Field Marshal' trademark, claiming it was liable to be rectified. An issue to
this effect was framed in the suit.
The Delhi High Court, by its order dated 28th September 1995, dismissed
the application for interim injunction holding that it lacked jurisdiction. In
appeal, the Division Bench reversed this on 10th March 1998 and directed the
application to be considered on merits. The matter then reached the Supreme
Court in Special Leave Petition (C) No. 13512 of 1998. While that SLP was
pending, and acting on the Division Bench's remand, a single judge of the Delhi
High Court granted a temporary injunction in favour of P.M. Diesels Ltd. on 7th
July 1999.
Years later, by a subsequent order dated 20th August 2008, the same
single judge held that the Delhi High Court had no jurisdiction and directed
the return of the plaint for filing before a competent court in Gujarat. The
respondent (plaintiff in the suit) challenged this before the Division Bench.
The Division Bench, by order dated 24th October 2008, held the return of the
plaint to be technically incorrect but, since the plaintiff had no objection to
proceeding in Gujarat, directed the plaint to be returned for filing at Rajkot.
The case was thereafter transferred and numbered as Civil Suit No. 1 of 2009
before the learned Additional District Judge, Rajkot, Gujarat.
Crucially, while the infringement suit was still pending before the
Delhi High Court, the appellants took a significant parallel step. In the year
1997, they filed three separate rectification applications before the High
Court of Gujarat, bearing RA Nos. 1, 2 and 3 of 1997, under Sections 46 and 56
of the Trade and Merchandise Marks Act, 1958, seeking removal and cancellation
of P.M. Diesels Ltd.'s three registered trademarks bearing Nos. 224879, 252070
and 252071.
A single judge of the Gujarat High Court dismissed all three
rectification applications by order dated 15th April 1998. The Division Bench
of the Gujarat High Court affirmed this dismissal on 25th November 1998. It is
this order of the Division Bench that was challenged by the appellants in Civil
Appeal Nos. 4767 to 4769 of 2001 before the Supreme Court. Additionally, a
connected matter arising from another infringement dispute involving similar
issues came up through Civil Appeal No. 19938 of 2017 (arising from SLP (C) No.
27309 of 2012), and yet another related SLP (C) No. 30121 of 2012 was filed but
was subsequently withdrawn. A further appeal arising from SLP (C) No. 1851 of
2009 challenged the order of the Delhi High Court returning the plaint to Rajkot,
but the Supreme Court treated this as effectively closed, noting that the
plaintiff had voluntarily complied with the single judge's direction.
Therefore, the two substantive appeals that remained for consideration were
Civil Appeal Nos. 4767-4769 of 2001 and the Civil Appeal arising from SLP (C)
No. 27309 of 2012.
The Core Dispute
The Supreme Court identified and precisely formulated the central legal
question before it as follows: in a situation where a suit for infringement of
a trademark is pending, and the issue of validity of the trademark's
registration has been raised by a party in that suit, but no issue on that
question has been framed or, if framed, has not been pursued by the concerned
party by filing an application to the High Court for rectification under
Section 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958
— would that party still have the right to independently pursue a rectification
application under Sections 46 and 56 of the same Act to contest the validity of
the trademark registration?
The appellants argued that the rights under Sections 46 and 56 of the
1958 Act are completely independent and parallel rights — they are separate
from the procedure contemplated by Sections 107 and 111. These two sets of
rights operate in different fields. The right to seek rectification is a
statutory right vested in any 'person aggrieved' — which, as the Supreme Court
had held in National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd. and Anr.
[MANU/SC/0369/1970 : AIR 1971 SC 898], includes a person against whom an
infringement action has been taken or is threatened. The appellants argued that
the process under Section 111 only involves a civil court 'framing an issue'
and 'staying the suit' — it does not amount to granting or refusing
'permission' to file a rectification application. The requirement of first
obtaining leave from a subordinate court (the District Court) before
approaching a superior court (the High Court) would also be contrary to Section
41(b) of the Specific Relief Act, 1963, which prohibits a subordinate court
from preventing a party from approaching a higher court. Reliance was placed on
the Madras High Court's decision in B. Mohamed Yousuff v. Prabha Singh Jaswant
Singh and Ors. [MANU/TN/2924/2006 : (2008) 38 PTC 576] and the Full Bench
decision of the Delhi High Court in Data Infosys Limited and Ors. v. Infosys
Technologies Limited [MANU/DE/0283/2016 : 2016 (65) PTC 209], both of which had
taken the view that the right to seek rectification under Sections 46/47 and
56/57 survives independently even when a suit is pending.
