Holding

All questions relating to the validity of a trade mark must be decided by the Registrar/High Court/IPAB and not by civil courts; failure to apply for rectification within the statutory period after an issue of invalidity is framed results in deemed abandonment of the plea.

Summary

The Supreme Court examined a dispute over the trademark "Field Marshal" where the plaintiff sought injunction against the defendants for alleged infringement. The defendants challenged the validity of the plaintiff's trademark and filed rectification applications under the Trade and Merchandise Marks Act, 1958. The key question was whether a civil court could decide the validity of a trademark or whether that jurisdiction lies exclusively with the statutory authority (Registrar, High Court or IPAB) under Sections 107/111 of the 1958 Act and the corresponding provisions of the 1999 Act. The Court held that all questions of trademark validity must be decided by the statutory authority and that civil courts are barred from adjudicating such issues. If a civil court frames an issue of invalidity and the aggrieved party fails to apply for rectification within the prescribed period, the plea is deemed abandoned and the civil suit proceeds on other matters. The Court also clarified that the decisions of the statutory authority bind the civil court. Consequently, the appeals were dismissed, with only one specific appeal allowed.

Issues considered

Whether a civil court has jurisdiction to decide the validity of a registered trademark in an infringement suit.
Whether the issue of trademark invalidity must be decided by the Registrar/High Court/IPAB under Sections 107/111 of the 1958 Act and Sections 124/125 of the 1999 Act.
Whether a party may file a rectification application under Sections 46/56 of the 1958 Act after a civil court has framed an issue of invalidity and failed to apply within the statutory time limit.
Whether Section 111(3) of the 1958 Act creates a deemed abandonment of the right to seek rectification.
Whether the civil court’s framing of an issue of invalidity constitutes permission to approach the statutory authority.
Whether the decisions of the statutory authority bind the civil court.

Legislation cited

Specific Relief Act, 1963s. 41(b)
Trade and Merchandise Marks Act, 1958s. 107, s. 111, s. 46, s. 56
Trade Marks Act, 1999s. 124, s. 125, s. 47, s. 57

Subjects

trademark validityrectificationjurisdictionTrade Marks ActSection 111civil courtHigh CourtIPABstay of proceedingsabandonment

Judgment

[2017] 12 S.C.R. 674

A PATEL FIELD MARSHAL AGENCIES AND ANR.
v..
P.M. DIESELS LTD. AND ANR.
(~ivi!Appeal Nos. 4767-4769 of2001)
NOVEMBER29, 2017*
B [RANJAN GOGOi AND NAVIN SINHA, JJ.)
Trade and Merchandise Marks Act, 1958:
ss.46156 and ss.1111107 - True purport, intent and effect of
- Held: All the q11estions with regard to validity of trade mark is
required to be decided by High Court - Civil Court is not empowered
c by the Act to decide the said question - The Act fi1rther mandates
that the decisions rendered by the prescribed statutory authority
will bind the civil co11rt - However, there is different procedure to
govern the exercise of same jurisdiction - Jn cases where parties
have not approached the civil court, Sections 46 and 56 provide an
independent statutory right to seek rectification of the trademark -
D In the event, the civil court is approached. interalia, raising issue of
validity of trade mark, if the civil co11rt frames issue with regard to
validity, matter will go to the High Court (prescribed authority)
u!ss.111 and 117 and finding on the issue by the Tribunal would be
binding on the civil court - But if the civil court does .not }Ind a
E triable issue on the plea of invalidity, remedy wo11ld not be to move
application ulss.46156 - If despite the order of civil court, parties
do not approach the High Court within statutorily prescribed time
fl'ame the right to raise the issue of invalidity is lost forever - The
requirement of satisfaction of Civil Court regarding existence of
prima facie case of invalidity and framing of issue to that effect
F bejhre the law operates, to vest jurisdiction in the statutory authorizv
to deal with the issue of invalidity, does not tantamount to
permission or leave of the civil court - Heading of s.111 cannot be
understood to be determinative of the true purport, intent and effect
of the provisions contained therein - Proceedings ulss.46156 on
G one hand and the proceedings u/ss.107/ll1 on the other hand would
not run paralle!y.
Dismissing appeal Nos. 4767-4769 of 2001 and 19937 of
2017 and allowing appeal No. 19938 of 2017, the Court
•Ed Note: Judgment as modified in terms of subsequent order dt. 17.01.2018 passed in
M.A. No. 1764 of2017 in Civil Appeal No. 19938 of2017 (Unitech Biotech Private
H Limited vs. Orchid Chemicals and Pharmaceuticals Limited and Ors.)
674
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 675

HELD: 1. Registration of a trade-mark vests in the A
registered owner an exclusive right to use the mark in relation
to the goods in respect of which the mark has been registered.
This is, however, subject to such conditions and limitations as
may be incorporated in the tegistration itself. H also grants to
the registered owner a right to seek and obtain relief in case of B
infringement of the mark. (Para 23)(692-C]
2. Following well -accepted principles of interpretation of
statutes, the beading of Section 111 of the 1958 Act i.e. "Stay of
proceedings where the validity of registration of the trade mark
is questioned, etc.'', cannot be understood to be determinative
of the true purport, intent and effect of the provisions contained C
therein so as to understand the said Section to be contemplating
only stay of proceedings of the suit where validity of the
registration of the trade mark is questioned. Naturally, the whole
of the provisiilns of the Section will have to be read and so read, ·
the same would clearly show lack of any legislative intent to limit/ D
confine the operation of the Section to what its title may convey.
[Para 26][693-E-G]
3. Rather, from the resume of the provisions of the 1958
Act, it becomes clear that all questions with regard to the validity
of a Trade Mark is required to be decided by the Registrar or
the High Court under the 1958 Act or by the Registrar or the E
IPAB under the 1999 Act, and not by the Civil Court. The Civil
Cotfrt, infact, is notempowered by· the Act to decide the said
question. Furthermore, the Act mandates that the decisions
rendered by the prescribed statutory authority [Registrar/High
Court (now IPAB)) will bind the Civil Court. [Para 27] [693-G-H; F
694-AI
4. The Act (both old and new) goes on to provide a different
procedure to govern the exercise of the same jurisdiction in two
different situations. In a case where the issue of invalidity is raised
or arises independent of a suit, the prescribed statutory authority
G
will be ,the sole authority to deal with the matter. However, in a
situation where a suit is pending (whether instituted before or
after the filing of a rectification application) the exercise of
jurisdiction by the prescribe~ statutory authority is contingent
011 a finding ofthe Civil Court'as regards the primafacie tenability
of the plea of invalidity.(Para 27)(694-B-C] H
676 SUPREME COURT REPORTS [2017] 12 S.C.R.

