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Post Abolishment of Intellectual Property Appellate Board; A Re-Look At Section 124 Of The Trade Marks Act, 1999

As of late, the Tribunal Reforms Act, 2021 annulled different Tribunals including India’s Intellectual Property Appellate Board (IPAB), and doled out they are The Trade Marks Act, 1999 accommodates two legal rights others to be specific, a right of an enlisted owner to solely utilize the enrolled brand name and to look for insurance against its abuse and then again, a distressed individual has a privilege to look for amendment of an enlisted brand name of someone else on the grounds of non-use on the ground of no bonafide goal to utilize the imprint and that the enlistment is violative of arrangements of Section 9 and 11 of the Trade Marks Act, 1999. The two legal rights are entwined by Section 124 of the Trade Marks Act which accommodates a stay of procedures of an encroachment suit where the legitimacy of enrollment of the exchange mark is addressed, and so on. The Supreme Court the situation named Patel Field Marshal Agencies and Anr. Versus P.M. Diesels Limited and Ors has set some hard boundaries of the land that where an amendment request is recorded preceding the suit, the suit must compulsorily remain and the Rectification Proceedings must be first arbitrated upon. Along these lines, for a situation where a suit has remained and the correction appeal is settled first, the choice in the amendment request is restricting on the Court attempting the suit. Presently, correction appeal can be recorded either before the Trademarks Registry or under the watchful eye of the court.
The Patel Field Marshal case in the second limb of the judgment set some hard boundaries that post-recording of the suit, a request for correction can be documented after an issue is raised and an at first sight case is laid out for the presence of grounds of the amendment. Along these lines, by the activity of Section 125 of the Trade Marks Act, 1999, the amendment appeal, post-recording of the suit can be documented uniquely under the steady gaze of the High Court.
It is additionally presented that the IPD Rules as outlined by the Delhi High Court Intellectual Property Rights Division, 2021 give an unmistakable rule which peruses as under 26. Solidification of IPR topics or cases or procedures or debates Where there are different procedures connecting with something very similar or related IPR topic, regardless of whether the said procedures are between similar gatherings, the Court will have the power and the tact, any place suitable, to coordinate a combination of procedures, hearings, and to coordinate the merged recording of proof/normal preliminary and united arbitration. Assuming the Court is of the assessment that any matter forthcoming under the steady gaze of a Commercial Court is to be combined with a matter forthcoming before the IPD, it might practice powers of the move under Section 24, Code of Civil Procedure, 1908 for the exchange and combination of such make a difference to itself.
The previously mentioned decision shows that the standard creators are aware of the way that there should not be a variety of procedures and power has been given to the IPD to practice powers under area 24 of the Code of Civil Procedure, 1908 to move suit forthcoming under the steady gaze of the District Court. In any case, the said arrangement contains no reference to Section 124 of the Trade Marks Act, 1999 justifying the stay of the suit and continuation/recording of amendment procedures or the choice of the peak court in the Patel field Marshal case.
An expectation was there in the 1958 Act, read with Delhi High Court decided that the respondent could decide to document Rectification as Counter Claim in an Infringement suit. Unnecessary to add, they could never have been a need for the stay of the suit. The suit and the counterclaim could be attempted together. Last yet not least, a reference may likewise be made to a circumstance where the suit qua encroachment is remained because of Rectification Petition however the suit for making is permitted to proceed with look like saw in different cases. Consequently, under the aegis of Section 124 of the Trademark Act, 1999, just the incomplete suit qua encroachment is remained however the suit relating to passing off suit proceeds. Henceforth, a division of prosecution is made into 3 limbs: the encroachment segment and the passing off piece of the suit, and the amendment. This main prompts an assortment of prosecution.
In a nutshell, the recommendations are set forth:
(a) The suit and amendment request be attempted and arbitrated together by a single preliminary.
(b) Section 124 of the Trade Mark Act, 1999 be treated as excess.
(c) The amendment is documented in the same High Court in whose purview, the suit is recorded, independent of whether the enlistment was allowed by Bombay part of Trade Marks Registry, Ahmedabad part of Trade Marks Registry, Chennai branch, and so forth. This would align with the soul of the institution of the Commercial Courts Act, 2015 i.e., expedient equity in the IPR matters.
(d) This will be in the interest of the general population (both Plaintiff and Defendant) since one preliminary would do the trick for both Rectification Petition and Suit. Issues like the legitimacy of enrolled brand name, whether the brand name is Public-Juris, need in reception/client, and so forth can be mediated in one procedure as it were. Issues cross-over in suit/replication. Subsequently, valuable legal time would be protected in the proposed system.