Trademark Rectification While Infringement Suit Is Pending

INTRODUCTION

A legal notice arrives. A competitor with a registered trademark says your brand name infringes it, and soon a plaint follows. You have studied the registration and doubt it should exist at all. The word may simply describe the product, or the owner may have stopped using it years ago.

Many business owners assume they must defend the suit and hope for the best. Indian trademark law offers a sharper option: challenge the registration itself, in a separate proceeding, while the infringement suit continues.

What Does Rectification Mean Under the Trade Marks Act?

Rectification is the legal route for cleaning up the Register of Trade Marks.

• Section 57: A person aggrieved by an entry on the Register can ask for it to be cancelled or changed if it was wrongly made or wrongly remains. Typical targets are marks that are purely descriptive, lack distinctiveness or were adopted in bad faith.

• Section 47: This covers removal for non-use. A mark can be removed if it was registered without a real intention to use it, or if it has remained unused for five years and three months.

These applications once went to the Intellectual Property Appellate Board. After the Tribunals Reforms Act, 2021 abolished the Board, they are filed before the High Court.

Section 124: Two Cases, One Rulebook

Section 124 governs the relationship between the infringement suit and the rectification case. It applies once the defendant pleads in the suit that the plaintiff’s registration is invalid. The route then splits in two.

1. A rectification application is already pending.
The court must stay the suit until that application is decided. This avoids ruling on infringement of a registration that may be cancelled soon after.

2. No rectification application has been filed yet.
The court first asks whether the invalidity plea is prima facie tenable. If it is, the court:

1. frames an issue on the point, and

2. allows the defendant three months to approach the High Court for rectification.

Once the defendant shows that it applied in time, the suit waits for the outcome.

The Three-Month Deadline for Rectification

The three-month period is where many defendants stumble.

• If it is missed: The law treats the invalidity issue as abandoned. The suit moves on, and the defendant can no longer rely on that argument in that case.

• Extensions: Courts can extend the time for sufficient cause, but no sensible lawyer plans around a favour.

• Practical habit: Prepare the rectification petition alongside the written statement, so the three months go to filing rather than drafting.
  

Does a Stay Stop Interim Injunctions?

Many people believe a stayed suit means a frozen dispute. It does not. Section 124(5) makes clear that a stay does not prevent the court from passing interim orders. A plaintiff can still seek a temporary injunction, and the court can still grant one.

This is where the quality of the defendant’s challenge matters. If the defendant can show with documents that the mark is common in the trade or has not been used for years, a court may think twice before restraining it. A challenge that looks like a delaying tactic gets far less sympathy.

What Happens When the Rectification Decision Comes?

The final order in the rectification case binds the court hearing the suit.

• Registration cancelled: The infringement claim built on it cannot survive.

• Challenge fails: The suit continues with the registration treated as valid.

In many disputes, this single decision determines who has the upper hand.

Can rectification be filed on its own? Yes, without waiting to be sued. The Section 124 stay, however, depends on the invalidity plea made in the suit. A defendant who files the petition but leaves that plea out of the written statement may struggle to obtain a stay.

Practical Lessons for Defendants and Plaintiffs

For defendants

• Plead invalidity clearly in the written statement.

• File the rectification petition early.

• Gather evidence at once, such as proof of non-use, your own earlier use, or dictionary and trade material showing the mark is descriptive.

• Treat the injunction hearing as a separate battle that needs its own preparation.

For plaintiffs

• Treat a rectification petition as a sign that the registration is about to be examined closely.

• Keep records of continuous use, sales figures and advertising spend. These are the best protection.

• Do not rely on the stay to do the work. Interim relief remains available and often decides how the dispute plays out commercially.

Conclusion

Can a rectification proceeding be filed while an infringement suit is pending? Yes, and the Trade Marks Act provides a clear framework for it. The defendant must plead invalidity, act within the three-month window and be ready for interim relief in the meantime. The plaintiff must be prepared to prove that the registration deserves to stand. Used well, Section 124 does more than delay a dispute. It tests whether the right being enforced was valid in the first place.

KEY TAKEAWAYS

• A defendant in an infringement suit can challenge the plaintiff’s registration through rectification.

• Section 57 allows cancellation or change of a wrongly made or wrongly retained entry.

• Section 47 allows removal for non-use, including five years and three months of non-use.

• Rectification applications now go to the High Court, following the Tribunals Reforms Act, 2021.

• If a rectification application is already pending, the court must stay the suit.

• If none is pending, the court may frame an issue and allow three months to apply.

• Missing the three-month window means the invalidity issue is treated as abandoned.

• A stay does not stop interim orders such as temporary injunctions.

• The final rectification order binds the court hearing the suit.

FAQ SECTION

1. Can I file rectification while an infringement suit is pending?
Yes. Section 124 provides a framework for it.

2. What is trademark rectification?
It is the process of cancelling or changing an entry on the Register of Trade Marks.

3. Which section allows rectification?
Section 57 of the Trade Marks Act, 1999 allows a person aggrieved to seek cancellation or change of a wrongly made or wrongly retained entry.

4. What grounds can support rectification?
Typical grounds include a mark that is purely descriptive, lacks distinctiveness or was adopted in bad faith.

5. Can a mark be removed for non-use?
Yes, under Section 47. This applies if the mark was registered without a real intention to use it, or if it has gone unused for five years and three months.

6. Where is a rectification application filed now?
Before the High Court. The Tribunals Reforms Act, 2021 abolished the Intellectual Property Appellate Board, which previously heard these matters.

7. What does Section 124 do?
It governs how an infringement suit and a rectification proceeding interact once the defendant pleads that the plaintiff’s registration is invalid.

8. Will the suit be stayed automatically?
If a rectification application is already pending, the court must stay the suit. If none is pending, the court first considers whether the invalidity plea is prima facie tenable.

9. What is the three-month period?
If the plea is prima facie tenable, the court frames an issue and allows the defendant three months to approach the High Court for rectification.

10. What happens if I miss the three-month period?
The invalidity issue is treated as abandoned. The suit proceeds, and you cannot rely on that argument in that case.

11. Can the deadline be extended?
Courts can extend it for sufficient cause, but you should not plan around an extension.

12. Does a stay prevent a temporary injunction?
No. Under Section 124(5), the court can still pass interim orders during the stay.

13. How does the rectification decision affect the suit?
It binds the court hearing the suit. If the registration is cancelled, the infringement claim built on it cannot survive.

14. Do I need to plead invalidity in the suit?
Yes. The Section 124 stay depends on the invalidity plea made in the suit, so leaving it out of the written statement may make a stay hard to obtain.

15. What evidence helps a defendant?
Proof of non-use, the defendant’s earlier use, and dictionary or trade material showing the mark is descriptive.

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