A 5. Conversely, in a· situation where the Civil Court does
not find a triable issue on the plea of invalidity, the remedy of an
aggrieved party would not be to movt: under Sections 46/56 of
the 1958 Act but .to challenge the order of the Civil Court in
appeal. This would be necessary to avoid multiple proceedings
B on the same issue and resultant conflict of decisfons. [Para
· 28][694-D]
· 6. The 1958 Act clearly visualizes that though in both
situations i.e. where no suit for infringement is pending at the
time of filing of the application for rectification or such a suit has
come to be instituted subsequent to the application for
C rectification, it is the Registrar or the High Court which
constitutes the Tribunal to determine the question of invalidity,
the procedure contemplated by the Statute to govern the exercise
of jurisdiction to rectify is, however, different in the two situations
enumerated. [Para 29) (694-E]
D 7. The intention of the legislature is clear. All issues relating
to and connected '':ith the validity of registration has to be dealt
with by the Tribunal and not by the civil court. In cases where
the parties have not approached the civil court, Sections 46 and
56 provide an independent statutory right to an aggrieved party
E to seek rectificathm of a trade mark. However, in the event the
Civil Court is approa.ched, inter alia, raising the issue of invalidity
of the trade mark such plea will be decided not by the civil court
but by the Tribunal un~er the 1958 Act. The Tribunal will however
come into seisin of the ·matter only if the Civil Court is satisfied
that an issue with regard to im'.alidity ought to be framed in the
F suit. Once an issue to the said effect is framed, the matter will
have to go to the Tribunal and the decision of the Tribunal will
thereafter bind the Civil Court. If despite the .order of the civil
court the parties do not approach the Tribunal for.rectification,
the plea lVith regard to rectification will no longer survive. [Para
G · 30)(694-F-H;. 695-A)'
8. The legislature while providing consequen£eS for non-
compliance with timelines for doing of any act must be understood
to have'intended such consequences to be mandatory in nature,
t.here_by, also affecting the substantive rights of the parties. This
.H is h-uw Section 111(3) of the 1958 Act has. to be understood. That
PATEL FIELD MARSHAL AGENCIES v, P.M. DIESELS LTD. 677

apart, it is very much within the legislative domain to create legal A
fictions by incorporating a deeming clause and the court will have
to understand such statutory fictions as bringing about a real state
of affairs between the parties and ushering in legal consequences
affecting the parties unless, of course, there is any other contrary
provision in the statue. None exists in the 1958 Act to understand
B
the provisions of Section lll(3) in any other manner except that
the right to raise the issue of invalidity is lost forever if the
requisite action to move the High Court/IPAB (now) is not
initiated within the statutorily prescribed time frame. [Para
31 ](695-B-D]
9. Thus, by virtue of the operation of the 1958 Act, the plea c
of rectification, upon abandonment, must be understood to have
ceased to exist or survive between the parties inter se. Aµy other
view would be to permit a party to collaterally raise the issue of
rectification at any stage notwithstanding that a final decree may
have been passed by the civil court in the meantime. True, the D
decree of the Civil Court. will be on the basis of the conclusions
on the other issues in the suit. But to permit the Issue of
rectification, once abandoned, ·to be resurrected at the option of
the party who had chosen not to pursue the same at an earlier
point of time ·would be to open the doors to reopening of decrees/
orders that have attained finality in law. This will bring in E
uncertainty if not chaos in the judicial determinations between
the parties that stand concluded. Besides, such an interpretation
would permit an aggrieved party to get over the operation of a
statute providing for deemed abandonment of the right to raise
an issue relevant; in fact, fundamental to the lis. (Para 32][695- F
E-G)
10. Legislature by enacting Section 111 of the 1958 Act has
mandated that the issue of invalidity which would go to the root
of the matter should be decided in ·the first instance and a decision
on the same would bind the parties before the civil court. Only if G
the same is abandoned or decided against the party raising it tltat
tltc suit will proceed in respect of the other issues, if any. If the
above is the legislative intent, which seems to be cle11r, the same
cannot be overcome by reading·the rights under Sections 46 and
56. of the 1958 Act to exist even in· a situation where the
H
678 SUPREME COURT REPORTS (2017) 12 S.C.R.

A abandonment of the same right under Section 111(3) has taken
effect in law. [Para 32)(696-B-CJ
11. The mandate of the 1958 Act, particularly, Section 111
thereof, appears to be that if an aggrieved party does not approach
the Tribunal for a decision or the issue of invalidity of registration
B as provided for under Section 111(2) and (3), the right to raise
the issue (of invalidity) would no longer survive between the ·
parties to enable the concerned party to seek enforcement of
the same by recourse to or by a separate action under the
·provisions of Section 46/56 of the 1958 Act. [Para 32)[696-C-D)
12. Section 111 of the 1958 Act and the corresponding
Section 124 of the 1999 Act nowhere contemplates grant of
permission by the civil court to move the High Court or the IPAB,
as may be, for rectification .. The requirement of satisfaction of
the civil Court regarding the existence of a prima facie case of
· invalidity and the framing of an issue to that effect before the law
D operates to vest jurisdiction in the statutory authority to deal
with the issue of invalidity by no means, tantamount to permission
or leave of the civil court. It is a basic requirement to further the
cause of justice by elimination. of false, frivolous and untenable
.claims of invalidity that may be raised in the suit. [Para 35)(696-
G-H; 697-A-B]
E
13; While Section 32 of the 1958 Act, undoubtedly, provides
a defence with regard to the finaUty of a registration by efflux of
time, the provisions of aforesaid section cannot be construed to
understand that the proceedings under Sections 46 and 56 on
the one hand and those under Sections 107 and 111 on the other
F of the 1958 Act and the pari materia provisions of the 1999 Act
would run parallelly. The jurisdiction of rectification conferred
by Sections 46 and 56 of the 1958Act is the very same jurisdiction
that is to be exercised under Sections 107 and 111 of the 1958
Act when the- issue of invalidity is raised in the suit but by
G observance of two different procedural regimes. (Para 36)(697-
B-D]
National Bell Co. v. Metal GoodY Mfg. Co. (P) ltd. and
another (AIR) 1971 SC 898 : [1971] 1 SCR 70; Cotton
Corpo.ration of India ltd. v. United Industrial Bank ltd.
and Ors. (1983) '4 SCC 625 : [1983) 3 SCR 962; B.
H ·· Mohamed Yousuf! v. Prabha Singh Jaswant Singh and
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 679