The respondent, represented by senior counsel Mr. Harin P. Raval, took a
diametrically opposite position. The argument was that Sections 46 and 56 on
one side and Sections 107 and 111 on the other side operate in two different
and mutually exclusive fields. Sections 46 and 56 govern the situation where no
infringement suit is pending — they allow a person aggrieved to approach the
Registrar or the High Court for rectification independently. But once a suit
for infringement is filed and the issue of invalidity arises within that suit,
the entire machinery of Section 111 takes over. At that point, the statutory
scheme mandates a specific procedure: the civil court must first find the plea
of invalidity to be prima facie tenable, frame an issue, and give three months
to the concerned party to move the High Court for rectification. If the party
fails to do so, Section 111(3) provides that the issue of invalidity shall be
'deemed to have been abandoned.' The respondent's crucial submission was that
this abandonment is not merely for the purpose of the suit — it is a complete
and permanent relinquishment of the right, which cannot be resurrected through
a separate rectification application under Sections 46/56.
Reasoning and Analysis of the Court
The Scheme of the 1958 Act
Justice Ranjan Gogoi, writing for the bench, began the analysis by
setting out the scheme of the relevant provisions of the Trade and Merchandise
Marks Act, 1958. The court noted that Section 46 allows any person aggrieved to
apply to the High Court or the Registrar for removal of a registered trademark
from the register — primarily on two grounds: first, that the trademark was
registered without any genuine (bona fide) intention to use it and there has in
fact been no genuine use; or second, that for a continuous period of five years
or more, the mark, though registered, was not genuinely used. Section 56
separately empowers the Tribunal — which means either the Registrar or the High
Court, as appropriate — to cancel or vary the registration of a trademark on
the ground of any contravention or failure to observe a condition of
registration, or to rectify any incorrect entry in the register.
Section 107 introduces an important modification to the default
position. Where a suit for infringement is pending and the validity of a
trademark registration is questioned within that suit, any application for
rectification must be made to the High Court and not to the Registrar — and
this rule applies 'notwithstanding anything contained in Section 46' or Section
56. The court observed that this special channelling of the rectification
application to the High Court (as opposed to the Registrar) in a pending suit
context already signals that the legislative scheme operates differently when a
suit is afoot.
The court then turned to the heart of the matter — Section 111. This
provision, titled 'Stay of proceedings where the validity of registration of
the trade mark is questioned,' does far more than merely provide for a stay.
Its full operation was traced by the court as follows: if a suit for
infringement is filed and a plea of invalidity is raised by either party, and
if rectification proceedings are already pending before the Registrar or the
High Court, the suit must be stayed pending the outcome of those proceedings.
If no such proceedings are pending and the civil court finds the plea of
invalidity to be prima facie tenable, it must frame an issue and give the
concerned party three months to apply to the High Court for rectification. If
the party does file a rectification application within that time, the suit
stays pending the outcome. If no application is filed within the stipulated
time, Section 111(3) mandates that the issue of invalidity is 'deemed to have
been abandoned' and the suit proceeds on the other issues. Sub-section (4) of
Section 111 further provides that the final order in the rectification
proceeding shall be binding on the civil court.
The Question of Whether Sections 46/56
Survive Independently
The Supreme Court firmly rejected the view of the Full Bench of the
Delhi High Court in Data Infosys Limited (supra) and the Madras High Court in
B. Mohamed Yousuff (supra), both of which had held that the right to seek
rectification under Sections 46/47 and 56/57 survives independently even after
the deemed abandonment in the suit context. The court charted a different and,
in its view, the correct path.
The court reasoned that it is a well-established principle of statutory
interpretation that the heading of a section — while useful as a guide — does
not control the meaning of the entire section's text. The heading of Section
111 says 'Stay of proceedings where validity of registration is questioned' but
the actual content of Section 111 goes far beyond merely providing for a stay.
It sets up an elaborate mechanism for deciding the validity question, binding
the civil court to the outcome, and — crucially — providing for the deemed
abandonment of the plea if the concerned party does not move the High Court
within time. The section must be read as a whole, and its heading cannot
confine its operation.
The court's core reasoning was this: all questions relating to the
validity of a trademark registration must be decided by the Tribunal — the
Registrar or the High Court under the 1958 Act, or the Registrar or the
Intellectual Property Appellate Board (IPAB) under the 1999 Act. The civil
court is not empowered to decide the question of validity of a registered
trademark. Parliament's design was to ensure that the question of validity is
always channelled to the statutory authority with the expertise and
jurisdiction to decide it, and the civil court is bound by whatever that
authority decides.
