Scheme of Sections 124 and 125 of the Trademarks Act, 1999 explained

Supreme Court: Interpreting Section 125 of the Trademarks Act, 1999, the bench of Kurian Joseph and F. Nariman, JJ, stating that Section 124 is of great importance in interpreting Section 125 of the Act, explained that Section 124(1) refers only to the plaintiff and defendant of a suit for infringement, and Section 124(1)(ii) specifically refers to the “party concerned” who will apply to the Appellate Board for rectification of the register. Similarly, Section 125 also refers only to the “plaintiff” and the “defendant” in a suit for infringement of a registered trademark.

Based on the above observation, the Court held that an application for rectification of the register can either be made by the defendant who raises a plea in the suit that the registration of the plaintiff’s trademark is invalid, or by the plaintiff who questions the validity of the registration of the defendant’s trademark in a situation where the defendant raises a defence under Section 30(2)(e) of the Act.

It was further held that Section 125(1) would only apply to applications for rectification of the register, and not to the exercise of suo motu powers of the Registrar under Section 57(4) of the Act. It was explained that in Section 125(1), the width of the expression “Section 57” is cut down by the expression “and an application for rectification of the register”. Such rectification applications are referable only to Sections 57(1) and (2) and not to the suo motu power of the Registrar under Section 57(4). [Jagatjit Industries Ltd. v. Intellectual Property Appellate Board, 2016 SCC OnLine SC 58, decided on 20.01.2016]

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