Others (2008) 38 PTC 576 Madras DB; Data Infosys A
Limited and Others v. Infosys Technologies Limited 2016
(65) PTC 209 Delhi FB; Astrazeneca UK Ltd. and Ai1r.
v. Orchid Chemicals and Pharmaceuticals Ltd. 2006 (32)
PTC 733 - referred to.
Case Law Reference B
(1971] 1 SCR 70 referred to Para 13
(1983] 3 SCR 962 referred to . Para 13
(2008) 38 PTC 576 Madras DB referred to Para 13
2016 (65) PTC 209 Delhi FB referred to Para 13
2006 (32) PTC 733 · referred to Para 17 c
CIVIL APPELLATE JURISDICTION: Civil Appeiil Nos. 4767-
4769of200 J. .
F rorri the Judgment and Order dated 25. l l.l 998 of the High Court
of Gujrat at Ahmedabad in three connected 0. J. Appeal Nos.45, 46
and47of 1998.· D
WITH
C. A. Nos. 19937 & 19938 of2017.
SLP (C) No. 30121 of2012.
Shailen Bhatia, Balraj Dewan, Ms. Ekta Nayar, Ms. Priyanka E
Anand, J. Sai Deepak, Moh it Goel, Sidhant Goel, Ms. Sangeeta Goel,
Bharadwaj Jaishankar, Ashutosh Nagar, Abhishek Kotnala, Deepankar
Mishra; Mishra Saurabh, T. Mahipal; Advs. for the Appellants.
Harin P. Raval, Sr. Adv., R. K. Agrawal, R. N. Karanjawala, Ms.
Nandini Gore, Abhishek Roy, Ms. AnusuyaNigam, Abhinay Sharma,·
Ms. Neha Khandelwal, Sushi! Jethmalani, Nipun Saxena, Divishit Kaushik F
Mandeep Kalra, Manik Karanja'wala Anil Nag, Ms. Gladys Daniels, S.
Santanam Swaminadhan, Ms. Aarthi Rajan, Ms. Nishtha Khurana, Anil
KumarTandale, Ms. Archana Sahadeva, Nikhil Lal, Abhinav Mukerji,
Advs. for the Respondents. ·
The Judgment of the Court was delivered by G
RANJAN GOGOi, J. I.Leave granted in S.L.P. (C) No. 1851
of2009 and S.L.P. (C) No. 27309 of2012.
· 2. A relatively simple question though of considerable importance
. in Intellectual Property Rights jurisdiction has presented itself for an
authoritative pronouncement of this Court in the present bunch of appeals. H
680 SUPREME COURT.REPORTS [2017] 12 S.C.R.

A The question arising will be formulated for an answer at a subsequent
stage and for the present we will take notice of the relevant facts giving
rise to the issue in question.
3. The respondent in Civil Appeal Nos.4767-4769 of2001 (P.M.
Diesels Ltd.) is the registered owner of three trade marks, the common
B feature of all ofwhich is the words "Field Marshal". The three registration
certificates issued by the Registrar of Trade Marks in favour of the
respondent-Company (through its predecessor) is in respect of the mark
"Field Marshal" (Registration No. 224879); the second certificate is in
respect of trade mark "Field Marshal" in lettering style (Registration
No. 252070) and the last certificate is in respect of trade mark "FM
c Field Marshal" (Registration No. 252071-B). The first registration
certificate is dated 16.10.1964 and the second and third registration
certificates are dated 4.10.1968.
-4. It appears that some time in the year 1982 the ap.rellants-Patel
Field Marshal & Anr. applied for registration of the trade mark "Marshal"
D for their use. Having come to know of the said application and perceiving
a similarity between the mark in respect of which registration was sought
by the appellants and the mark(s) registered in favour of the respondent,
the respondent served a legal Notice dated 23.07.1982 asking the
appellants to desist from using the mark in question, i.e., "Marshal".
E 5. In the year 1989, the respondent instituted a suit before the
High Court of Delhi (Suit No. 1612of1989) for infringement of trade
mark, rendition of accounts of profit earned by the appellants from use
of the mark "Marshal" and for perpetual injunction to restrain the
appellants from using the trading styles "Patel Field Marshal Agencies'!
F and "Patel Field Marshal Industries". An Interlocutory Application for
temporary injunction was also filed.
6. The defendants in the suit, i.e., the appellants herein, contested
the claims of the plaintiff-respondent on the ground of jurisdiction as
well as on merits. In the written statement filed, the appellants-defendants
G also contested the validity of the registration of the respondent's trade
mark "FieldMarshal" ~nd claimed that the same was liable to be rectified
in the trade mark register. An issue to the said effect was framed in the
suit.
7. The Delhi High Court by its Orderdated28.09. l 995 dismissed
H the Interlocutory Application filed by the plaintiff-r~spondent for interim
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 681
[RANJAN GOGOi, J.]

'
injunction on the ground that the High Court .did not have jurisdiction, A
both, pecuniary and territorial, over the subject matter. In appeal, the
Division Bench by Order dated l 0.03.1998 reversed the decision of the
learned single Judge and directed for consideration of the Interlocutory
Application for interim injunction on merits. The matter was brought to
this Court in Special Leave Petition (C) No.13512of1998. During the B
pendency of the aforesaid S.L.P., in view of the remand order of the
Division Bench dated 10.03.1998, a learned single Judge of the High
Court granted temporary injunction in favour of the respondent-plaintiff.
This was on 07 .07 .1999. However, by a subsequent Order dated
20.08.2008, the learned single Judge of the High Court held that the
court had no jurisdiction and, therefore, ordered for return of the plaint c
for presentation before the competent court in the State of Gujarat. The
said order was challenged by the respondents herein (plaintiffs in the
suit) before the Division Bench. The Division Bench by Order dated
24.10.2008 held that in the facts of the case the plaint ought not to have
been rejected; however, as the appellant before it (respondent-plaintiff) . D
had no objection to carry on the proceedings in the competent court at
Rajkot, Gujarat, the plaint was returned to be filed in Rajkot. Thereafter,
the case was transferred from the Delhi High Com1 to the court at
Rajkot and the proceedings came to be numbered as Civil Suit No ..1 of
2009 in the file of the learned Additional District Judge, Rajkot.
8. While the aforesaid Order of the Division Bench dated E
24.10.2008 is the subject matter of challenge in the connected Civil Appeal
arising out of S.L.P. (C) No. 1851 of 2009 also filed by the appellant,
what is of significance is that when the suit in question was pending
adjudication in the High Court of Delhi, the appellants herein initiated
parallel proceedings befQre the High Court of Gujarat (in the year 1997) F
seeking rectification of the registration of the trade mark(s) granted to
the respondent. Specifically, the appellants had filed three rectification
applications bearing RA Nos. l, 2 and 3of1997 under Sections 46/56 of
the Trade and Me~chandise Marks Act, 1958 (hereinafter referred to as
the "1958 Act") for removal and cancellation of the three trade marks
registered in favour of the petitioner bearing Nos. 224879, 252070 and G
25207 l. The learned single Judge of the High Court of Gujarat dismissed
the three applications in question by Order dated 15;04.1998. The said
order has been affirmed in appeal by the Division Bench of the Gujar~t
High Court by its Order dated 25.11.1998. This.orderhas been subjected
H
682 SUPREME COURT REPORTS [2017) 12 S.C.R.