When a suit is pending, the procedure for exercising this jurisdiction
is different from the procedure when no suit is pending. When no suit is
pending, a person aggrieved can freely approach the Registrar or the High Court
under Sections 46 and 56. But when a suit is pending, the exercise of the
statutory authority's jurisdiction to decide validity is contingent on the
civil court first forming a prima facie view that the plea is tenable. This is
not the civil court 'granting permission' to file a rectification application —
it is a threshold screening mechanism to prevent frivolous and untenable
invalidity claims from being raised as a delaying tactic in infringement suits.
Once that threshold is crossed and an issue is framed, the party has three
months to act. The legislature has made the consequences of inaction absolutely
clear: the plea is deemed abandoned.
The Permanence of Deemed Abandonment
The most critical and consequential aspect of the court's analysis was
its holding on what 'deemed abandonment' under Section 111(3) really means. The
court categorically held that the abandonment is not limited to the suit. It is
a complete and final extinguishment of the right to raise the invalidity plea
in any proceeding between those parties. The court explained the reasoning with
a concrete illustration: imagine a defendant in an infringement suit raises the
plea that the plaintiff's trademark is invalid. An issue is framed, the
defendant is given time, but does not move the High Court for rectification
within that time. Section 111(3) deems the plea abandoned. The suit proceeds
and a decree is passed against the defendant for infringement. If the defendant
were then permitted to file a fresh rectification application under Sections
46/56, the result could be that the High Court or IPAB cancels the registration
— thereby potentially undermining or nullifying the very decree passed by the
civil court. This, the Supreme Court said, would open the door to chaos and
anarchy in judicial determinations. It would allow a party to collaterally
attack and reopen a decree that has attained finality in law simply by pursuing
a remedy it had earlier chosen to abandon. Such a result cannot be what the
legislature intended.
The court further reasoned that the deeming fiction in Section 111(3)
must be understood as Parliament's deliberate choice to make the consequences
of non-compliance with the timeline mandatory and substantive — not merely
procedural. The legislature has the power to create legal fictions that alter
substantive rights, and that is precisely what Section 111(3) does. There is no
contrary provision elsewhere in the 1958 Act that would limit the abandonment's
effect only to the suit. Therefore, the right to raise the invalidity issue is
lost forever, not just in the suit, between the parties to the litigation.
Addressing the Subsidiary Arguments
The court also addressed the subsidiary arguments raised by the
appellants. On the contention that Section 111 requires a subordinate court to
give permission to a party before approaching a superior court — which would be
contrary to Section 41(b) of the Specific Relief Act, 1963 — the court
responded that Section 111 does not contemplate any such 'permission.' The
civil court's role under Section 111 is limited to forming a prima facie view
on the tenability of the invalidity plea and framing an issue. This is a
threshold filtering function, not a permission-granting function. There is a
crucial difference between a court screening out frivolous claims and a court
granting or refusing leave to approach a higher forum.
On the argument based on Section 32 of the 1958 Act — which provides
that after seven years from the date of registration, the registration becomes
conclusive as to its validity except in certain enumerated circumstances — the
court held that this provision cannot be read to mean that the rectification
proceedings under Sections 46/56 on one hand and those under Sections 107/111
on the other can run in parallel. The jurisdiction exercised under Sections 46
and 56 is the very same jurisdiction as that exercised under Sections 107 and
111 — the only difference is the procedural regime that governs the exercise of
that jurisdiction in the two different situations (suit pending versus no suit
pending). They are not parallel tracks; they are the same track with different
entry conditions.
The Conflict Between Earlier High Court
Decisions
The Supreme Court acknowledged that there was a conflict between the
Delhi High Court's view in Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and
Pharmaceuticals Ltd. [MANU/DE/8684/2006 : 2006 (32) PTC 733] — which had held
that if the civil court does not find a prima facie case for invalidity, the
aggrieved party cannot independently approach the IPAB and must instead
challenge the civil court's finding in appeal — and the Madras High Court's
view in B. Mohamed Yousuff (supra), which held that the right to file a
rectification application is a statutory right that cannot be curtailed by the
civil court's prima facie assessment. The Full Bench of the Delhi High Court in
Data Infosys Limited (supra) had sided with the Madras view and gone further to
say that even after deemed abandonment in the suit, the rectification
application would be independently maintainable and the IPAB's decision on it
would have no bearing on the suit.
