Defining the powers and jurisdiction of specialized judicial bodies and the Courts is essential to ensure proper functioning of the legal system. Often there is an overlap between the powers of specialized judicial bodies and Courts; thereby creating ambiguity in legal proceedings. Section 124(1)(b)(ii) of the Trademark Act has been subjected to different interpretation by various Courts in the country. The Application for rectification of a mark before the IPAB deals with validity of trademark registration when a suit is pending before a civil Court. The question is whether prior approval of the Court is necessary in such cases. The Delhi High Court, in the case of Data Infosys Ltd & Ors vs Infosys Technologies Ltd., has made an attempt to define the powers of Courts and the IPAB.
Infosys Technologies (Respondent) had filed a suit for trademark infringement against Data Infosys (Applicant). During the pendency of this suit, the Applicant's mark was registered by the Trademark Registrar. The Respondent filed for rectification of the registration of the mark before the IPAB, the Applicant petitioned the Court that the Respondent could not file an application for rectification of mark under S.124 (1) (b)(ii) without obtaining the prior permission of the Hon'ble Court. The Applicant cited Asterazeneca UK Ltd. & Anr. vs Orchid Chemicals and Pharmaceuticals Ltd(Astrazeneca case) to substantiate their claims. The Respondent, on the other hand, relied upon the Madras High Court decision in the case of B. Mohamed Yousuff vs Prabha Singh Jaswant Singh & Ors where it had been ruled that a right to file an application for rectification is a statutory right, conferred upon a party who is aggrieved by an entry made in the register. The Delhi High Court decided in favor of the Respondent's claims and overruled its previous decision in the Astrazeneca case. The Court ruled that, the IPAB's power of assessing the tenability of a plea for invalid trademark registration was not dependent upon the ruling of civil Courts. The Court further opined that, when a plea for invalid trademark registration is pending before the IPAB under Section 124(1) (i)(a) the suit before the Court (concerning the same matter) ought to be stayed until the decision of the IPAB. However, if there is no application for rectification before the IPAB when the suit is pending before the Court and a party to the infringement suit wishes to challenge it after the filing of the suit, it may do so within an allotted period of time. If a party does not file a rectification suit during the allotted time frame granted by the Court (under Section 124(1) (b)(ii)), such a party is barred from raising this plea.
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