A to challenge in Civil Appeal Nos.4767-4769 of 200 I presently under
consideration.
9. While the reasoning of the Division Bench of the High Court in
dismissing the applications in question will be noticed in due course, the
question calling for an answer by this Court would need a formulation at
B this stage. An attempt at such formulation is being made hereunder.
In a situation where a suit for infringement is pending wherein the
issue ofvalidity of the registration of the trade mark in question has been
raised either by the plaintiff or the defendant and no issue on the said
question of validity has been framed in the suit or if framed has not been
pursued by the concerned party in the suit by filing an application to the
C High Court for rectification under Sections 111 read with Section I 07 of
the Trade and Merchandise Marks Act, 1958, whether recourse to the
remedy of rectification under Sections 46/56 of the 1958 Act would still
be available to contest the validity of the registration of the Trade mark.
I 0. The aforesaid question which arises in the present appeals in
D the context of the 1958 Act continues to be a live issue in view of the
pari materia provisions contained in the Trade Marks Act, 1999, i.e.,
Sections 47, 57, 124 and 125 of the Trade MarksAct, 1999 (hereinafter
referred to as "the 1999 Act").
11. The issues arising in Civil Appeal Nos.4767-4769/2001 and
E Civil Appeals arising out of S.L.P. (C) No.27309/2012 and S.L.P. (C)
No.30121/2012 are same and similar. S.L.P. (C) No.30121/2012,
however, h~s since been withdrawn.
Civil Appeal arising out of S.L.P. (C) No.185112009 challenges
the order passed by the Delhi High Court on 24.10.2008 by which the ·
F plaint was returned to be filed before the competent court at Rajkot,
despite the conclusion ofthcAppcllatc Bench that the orderofthe learned
Single Judge holding that the Delhi High Court had no jurisdiction and
hence the plaint should be returned, is not correct. As the said direction
of the Division Bench of the High Court challenged in the appeal was at
the instance of the plaintiff(respondcnt herein), who was the appellant
G before the High Court, we would understand the stand taken to be a
virtual withdrawal of the appeal and an undertaking to comply with the
direction of the learned Single Judge to present the plaint before the
competent court at Rajkot. In these circumstances, WC do not consider
it necessary to continue to entertain the challenge made in the appeal
.arising out ofS.L.P. (C) No.1851/2009 so as examine the legality of the
H
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 683
[RANJAN GOGOI, J.]

correctness of the said order on merits. The person aggrieved before A
the High Court i.e. the respondent herein chose to comply with the order
of the leane.d Single Judge. The appellant herein was not aggrieved by
the order of the learned Single Judge. The aforesaid proceeding i.e.
arising out of S.L.P. (C) No.1851/2009, in the circumstances set out
above, is accordingly closed. Two appeals, therefore, survive for B
consideration i.e. Civil Appeal Nos.4767-4769/2001 and .Civil Appeal
arising out ofS.L.P. (C) No.27309/2012.
12. We have heard Mr. Shailen Bhatia, learned counsel for the
appellants and Mr. Harin P. Raval, learned senior counsel for the
respondents in Civil Appeal Nos.4767-4769 of2001. We have also heard
Mr. J. Sai Deepak, learned counsel for the appellant and Mr. Gladys C
Daniels, learned counsel for the respondent in Civil Appeal arising out of
S.L.P. (C) No. 27309 of2012.
13. The arguments advanced on behalf of the appellants in Civil
Appeal Nos.4767-4769 of2001 and respondents in the appeal arising
out of Spi!cial Leave Petition (Civil) No.27309 of 2012 proceed on the D
basis that Section 107 and 111 of the 1958 Act contemplates grant of
permission by the learned Trial Court for filing of a rectification application,
which requirement, it is urged, does not seem to follow from a reading of
the aforesaid two provisions of the 1958 Act. It is submitted that under
the 1958 Act, there are two categories of right vested; the first in the
owner ofa registered trade mark (Sections 28 and 29) and the second in E
a person aggrieved by such registration (Sections 46 and 56). The
aforesaid two rights are parallel and independent of each other. It is
submitted that the only requirement for filing a rectification application
under the provisions of Sections 107 and 111 of the 1958 Act is that
person filing such an application must be a "person aggrieved" which F
·would include a person against whom an infringement action has been
taken or is threatened by the registered proprietor of the trade mark as
held by this Court in National Bell Co: vs. Metal Goods Mfg. Co. (P)
Ltd. and another'. The learned counsel for the appellants has also drawn
attention of the Court to the provisions of Section 32 of the 1958 Act
which gives conclusiveness to the validity of the registered trade mark G
after expiry of a period of seven years from the date of registration
except in cases covered by sub-Clauses (a), (b) :ind (c) of Section 32. It
is contended that the question of conclusiveness as to validity of the
registration of the trade mark can be raised in an infringement suit as
'(AIR) 1971 SC 898 H
684 SUPREME COURT REPORTS [2017) 12 S.C.R.

A also in a rectification application. The very requirement of permission of
a subordinate court (District Court) for filing of the rectification application
before a higher Court (High Court), in the light ofthe provisions of Section
107 and 111, cannot be the legislative intent. The provisions of Section
41 (b) of the Specific Relief Act, 1963 which restrains a subordinate
court from preventing a person from instituting any proceeding in a higher
B
court has also been stressed upon and reliance has been placed in this
regard on Cotton Corporation of India Ltd. Vs. United Industrial Bank
Ltd. and Ors. 2 Reliance has also been placed on the decision of the .
High Court of Madras in B. Mohamed Yousuff Versus Prabha Singh
Jaswant Singh and Others 3 andthe judgment of the Full Bench of the
C Delhi High Court in Data Infosys Limited and Others Versus Infosys
Technologies Limited4•
14. ln reply, on behalfofthe respondents in Civil Appeal Nos.4767-
4769 of 2001 and appellant in the appeal arising out of Special Leave
Petition (Civil) No.27309 of2012, it is contended thatthe provisions of
D Section 111 of the 1958 Act particularly sub-sections (3) and (4) thereof
~ake it very clear that once the Civil Court is satisfied with regard to the
prima facie tenability of the issue of invalidity of the registration of a
trade mark that may be raised before it by any party to an infringement
suit, the said question has to be decided in a rectification proceeding and
not in the suit. The suit will remain stayed and the final decision of the
E . statutory authority in the rectification proceet\ing will govern the parties
to the suit. It is contended on behalf of the respondents that rectification
proceedings under Sections 46 and 56 of the 1958 Act govern a situation
where no suit for infringement is pending. In a situation where a suit for
infringement has been filed and the question of validity ofregistration
F arises therein and the Civil Court is satisfied as to the prima facie tenability
of the issue ofinvalidity of the registration ofthe trade mark, the provisions
of Section 111 would take over and govern the proceedings in the suit
including the issue of invalidity. It i~"further contended that there is a
deemed abandonment of the rights conveyed under Sections 46 and 56
of the 1958 Act in the event a suit for infringement is pending wherein
G the question of invalidity has been raised and found to be prima facie
tenable. It is urged that the rights under Sections 46 and 56 on the one
hand and those contained in Sections 107 and 111 on the other must be
understood to be opernting in two different fields; both sets ofprovisions
'<1983) 4 sec 625
3
( 2008) 38 Pl'C 516 Madras DB
H 4 2016 (65) PTC 209 befhi FB ..
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 685
[RANJAN GOGOi, J.]