The Supreme Court disagreed with the Full Bench of the Delhi High Court
and the Madras High Court. The court held that their interpretation, while
textually possible, produces consequences that would defeat the very purpose of
Section 111. If deemed abandonment does not extinguish the right to separately
seek rectification, then the entire machinery of Section 111 — with its
timelines, its mandatory issue-framing, and its deemed abandonment clause —
becomes a hollow procedural exercise with no real teeth. The legislative intent
is manifest: the invalidity question must be settled first, once and for all,
by the appropriate statutory authority, and the civil court must then decide
the suit in conformity with that authority's decision. If the party with the right
to challenge validity chooses not to exercise it within the prescribed time,
that choice has permanent legal consequences.
Final Decision of the Court
The Supreme Court dismissed all the appeals under consideration and
affirmed the orders passed by the High Courts. Civil Appeal Nos. 4767-4769 of
2001, which challenged the Gujarat High Court's dismissal of the three
rectification applications filed by the appellants, were dismissed. The Civil
Appeal arising from SLP (C) No. 27309 of 2012, which raised the same issue in a
connected matter, was also dismissed. The appeal arising from SLP (C) No. 1851
of 2009, challenging the Delhi High Court's order returning the plaint to
Rajkot, was treated as closed since the respondent-plaintiff had voluntarily
complied. SLP (C) No. 30121 of 2012 had already been withdrawn.
The court held that the appellants, by operation of Section 111(3) of
the Trade and Merchandise Marks Act, 1958, were deemed to have abandoned their
plea of invalidity of P.M. Diesels Ltd.'s trademark registrations. Having
abandoned that plea, they could not subsequently seek to revive it through
independent rectification applications under Sections 46 and 56 of the same
Act. The orders of the High Courts dismissing the rectification applications
were therefore correct and were upheld.
Points of Law Settled
This judgment settles several important and practically significant
points of law in the domain of trademark litigation in India. The first and
most fundamental point is that Sections 46 and 56 on one hand and Sections 107
and 111 on the other hand of the Trade and Merchandise Marks Act, 1958 do not
operate as parallel, independent remedies. They confer the same substantive
jurisdiction to decide the validity of a trademark registration, but the procedural
path is different depending on whether an infringement suit is pending or not.
When no suit is pending, a person aggrieved may independently invoke Sections
46 and 56. When a suit is pending, the route mandated by Section 111 becomes
the exclusive path.
The second point is that the deemed abandonment of the invalidity plea
under Section 111(3) of the 1958 Act is not merely a procedural consequence
limited to the suit. It is a substantive extinction of the right to challenge
the trademark's validity in any proceeding between the same parties. The party
that fails to move the High Court for rectification within the time granted by
the civil court under Section 111(1)(ii) permanently loses the right to agitate
that issue — not just in the suit but also through any separate rectification
application under Sections 46 or 56.
The third point is that the civil court's role under Section 111 —
forming a prima facie view and framing an issue — is not the granting of
permission or leave to approach a higher court. It is a threshold screening
mechanism to filter out untenable and frivolous invalidity claims and should
not be confused with a permission-granting exercise that would conflict with
Section 41(b) of the Specific Relief Act, 1963.
The fourth point is that the question of validity of a registered
trademark can never be decided by the civil court itself. It must always be
decided by the statutory authority — the Registrar or the High Court under the
1958 Act, or the Registrar or the IPAB under the 1999 Act. The civil court is
bound by the decision of that authority.
The fifth point is that this entire ruling applies with equal force to
the corresponding provisions of the Trade Marks Act, 1999, namely Sections 47,
57, 124 and 125, which are in pari materia — meaning they are in virtually
identical terms — with the relevant provisions of the 1958 Act. The ruling thus
governs trademark disputes under the currently applicable legislation as well,
making it of direct and continuing relevance.
Case Details
Title: Patel Field Marshal Agencies and Ors. Vs. P.M. Diesels Ltd. and
Ors.
Date of Order: 29th November 2017
Case Number: Civil Appeal Nos. 4767-4769 of 2001, Civil Appeal No. 19937
of 2017 (Arising out of SLP (C) No. 1851 of 2009), Civil Appeal No. 19938 of
2017 (Arising out of SLP (C) No. 27309 of 2012) and SLP (C) No. 30121 of 2012
Neutral Citation: MANU/SC/1509/2017
Court: Supreme Court of India
Hon'ble Judges: Justice Ranjan Gogoi and Justice Navin Sinha
Disclaimer: Readers are advised not to treat this as substitute for
legal advise as it may contain errors in perception, interpretation, and
presentation
Written
By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney],
High Court of Delhi
Suggested SEO Titles for Legal Journal
1. Deemed Abandonment of Trademark Invalidity Plea Under Section 111 of
Trade and Merchandise Marks Act: Supreme Court Settles the Law
2. Patel Field Marshal Agencies v. P.M. Diesels: Can a Rectification
Application Be Filed After Abandonment of Invalidity Plea in Infringement Suit?
