Trademarks are important for businesses. When going through a trademark dispute, there can be issues regarding brand protection/breach of the trademark being claimed. A commonly discussed issue of Indian trademark law is whether a party can file multiple cases against the same infringer, with one case filed for a trademark rectification in front of the Trademark Registry, and the second case filed for an injunction in front of a court. The question is whether the laws prohibit simultaneous continuation of both cases or allow them to proceed concurrently. This question is not only theoretically important, it has significant implications to trademark owners, as well as startup and established companies, and their attorneys in determining the best strategy based on the procedural history involved in order to prevent any missteps in the overall case. This blog addresses the legal analysis, the laws, case law, and practical applications with respect to Trademark Rectification in India for the purpose of determining whether or not to pursue methods of parallel proceedings (filing one for trademark rectification and the other for injunction/suit for injunction) in terms of how the courts have interpreted this area of law.
Understanding Trademark Rectification in India
Trademark Rectification is the process of correcting, amending, or deleting a filing from the trademark registry. Generally, this leads to a Trademark Rectification application if there are any allegations that the registered trademark is invalid, registered in error, and should not remain on the Register of Trademarks.
The Trademark Rectification or Cancellation process may be based upon:
• Incorrect entry in the trademark register
• Non-use of a registered trademark
• Registration of trademark obtained without bona fide intention
• Registration contrary to statutory provisions
Businesses frequently use Trademark Rectification services to dispute a registered trademark that causes confusion or otherwise prohibits participation in a market.
What Is a Civil Suit for Trademark Infringement and Injunction?
Trademark infringement is generally determined through a civil suit in either a commercial or civil court. The remedy sought by a plaintiff may include one or more of the following:
• An order for permanent or temporary injunctive relief
• Monies as a result of damages and/or account of profits
• Either the return of infringing goods, or an order for the destruction of infringing goods
In these suits the plaintiff is usually claiming that the defendant has unlawfully used his registered or well-known trademark. Complication may arise when the defendant will dispute the validity of the plaintiff's registered trademark and therefore the issue of rectification comes into play.
Trademark Rectification Proceedings
Trademark Rectification is a process by which a trade mark may be corrected, removed or cancelled from the Register of Trade Marks. The Trade Marks Act of 1999 stipulates specific grounds upon which an application for rectification may be made like:
• Unlawful/incorrect registration
• Non-use of the trademark
• No distinctiveness of the trademark
• Trademarks registered under circumstances of fraud/misrepresentation
Prior to 2021, such applications to rectify trade marks were made to the Intellectual Property Appellate Board ("IPAB") but, since then, have now been decided by High Courts, which are currently the only venue available to rectify trade marks in India.
Many businesses use trade mark rectification services to challenge trademarks which have been improperly registered and which may create threats to their brand equity.
The Core Legal Question: Can Both Proceedings Run Simultaneously?
The central issue is whether a party can:
The answer lies in a careful reading of the Trade Marks Act, 1999, particularly Section 124, along with judicial interpretation.
Section 124 of the Trade Marks Act, 1999 – The Statutory Framework
Section 124 addresses when a registered trademark’s validity can be challenged in an infringement lawsuit.
Key provisions of Section 124 include:
1. When a registered trademark is challenged in an infringement lawsuit and
2. A request for correction is already underway.
3. If there are no requests for correction pending:
The intention of this clause is to avoid making competing judgments with respect to the validity of registered trademarks.
Statutory Framework Under the Trade Marks Act, 1999
The legal basis for allowing parallel proceedings is found in Sections 47, 57 and 124 (the "TMA") of the Trade Marks Act, 1999.
Section 124 - Stay of a Suit Where a Rectification Proceeding is Pending
Section 124 is important when there is an infringement suit pending and a rectification application is in progress.
Section 124 states:
• Where a civil suit has been brought to determine the validity of a registered trade mark and
• (Section 124(1)(b)) An application to amend the register is still pending or is made after the civil suit has started
Then the civil court may stay the civil suit until the rectification proceedings have been completed.
The TMA does not prevent both proceedings being commenced and proceeded with at the same time. It merely regulates how they are progressed at the same time.
Judicial Interpretation: What Courts Have Held
Indian courts have repeatedly confirmed that infringement suits and rectification proceedings exist in separate legal arenas.
The Focus of Infringement Is Usage; The Focus of Rectification Is Registration Validity
The courts have made it clear that:
• Civil courts determine infringement and passing off by looking at how the parties have acted (market behavior).
• Rectification authorities determine whether the registration itself is valid at all.
The differences in the cause of action and the available remedies mean that parallel proceedings do not automatically conflict with one another. Because the two legal systems are both concerned with issues of ownership or property rights, parties pursuing either course of action have the potential to obtain the same relief.
Does Section 124 Create a Bar on Parallel Proceedings?
No. As such, there is no blanket prohibition on parallel proceedings under Section. 124. Rather, there is a procedural balance established by the following means:
Accordingly, it is permissible to initiate parallel proceedings; however, the progress of such proceedings may be subject to restrictions.
Judicial Interpretation: What Have Indian Courts Said?
The Indian judiciary has made it clear that:
• A suit for infringement and a rectification proceeding has different objectives.
• A suit for infringement is to enforce rights and rectification proceeding deals with validity.
Principles established through judicial pronouncements:
• The authority to rectify a registered trademark (previously IPAB and now the High Courts) has exclusive jurisdiction regarding the validity of a trademark.
• Civil courts have no jurisdiction to determine validity but may grant some form of interim relief.