cannot mutually exist as such mutual existence and operation may lead A
to conflicting decisions on the same question i.e. by the High Court under
the 1958 Act or by the IPAB under the 1999 Act on the one hand and
the Civil Court adjudicating the infringement suit on the other. It is also
submitted on behalf of the respondents that the abandonment of the plea
of invalidity contemplated by Section 111(3) of the 1958 Act is a complete B
relinquishment for all practical purposes and not only for the purpose of
the suit. The abandonment contemplated by Section 111 (3) of the 1958
Act does not keep alive the plea of invalidity to be urged/agitated
separately in a rectification proceeding under Section 46/56 of the 1958
Act. Insofar as the decisions of the Madras High Court in B. Mohamed .
Yousuff(supra) and the Delhi High Court in Data Infosys Limited and C
Others (supra) are concerned, the respondents contend that the ratio of
. the said judgments are not in consonance with the true purport and effect
of the legislative scheme and therefore this Court may conclusively and
aqthoritativcly decide the issue.
15. Having noticed the respective contentions of the parties, we D
may now take note of the relevant provisions of the 1958 Act, .namely,
Sections 46, 56, 107 and 111 which arc reproduced below.
"46. Removal from register and imposition oflimitations on ground
of non-use.
ill Subject to the provisions of section 47, a registered trade mark E
may be taken off the register in respect of any of the goods in
respect of which it .is registered on application made in the
prescribed manner .to a High Court or to the Registrar by any
person aggrieved on the ground either-
llil that the trade mark was registered without any bona fide F
intention on the part of the applicant for registration that it
should be used in relation to those goods by him or, in a
case to which the provisions of section 45 apply, by the
company concerned, and that there has; in fact, been no
bona fide use of the trade mark in relation to those goods
G
by any proprietor thereof for the time being up to a date
one month before the date of the application; or ·
(hl that up to a date one month before the date of the application,
a continuous period of five years or longer had elapsed
during which the trade mark was registered and during
H
686 SUPREME COURT REPORTS [2017] 12 S.C.R.

A which there was no bona fide use thereof in relation to
those goods by any proprietor thereof for the time being:
Provided that, except where the applicant has been permitte-0 under
sub-section (3) of section 12 to register an identical or nearly
resembling trade mark in respect of the goods in question or where
B the tribunal is of opinion that he might properly be permitted so to
register such a trade mark, the tribunal may refuse an.application
under clause (a) or clause (b) in relation _to any goods, if it is
shown that there has been, before the relevant date or during the
relevant period, as the case may be, bona fide use of the trade
mark by any proprietor thereof for the time being in relation to
c goods of the same description, being goods in respect of which
the trade mark is registered.
ill Where in relation to any goods in respect of which a trade
mark is registered-

D {fil the circumstances referred to in clause (b) of sub-section
(l) are shown to exist so far as regards non-use of the
trade mark in relation to goods to be sold, or otherwise traded
in, in a particular place in India (otherwise than for export
from India), or in relation to goods to be exported to a
particular market outside India; and
E ,
(hl a person has been permitted under sub- section (3) of section
12 to register an identical or nearly resembling trade mark
in respect of those goods under a registration extending to
use in relation to goods under to be sold, or otherwise traded
in, or in relation to goods to be so exported, orthe tribunal is
F of opinion that he might properly be permitted so to register
such a trade mark,
on application by that person in the prescribed manner to a High
Court or to the Registrar, the tribw1al may impose on the registration
of the first-mentioned trade mark such limitations as it thinks proper
G for securing that registration shall cease to extend to such use.
ill An applicant shall not be entitled to rely for the purpose of
clause (b) of sub- section (I) or for the purposes of sub- section
(2) on any non- use of~- trade mark which is shown to have been
due to special circumstances in the trade and not to any intention
H
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 687
[RANJAN GOGOI, J.]

to abandon or not to use the trade mark in relation to the goods to A
which the application relates.
xxx
56. Power to cancel or vary registration and to rectify the register.
ill On application made in the prescribed manner to a High Court B
or to the Registrar by any person aggrieved, the tribunal may
make such order as it may think fit for cancelling or varying the .
registration ofa trade mark on the ground of any contravention,
or failure to observe a condition entered on the register in relation.
thereto.
c
ill Any person aggrieved by the absence or omission from the
register of any entry, or by any eritry mi!de in the register without
sufficient cause, or by any entry wrongly remaining on the regi~ter,
or by any error or defect in any entry in the register, may apply in
the prescribed manner to a High Court or to the Registrar, and the
t(ibunal may make such order for making, expunging or varying D
the entry as it may think fit.
ill The tribunal may in any proceeding under this section decide
any question that may be necessary or expedient fo decide in
connection with the rectification of the register.
E
®The tribunal, of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them
an opportunity ofbeing heard, make any order referred to in sub-
section (1) or sub-section (2).
ill Any order of the High Court rectifying the register shall direct
F
that notice of the rectification shall be served upon the Registrar
in the prescribed manner who shall upon receipt of such notice
rectify the register accordingly.
(fil The power to rectify the register conferred by this section
shall include the power to remove a trade mark registered in Part
A of the register to Part B of the register. G

Xxx
107. Application for rectification of register to be made to High
Court in certain cases. ·
H
688 SUPREME COURT REPORTS [2017] 12 S.C.R.