3. Section 111 Trade and Merchandise Marks Act 1958: Abandonment of
Invalidity Plea and Its Permanent Legal Consequences
4. Trademark Rectification vs. Infringement Suit in India: When Does
Sections 46/56 Right Survive and When Does It Die?
5. Field Marshal Trademark Case: Supreme Court on Interplay Between
Sections 46, 56, 107 and 111 of the Trade Marks Act
6. Trademark Invalidity Challenge in India: Parallel Proceedings Under
Sections 46/56 and Section 111 — Are They Independent?
7. IPAB Rectification and Civil Suit Infringement: Supreme Court
Clarifies the Exclusive Procedure Under Section 124 Trade Marks Act 1999
8. Can a Trademark Infringement Defendant Seek Rectification After
Losing in Court? The Supreme Court Answers
SEO Tags
Patel Field Marshal Agencies, PM Diesels, trademark rectification India,
Section 111 Trade and Merchandise Marks Act 1958, Section 46 trademark removal,
Section 56 trademark cancellation, Section 107 rectification application,
deemed abandonment invalidity plea, trademark infringement suit India, IPAB
rectification, Section 124 Trade Marks Act 1999, Section 47 Trade Marks Act
1999, Section 57 Trade Marks Act 1999, Section 125 Trade Marks Act 1999,
trademark validity challenge India, Supreme Court trademark ruling,
intellectual property India, trademark registration validity, parallel
rectification proceedings, trademark invalidity abandonment, infringement suit
and rectification, prima facie tenability trademark, National Bell Co v Metal
Goods, Astrazeneca UK Ltd Orchid Chemicals, B Mohamed Yousuff trademark, Data
Infosys v Infosys Technologies, person aggrieved trademark India, Field Marshal
trademark case, Ranjan Gogoi trademark judgment, AdvocateAjayAmitabhSuman,
IPAdjutor
Headnote
Held — The rights conferred by Sections 46 and 56 of the Trade and
Merchandise Marks Act, 1958 (corresponding to Sections 47 and 57 of the Trade
Marks Act, 1999) and the procedure contemplated by Sections 107 and 111 of the
1958 Act (corresponding to Sections 124 and 125 of the 1999 Act) do not operate
as parallel, independent remedies available simultaneously to a party aggrieved
by a trademark registration. They confer the same substantive jurisdiction to
decide the validity of a trademark registration but operate under two different
procedural regimes depending on whether an infringement suit is pending or not.
Where no suit is pending, the aggrieved party may approach the Registrar or the
High Court independently under Sections 46 and 56. Where a suit for
infringement is pending and the issue of invalidity of the trademark
registration is raised therein, the procedure under Section 111 becomes the
exclusive and mandatory path. The civil court is required to first form a prima
facie view of the tenability of the invalidity plea; if found tenable, it
frames an issue and grants three months to the concerned party to move the High
Court for rectification. Failure to move the High Court within the time allowed
results in the issue of invalidity being deemed abandoned under Section 111(3).
Such deemed abandonment is not a mere procedural concession confined to the
suit — it is a complete and permanent extinguishment of the right to challenge
the validity of the trademark registration through any subsequent or separate
proceeding under Sections 46 and 56 between the same parties. Any other
interpretation would permit a party to collaterally attack decrees that have
attained finality, thereby causing uncertainty and anarchy in judicial
determinations. The civil court's role of forming a prima facie view under
Section 111 is a threshold screening function and does not amount to granting
or refusing permission to approach a higher court, and is therefore not
contrary to Section 41(b) of the Specific Relief Act, 1963. The Full Bench of
the Delhi High Court in Data Infosys Limited and Ors. v. Infosys Technologies
Limited [MANU/DE/0283/2016 : 2016 (65) PTC 209] and the Madras High Court in B.
Mohamed Yousuff v. Prabha Singh Jaswant Singh and Ors. [MANU/TN/2924/2006 : (2008)
38 PTC 576], insofar as they held the right to seek rectification to survive
independently even after deemed abandonment in the suit, are disapproved. All
appeals dismissed.