• When both proceedings are filed bona fide, then this does not constitute an abuse of process.
The Courts have made it very clear that precluding parallel proceedings would place an unreasonable limit on a party's ability to seek legal remedies.
IPAB Abolished: What Is the Current Legal Position?
Since the IPAB was abolished in 2021, trademarks that have been rectified can now only be dealt with by the High Courts with original or appellate jurisdiction.
As of today:
• All applications for the rectification of trademarks must be filed before the High Court.
• Civil or commercial courts will continue to handle cases where trademark infringement occurs.
• Section 124 of the Trademark Act continues to apply.
Can a Plaintiff File Rectification and Injunction Together?
A plaintiff may:
• Sue for infringement and seek an order preventing such from being made; and
• Also, file claim for rectifying the trademark outside of India claiming that there is a conflicting trademark registered.
In deciding the case, the court will look at the following:
• Is the petition for rectification made in good faith?
• Is the suit for infringement brought prematurely or is it oppressive to the defendant?
• Whether interim relief is justified
Can a Defendant Initiate Rectification After Being Sued?
One situation that happens often is where the defendant can:
• Contest the validity of the plaintiff's trade mark by application for rectification.
• Ask for the infringement proceedings to be stayed under Section 124.
In the absence of any frivolous challenge, courts generally will allow this, provided that:
• the challenge is not raised frivolously; and
• the challenge is raised as soon as reasonably possible.
Is There Any Situation Where Parallel Proceedings Are Barred?
There's no legal prohibition against parallel civil proceedings; however, judges may dissuade parallel civil proceedings where:
• One or more filings of rectification are too hinder obtaining an injunction
• The same issues are being litigated in two or more actions
• There is gross misconduct in the court
In these cases, the court may refuse to grant interim relief or may dismiss one of the actions on an equitable basis.
Practical Considerations for Businesses and Brand Owners
The following items are all essential for an organization’s strategic thinking regarding:
• The strength of their trademark registration;
• Their likelihood of securing an interim injunction; and
• The length of time and amount of money required to handle identical lawsuits simultaneously.
A professional rectification service will ensure that:
• You have a strong case to plead in court;
• That you select the correct forum (court) to file your case; and
• That your case complies with established rules regarding filing timelines/parameters.
Strategic Importance of Trademark Rectification and Cancellation
Trademark rectification and cancellation is not merely defensive. It can be:
• A proactive market-clearing strategy
• A tool to neutralize aggressive litigation
• A means to protect long-term brand equity
When used correctly alongside civil remedies, it strengthens a brand’s legal position significantly.
Impact of IPAB Abolition on Parallel Proceedings
IPAB Being Abolished:
• High Courts now handle rectification appeals
• Coordination between Civil Suits & Rectification Has Improved
• Delays Caused by Fragmentation of Forums Have Decreased
Increased Strength of Effectiveness of Trademark Rectification Service Provider Will Allow for A Quicker Resolution to Validity Disputes.
Key Takeaways for Businesses and Brand Owners
• Legally acceptable and strategically advantageous to pursue two lawsuits simultaneously.
• Courts recognize that there is a different scope for the two remedies; for example, it is acceptable for Injunctions to continue while Rectification is still pending.
• Courts recognize that an Injunction can continue throughout the Rectification Process.
• It is imperative to consult with an attorney to ensure no delay due to improper filing procedures.
Utilizing a professional Trademark Rectification service assists with compliance regarding any procedural and/or judicial requirements.
Common Misconceptions Around Trademark Rectification in India
All of the above are misconceptions clarified through consistent judicial interpretation.
Trademark Rectification in India After IPAB Abolition
Even after IPAB’s abolition, courts have clarified that:
Thus, Trademark Rectification in India continues to be a specialized, high-stakes remedy.
Conclusion
Under Indian trademark laws, there is no obstacle for the plaintiff in taking action against the defendant for both trademark rectification and for an injunction preventing use of a trademark. The legislative scheme of the Trade Marks Act of 1999 allows for a balance between enforcement and validity of the trademarks by dividing jurisdiction of the law between the civil courts and rectification forums. The enforcement of rights through the filing of trademark infringement suits protects the proprietary interests of the plaintiff in the trademark while rectifying and cancelling trademarks from the Register protects only the valid trademarks from having a statutory monopoly over such use and registration. Section 124 of the Trade Marks Act protects the parties by establishing procedure for concurrent pursuit of both actions and thus creates no prohibition against either action being commenced; therefore, avoiding inconsistent results with respect to who owns the rights to the trademark. For businesses, start-ups and brand owners it is essential that they be familiar with this complex and nuanced legal framework. Businesses that actively and simultaneously pursue both remedies, with the assistance of an experienced trademark rectification service provider, are better equipped to protect their intellectual property and to prevent misuse of their trademarks and to continue to maximize long-term brand equity in an increasingly competitive marketplace
FAQs
1. Can trademark rectification and injunction proceedings be filed at the same time?
Yes, both proceedings can be initiated simultaneously, though the civil court may stay the infringement suit under Section 124.
2. Does filing rectification automatically stop a civil suit?
No. The suit is stayed only after the court is satisfied that the rectification plea is prima facie valid.
3. Who decides trademark validity in India?
Trademark validity is decided by the High Courts through trademark rectification proceedings.
4. Can interim injunction be granted despite pending rectification?
Yes. Courts can grant interim relief if a prima facie case of infringement is established.
5. Is trademark rectification mandatory before filing an infringement suit?
No. Rectification is optional and depends on whether trademark validity is challenged.
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