A ill Where in a suit for infringement of a registered trade mark
the validity of the registration of the plaintiff's trade mark is
questioned by the defendant or where in any such suit the defendant
raises a defence under clause (d) of sub- section (I) of section 30
and the plaintiff questions the validity of the registration of the
defendant's trade mark, the issue as to the validity of the
B
registration of the trade mark concerned shall be determined only
on an application for the rectification of the register, and
notwithstanding anything contained in section 46, sub-section (4)
of s1~ction 47 or section 56, such application shall be made to the
High Court and not to the Registrar.
c ill Subject to the provisions of sub-section (1), where ai,
application for rectification of the register is made to the Regist1 Jr
under section 46 or sub- section (4) of section 47 or sectior co,
the Registrar may, if he thinks fit, refer the application c.t any
stage of the proceeding to the High Court.
D Xxx
llL Stay of proceedings where the validity ofregisir .!ti on of the
trade mark is questioned, etc.
ill Where in any suit for the infringement of a r1,1de mark--
E .(fil the defendant pleads that the registrati u', of the plaintiff's
trade mark is invalid; or
ill the defendant raises a defence uri ~r clause (d) of sub-
section ( 1) of section 30 and the pla :r liffpleads the invalidity
of the registration of the defend:,u's trade mark,
F
the court trying the suit (hcrcinaftc1 ,·cferrcd to as the court),
shall,-
ill if any proceedings for rectific: ,t .on of the register in relation
to the plaintiff's or dcfenda.1. 's trade mark arc pending
before the Registrar or the Hig!1 Court, stay the suit pending
G the final disposal of such proce~,!ings;
.(filifno such proceedings are pending and the court is satisfied
that the plea regarding the invalidit/ of the registration of
the plaintiff's or defendant's trade mark is prima facie
tenable, raise an issue regarding the ~ame and adjourn the
H
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 689
[RANJAN GOGOi, J.]

case for a period of three months from the date of the A
framing of the issue in order to enable the party concerned
to apply to the High Court for rectification of the register.
ill If the party concerned proves to the court that he has made ·
any such application as is referred to in clause (b) (ii) of sub-
section ( l) within the time specified therein or within such extended B
time as the court may for sufficient cause allow, the trial of the
suit shall stand stayed until the final disposal of the rectification
proceedings.
ill Ifno such application as aforesaid has been made within the
time so specified or within such extended time as the court may c
allow, the issue as to the validity of the registration of the trade
mark concerned shall be deemed to have been abandoned and
the court shall proceed with the suit in regard to the other issues
in the case.
ill The final order made in any rectification proceedings referred D
to in sub-section ( l) or sub-section (2) shall be binding upon the
parties and the court shall dispose of the suit conformably to such
order in so far as it relates to the issue as to the validity of the
registration of the trade mark.
ill The stay of a suit for the infringement of a trade mark under E
this section shall not preclude the court making any interlocutory
order (including any order granting an injunction, directing accounts
to be kept, appointing a receiver or attaching any property), during
the period of the stay of the suit."
16. The aforesaid provisions of the 1958 Act have been replicated
F
in the 1999 Act. As the judicial precedents that would require elaboration
are in the context of the 1999 Act, for purpose of clarity, it would suffice
to indicate that Sections 46, 56, 111 and l 07 of the 1958 Act (extracted
above) correspond to Sections 47, 57, 124 and 125 of the 1999 Act.
17. What is the scheme of the Act? The question does not seem G
to have received/engaged the attention of this Court at any earlier point
of time and therefore will have to be answered by us. The
pronouncements of the High Court of Delhi and Madras in Astrazeneca
UK Ltd. and Anr. Vs. Orchid Chemicals and Pharmaceuticals Ltd. 5
'2006 (32) PTC 733
H
. 690 SUPREME COURT REPORTS [2017] 12 S.C.R.

A and B. Mohamed Yousuff (supra) and that of the Full Bench of the
Delhi High Court in Data Infosys Limited (supra) have been cited at the
Bar in support of the respective contentions.
18. In Astrazeneca UK Ltd. (supra), the Delhi High Court took
the view that while in cases falling under Section 124(1 )(i) of the 1999
B Act, the Civil Court in seisin of an infringement suit would be obliged to
adjourn the proceedings and await the outcome of the rectification
proceedings, in cases falling under Section 124(1 )(ii), access to the
Intellectual Property Appellate Board (earlier High Court) is barred if
the Ci vii Court does not find the plea of invalidity of the registration of
the Trade Mark, raised in the suit to be prima facie tenable. In such a
c situation, the aggrieved party is left with the remedy of approaching the
Appellate Court insofar as the finding with regard to absence of a prima
facie case with regard to the plea of invalidity of the registration of the
trade mark is concerned.
19. However, the Madras High Court in B. Mohamed Yousuff
D (supra) took a contrary view and held that Sections 124 (l )(i) and (ii)
operate at two different levels and in two different situations. The former
deals with a situation where a rectification application is already pending
whereas the latter governs a situation where no such proceeding is
pending. The Madras High Court was of the view that both the
E sub~clauses focus their field of operation only with regard to the stay of
civil suit for infringement and the same does not deal with the discretion
of the Court to permit or not to permit the filing of a rectification
. application. The High Court further was of the view that a plain reading
of Section 124(!)(ii) does not disclose thanhe said provision of the 1999
Act mandates a party to first obtain permission/leave of the Court to file
F a rectification application which is a statutory right vested by the Act
(Sections 47 and 57 of the 1999 Act) and therefore cannot be curtailed
by any other provision of the 1999 Act.
20. The issue arose once again before the Delhi High Court in
Data Infosys Limited (supra). which was referred to a Full Bench,
G perhaps, for a closer look into the matter in view of the conflict of opinions
in Astrazcneca UK Ltd. (supra) and B. Mohamed Yousuff(supra). After
an elaborate consideration of the matter, the Full Bench of the Delhi
High Court concluded that where registration of a trade mark is questioned
after initiation ofa suit for infringement it is open for the party setting up
H the plea of invalidity to apply to the IPAB under Sections 47 and 57 of
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 69 r
[RANJAN GOGOI. J.]

the 1999 Act for rectification. The High Court went on to hold that the A
effect of the prima facic evaluation of the tenability of the plea of invalidity
does not impinge on the right of the party raising such a plea to apply to
the IPAB for rectification. In other words, the right to seek rectification
under Sections 47 and 57 of the 1999 Act docs not stand extinguished in
a situation where in a suit for infringement the plea of invalidity is found B
to be prima facie not tenable. The only difference according to the
High Court is that while under Sections 47 and 57 of the 1999 Act, the
aggrieved party can move the Registrar for rectification, in the, latter
situation i.e. where a suit is pending it is the IPAB which alone acquires
jurisdiction to the exclusion of the Registrar.
21. In Data Infosys, the Full Bench of the Delhi High Court further C
took the view that the provisions of Section 124(3) of the 1999 Act
should be interpreted to mean that if rectification proceedings are not
filed within the period stipulated under Section 124(2) of the 1999 Act,
or any extended period, the issue of invalidity of the registered trade
mark would not survive to be decided and the said plea would be deemed D
to have been abandoned. But all these consequences will follow in the
suit. If the aggrieved party files a rectification application under Sections
47/57 of the 1999 Act after expiry of the period stipulated under Section
124(2) of the 1999 Act, or the extended period, as may be, the rectification
application would still be maintainable and would have to be decided on
merits by the IPAB and the final decision of the Board on the rectification E
application would have no bearing on the suit notwithstanding the fact
that the plea of invalidity is deemed to have been abandoned therein.
The only effect of the belated filing of the rectification proceeding would
be that there would be no stay of the. suit. According to the Full Bench,
the jurisdiction to decide disputes with regard to validity of registration F
of a trade mark is excl~sively vested in the statutory authorities i.e. the
Registrar or the IPAB and the Civil Court's jurisdiction to go into the
merits of the plea of invalidity is statutorily barred. Therefore the .
jurisdiction of the IPAB vested under the statute cannot be ousted on
the Civil Court's determination of the prima facie tenability of the plea of
invalidity orupon the failure of the aggrieved party to move a rectification G
application within the time stipulated under Section 124(2) of the 1999
Act.
22. Insofar as its earlier view in Astrazeneca UK Ltd. (supra) is
concerned, the Full Bench was of the opinion that the appellate jurisdiction
H
692 SUPREME COURT REPORTS [2017] 12 S.C.R.

