Recently, a single-judge bench of the Delhi High Court comprising Justice c. Hari Shankar, referred a question of law to the Division Bench of the Court for consideration and decision.
The Respondent in the present matter (Venus Home Appliances Private Limited) had filed an infringement suit against the Petitioner (Mahalaxmi Products) wherein it was alleged that the Petitioner was infringing the “Venus” mark of the Respondent.
While filing its written submissions, the Petitioner challenged the validity of the asserted “Venus” mark. During the pendency of the suit, Petitioner instituted an application under Section 124(1) of the Trade Marks Act 1999 (the Act), for framing of an issue regarding invalidity of the “Venus” mark and for adjournment of the proceedings by three months in order to enable the Petitioner to file a rectification petition. Even while the said application was pending, Petitioner moved the Court to file the present rectification petition.
The Court noted that while the Petitioner has jumped the gun to file the rectification proceedings, the same cannot be dismissed as not maintainable merely because it has been filed in advance of any issue being framed by the learned Commercial Court on the tenability of the challenge. Thus, the petition was allowed, however, a question of law remained open and was referred to the Division Bench of the Court.
Whether the view by the Coordinate Single Bench in Sana Herbals, that, after the abolition of the IPAB, there is no requirement of staying a civil suit during pendency of the rectification petition, even where the rectification petition is instituted under Section 124 of the Act, can sustain, in view of Section 124(2)?
The Court was unable to accept the position of law, as settled in the case of Sana Herbals Pvt. Ltd. v. Mohsin Dehlvi, as per which the power to decide a rectification proceeding now vests with the High Court and there is no requirement of staying the infringement suit pending disposal of the rectification proceeding, and both proceedings can be consolidated and decided together.
The Court raised objections on four grounds-
The question is now referred to Division Bench of the Court and is pending decision, while the present petition has been listed for November this year.
 C.O. (COMM.IPD-TM) 258/2022
 (2010) 43 PTC 479