A of the High Court would only be confined to a consideration of the question
of the prima faci e assessment of tenability which would not touch upon
the question ofinvalidity of the trade mark on merits. The view expressed
in Astrazeneca UK Ltd. (supra) was held to be unacceptable on that
basis. Insofar as the abandonment of the plea of invalidity is concerned,
the Full Bench was of the opinion that Section 124(3) merely contemplates
B
abandonment of the plea/defence of invalidity in the suit and not an
abandonment to claim rectification under Sections 47/57 of the 1999
Act.
23. Registration of a trade-mark vests in the registered owner an
exclusive right to use the mark in relation to the goods in respect ·of
C which the mark has been registered. This is, however, subject to such
conditions and limitations as may be incorporated in the registration itself.
It also grants to the registered owner a right to seek and obtain relief in
case of infringement of the mark. Section 46 in Chapter VI of the 1958
Act contemplates removal from the register of any registered trade mark,
D inter alia, on the ground that the same was registered without any bona
fide intention ofusc and, in fact, such mark has not been used up to one
month prior to the date of the application for removal or that for a
continuous period of five years there has been no bona fide use of the
mark. Chapter VII of the 195 8 Act deals with rectification and correction
E . of the register of trade marks. Under Section 56, the Tribunal, (Registrar
or, as the case may be, the High Court), on application, may cancel or
vary the registration of a trade mark on the groW1d of any contravention,
or failure to observe a condition subject to which registration was granted.
24. In cases where in a suit for infringement of a rcgistcre~ trade
mark the validity of the registration of the trade mark is questioned either
F by the plaintiff or by the defendant, Section 107 of the 1958 Act provides
that an application for rectification shall be mad() to the High Court and
not to the Registrar notwithstanding the provisions contained in Section
46 qr Section 56 of the 1958 Act. This would seem to suggest that in
such cases (where a suit for infringement is pending) the legislative
G scheme is somewhat different.
25. The above seems to become more clear from what is to be
foW1d in Section l 1I of the l 958Act which de-als with "stay ofproceeding.s
where the validity of registration of the trade mark is questioited". The -
aforesaid provision of the 1958 Act specifically provides that if a
. H proceeding for rectification of the register in relation to the trade mark
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 693
[RANJAN GOGOi, J.]

of either the plaintiff or the defendant is pending before the Registrar or A
the High Court, as may be, and a suit for infringement is filed wherein
the aforesaid plea is raised either by the defendant or by the plaintiff, the
suit shall remain stayed. Section 111 further provides if no proceedings
for rectification are pending on the date of filing of the suit and the issue
of validity ofthc registration of the plaintiff's or the defendant's trade
B
mark is raised/arises subsequently and the same is primafacie found to
be tenable, an issue to the aforesaid effect shall be framed by the Civil
Court and the suit will remain stayed for a period of three months from
the date of framing of the issue so as to enable the concerned party to
apply to the High Court for rectification of the register. Section 111 (2) of
the 195 8 Act provides that in case an application for rectification is filed c
within the time allowed the trial of the suit shall remain stayed. Sub-
Section (3) of Section 11 J provides that in the event no such application
for rectification is filed despite the order passed by the Civil Court, the
plea with regard to validity of the registration of the trade mark in question
shall be deemed to have been abandoned and the suit shall proceed in D
respect of any other issue that may have been raised therein. Sub-
section (4) of Section 11 J provides that the final order as may be passed
in the rectification proceeding shall bind the parties and the civil court
will dispose of the suit in conformity with such order insofar as the issue
with regard to validity of the registration of the trade mark is concerned.
26. Following well accepted principles ofinterpretation of statutes, E
which would hardly require a reiteration, the heading of Section 111 of
the 1958 Act i.e. "Stay of proceedings where the validity ofrcgistration
of the trade mark is questioned, etc.", cannot be understood to be
determinative of the true purport, intent and effect of the provisions
contained therein so as to understand the said section to be contemplating F
only stay of proceedings of the suit where validity of the registration of ·
the trade mark is questioned. Naturally, the whole of the provisions of
the section will have to be read and so read the same would clearly
show lack of any legislative intent to limit/confine the operation of the
section to what its title may convey.
G
27. Rather, from the resume of the provision~ of the 1958 Act
made above it becomes clear that all questions with regard to the validity
of a Trade Mark is required to be decided by the Registrar or the High
Court under the 1958 Act or by the Registrar or the IPAB under the
1999 Act and not by the Civil Court. The Civil Coiirt, infact, is not
H
694 SUPREME COURT REPORTS [2017] 12 S.C.R.

A empowered by the Act to decide the said question. Furthermore, the
·Act mandates that the decisions rendered by the prescribed statutory
authority [Registrar/High Court (now IPAB)] will bind the Civil Court.
At the same time, the Act (both old and new) goes on to provide a
different procedure to govern the exercise of the same jurisdiction in
two different situations. In a case where the issue of invalidity is raised
B
or arises independent of a suit, the prescribed statutory authority will be
the sole authority to deal with the matter. However, in a situation where
a suit is pending (whether instituted before or after the filing of a
rectification application) the exercise of jurisdiction bythe prescribed
statutory authority is contingent on a finding of the Civ.il Court as regards
c the primafacie tenability of the plea of invalidity.
28. Conversely, in a situation where the. Civil Court does not find
a triable issue on the plea ofinvalidity the remedy of ah aggrieved party
would not be to move under Sections 46/56 of the 1958 Act but to
challenge the order of the Civil Court in appeal. This would be necessary
D to avoid multiple proceedings on the same issue and resultant conflict of
decisions.
. 29, The 1958 Act clearly visualizes that though in both situations
i.e. where no suit for infringement is pending at the time offiling of the
' application for rectification or such a suit has came to be instituted
E subsequent to the application for rectification, it is the Registrar or the
High Court which constitutes the Tribunal to determine the question of
invalidity, the procedure contemplated by the Statute to govern the exercise
of jurisdiction to rectify is, however, different in the two situations
· enumerated. Such difference has already been noted.
F 30. The intention of the legislature is clear. All issues relating to
and connected with the validity of registration has to be dealt with by the
Tribunal and not by the civil court. In cases where the parties have not
approached the civil court, Sections 46 and 56 provide an independent.
statutory rightto an aggrieved party to seek rectification of a trade mark.
However, in the· event the Civil Court is approached, inter alia, raising
G the issue of iii validity of the trade mark such plea will be decided not by
the civil court but by the Tribunal under the 1958 Act. The Tribunal will
however come int.o seisin of the matter only if the Civil Court is satisfied·
that an issue with regard to invalidity ought to be framed in the suit.
Once an issue to the said effect is framed, the matter will have to go to
H . the Tribunal and the decision of the Tribunal will thereafter bind the Civil
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 695
[RANJAN GOGOi. J.]

Court. If despite the order of the civil court the parties do not approach A
the Tribunal for rectification, the plea with regard to rectification will no
longer survive.
· 31. The legislature while providing consequences for. non-
compliance with timelines for doing of any act must be understood to
have intended such consequences to be mandatory in nature, thereby, B
also affecting the substantive rights of the parties. This is how Section
111(3) of the 1958 Act has to be understood. That apart, it is very much
within the legislative domain to create legal fictions by incorporating a
deeming clause and the court will have to understand such statutory
fictions as bringing about a real state of affairs between the parties and C
ushering in legal consequences affecting the parties unless, of course,
there is any other contrary provision in the statue. None exists in the
1958 Act to understand the provisions of Section 111 (3) in any other
manner except that the right to raise the issue of invalidity is lost forever
if the requisite action to move the High Court/IPAB (now) is not initiated
within the statutorily prescribed time frame. D

- 32. Thus, by virtue of the operation of the 1958 Act, the plea of
rectification, upon abandonment, must be u'nderstood to have ceased to
exist or survive between the parties inter se. Any other view would be
to permit a paiiy to collaterally raise the issue of rectification at an:,·
stage notwithstanding that a final decree may have been passed by the E
civil couii in the meantime. True, the decree of the Civil Court will be on
the basis of the conclusions on the other issues in the suit. But to permit
the issue of rectification, once abandoned, to be resurrected at the option
of the party who had chosen not to pursue the same at an earlier point of
time would be to open the doors to reopening of decrees/orders that
have attained finality in law. This will bring in uncertainty if not chaos in F
the judicial determinations between the parties that stand concluded.
Besides, such an interpretation would permit an aggrieved party to get
over the operation of a statute providing for deemed abandonment of
the right to raise an issue relevant; in· fact, fundamental to the !is. The
position may be highlighted by reference to a suit for infringement where G
the defendant raises the plea of invalidity of the plaintiff's trade mark
and also in the alternative takes up any of the defenses available in law.
The defendant by operation of Section 111(3) of the 1958 Act is deemed
to have abandoned the plea of invalidity. In the trial it is found that the
_ defendant is guilty of infringement and is appropriately restrained by a
H
696 SUPREME COURT REPORTS [2017] 12 S.C.R.

A decree of the Civil Court. If the right under Section 46/56 of the 1958
Act is to subsist even in such a situation, the possible uncertainty and
possible anarchy may well be visualized. This is why the legislature by
enacting Section 111 of the 1958 Act has mandated that the issue of
invalidity which would go to the root of the matter should be decided in
B the first instance and a decision on the same would bind the parties
before the civil court. Only ifthe same is abandoned or decided against
the party raising it that the suit will proceed in respect of the other issues,
if any. If the above is the legislative intent, which seems to be clear, we
do not see how the same can be overcome by reading the rights under
Sections 46 and 56 of the I 958 Act to exist even in a situation where the
C abandonment of the same right under Section 111 (3) has taken effect in
law. The mandate of the 1958 Act, particularly, Section 111 thereof,
appears to be that ifan aggrieved party does not approach the Tribunal
for a decision or the issue of invalidity of registration as provided for
under Section 111 (2) and (3), the right to raise the issue (of invalidity)
D would no longer survive between the parties to enable the concerned
party to seek enforcement of the same by recourse to or by a separate
action under the provisions of Section 46/56 of the 1958 Act.
33. Having dealt with the matter in the above manner, certain
subsidiary and incidental questions, urged and argued by the parties,
would also need an answer.
E
34. The first question posed is how an approach to the superior
Court i.e. the High Court, under Section 111 of the 1958 Act, can be
contingent on a permission or grant of leave by a court of subordinate
jurisdiction. The above is also contended to be plainly contrary to the
provisions of Section 41 (b) of Specific Relief Act, 1963. It is also urged
f. · that Section 32 of the 1958 Act provides a defence to a claim of
.infringement which is open to be taken both in a proceeding for rectification
as well as in a suit. The said defence statutorily available to a contesting
party cannot be foreclosed by a deemed abandonment of the issue of
invalidity, it has been contended.
G 35. Section 111 of the 1958 Act and the corresponding Section
124 of the 1999 Act nowhere contemplates grant of permission by the
civil court to move the High Court or the IPAB, as may be, for
rectification. The true purport and effect of Sections 111/124 (of the old
and new Act) has been dealt within-detail and would not require any
H further discussion or enumeration. The requirement of satisfaction of
PATEL FIELD MARSHAL AGENCIES v. P.M. DIESELS LTD. 697
[RANJAN GOGOi, J.]

the civil Court regarding the existence ofa prima facie case ofinvalidity A
and the framing of an issue to that effect before the law operates to vest
jurisdiction in the statutory authority to deal with the issue of invalidity
by no means, tantamount to permission or leave of the civil court, as has
been contended. It is a basic requirement to further the cause of justice
by elimination of false, frivolous and untenable claims of invalidity that B
may be raised in the suit.
36. While Section 32 of the 1958 Act, undoubtedly, provides a
defence with regard to the finality of a registration by efflux of time, we
do not see how the provisiorts of aforesaid section can be construed to
understand that the proceedings under Sections 46 and 56 on the one
hand and those under Sections l 07 and 111 on the other of the 1958 Act c
and the pari materia provisions of the 1999 Act would run parallelly.
As already held by us, the jurisdiction of rectification conferred by
Sections 46 and 56 of the 1958 Act is the very.same jurisdiction that is to
be exercised under Sections l 07 and 111 of the 1958 Act when the issue
of invalidity is raised in the suit but by observance of two different D
procedural regimes.
37. 111 the light of the above while answering the question arising
in the manner indicated above, we dismiss Civil Appeal Nos.4767-4679
'of 2001 and Civil Appeal arising out of Special Leave Petition (Civil)
No.1851 of2009 and allow the civil appeal arising out of Special Leave E
Petition (Civil) No. 27309 of2012.

Kalpana K. Tripathy Appeals dismissed.