Kothrud Mitra Newspapers Pvt Ltd vs Metropolitan Media Company Ltd

CNR No : HCBM020118632026

901-IA-2031-2026-COMIP-230-2015.docx
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
rrpillai
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO. 2031 OF 2026
IN
COMMERCIAL (IP) SUIT NO. 230 OF 2015
1. Kothrud Mitra Newspapers Pvt. Ltd.
having its office at S. No. 18/2,
Sudarshan Park, Ingalenagar,
Warje Octroi Post
Karve Nagar, Pune-411 052.
2. Sunnjoy Manohar Dahake
Publisher of Defendant No. 1,
having his office at S. No.18/2
Sudarshan Park, Ingalenagar,
Digitally signed
by
RAJESHWARI
RAMESH
PILLAI
Date:
2026.10.21
19:22:17 +0530
RAJESHWARI
RAMESH
PILLAI
Warje Octroi Post, … Applicants
Karve Nagar, Pune-411 052. (Org.Defendants)
IN THE MATTER BETWEEN
1. Metropolitan Media Company Ltd.
A company incorporated under the
Provisions of Companies Act 1956
Having its registered office at No. 4,
Pampa Mahakvai Road, Chamrajpet
Bengaluru-560 018.
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2. Bennett Coleman and Company Limited
Public Limited company under the
Companies Act, 193, the Times of India
Building, Dr. D. N. Road, Mumbai-400 001
3. Lexicon Media Private Limited
S.No. 46/5, Aga Nagar Society,
Wadgaonsheri, Nagarroad,
Pune-411 014. …Plaintiffs
Vs.
1. Kothrud Mitra Newspapers Pvt. Ltd.
having its office at S. No. 18/2,
Sudarshan Park, Ingalenagar,
Warje Octroi Post
Karve Nagar, Pune-411 052.
2. Sunnjoy Manohar Dahake
Publisher of Defendant No. 1,
having his office at S. No.18/2
Sudarshan Park, Ingalenagar,
Warje Octroi Post,
Karve Nagar, Pune-411 052. … Defendants
Mr. Rashmin Khandekar a/w. Mr. Anand Mohan, Mr. Hardik
Sampat, Ms. Charu Shukla, Ms.Kanan Soni i/b. Ms. Charu
Shukla for the Plaintiffs.
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Mr. Jehaan Mehta a/w. Mr. Sujit Lahoti, Ms. Nidhi M. Jain i/b.
M/s. Sujit Lahoti and Associates for the Defendants in
COMIP/230/2015 and for the Applicant in IA/2031/2026.
CORAM : GAURI GODSE, J.
st
RESERVED ON : 21 JULY 2026
st
PRONOUNCED ON : 21 OCTOBER 2026
JUDGMENT :
1. When the suit was called out for final arguments,
learned counsel for the plaintiffs submitted that the
defendants have filed a rectification application before the
Trade Mark Registry. He submitted that the application was
wrongly filed before the Trade Mark Registry; however, only
to bring on record the factual aspects noted by the plaintiffs,
he mentioned it before the court.
2. Learned counsel for the defendants therefore prayed
for time to file an application under Section 124 of the Trade
Marks Act, 1999 (“Trade Marks Act”) seeking a stay of further
proceedings in the suit on the ground of pendency of the
rectification applications under Sections 47 and 57 of the
Trade Marks Act. The defendants were therefore granted
time to take steps. Thereafter, the defendants filed this
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interim application seeking a stay of further proceedings in
this suit till final disposal of their rectification application. In
the alternative, the defendants prayed to raise an issue
regarding the invalidity of the plaintiff's trade mark and to
defer the suit for three months from the date of framing of an
issue to enable them to apply to the appropriate forum for
rectification of the register.
3. The suit is filed for permanent injunction restraining the
defendants from directly or indirectly using and allowing any
use of the trade marks “Pune Mirror” and “KM Kothrud
Mirror” or any other mark similar and/or deceptively similar to
the plaintiffs’ registered trade marks “Pune Mirror” and
“Sunday Pune Mirror”. The plaintiffs have also prayed for an
injunction restraining the defendants from using any other
mark of the plaintiffs containing the word “Mirror”. The
plaintiffs have further prayed for Rs. 100,00,00,000/- as
damages for the alleged infringement of the plaintiffs’
registered trade marks.
4. To decide the defendants’ application, it is necessary to
consider the rival pleadings and the issues involved in the
suit.
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PLEADINGS IN THE PLAINT:
5. The plaintiffs claim rights in the registered trade marks,
“Pune Mirror” and “Sunday Pune Mirror” as well as other
registered “Mirror” formative trademarks such as “Mumbai
Mirror”, “Sunday Mumbai Mirror”, “Ahmedabad Mirror”,
“Bangalore Mirror on Saturday” and “Bangalore Mirror on
Sunday”. The plaintiffs claim to have a non-exclusive license
to use the word/mark “Mirror”, per se, for newspapers and
related goods and services, including other “Mirror” formative
marks bearing different city names.
6. The suit is filed to prevent the defendants from
infringing and passing off by using the registered trade marks
“Pune Mirror” and “Sunday Pune Mirror”. The plaintiffs claim
to have the marks “Pune Mirror” and “Sunday Pune Mirror”
registered in Class 9, Class 16, and Class 41 of the Fourth
Schedule to the Trade Marks Rules. The plaintiffs pleaded
the particulars of the websites by the title names of the
registered trade marks and the particulars of the advertising
and publications of the newspapers with the word “Mirror”.
The plaintiffs have alleged that the defendants' adoption of
the trademarks Pune Mirror and KM Kothrud Mirror caused
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confusion and deception in the minds of the public. According
to the plaintiffs, the defendants adopted the impugned trade
marks with the intent to commercially exploit and trade on the
goodwill and reputation of the plaintiffs' “Mirror” trade marks.
PLEADINGS IN THE WRITTEN STATEMENT:
7. The defendants have filed the written statement and
pleaded that the Registrar of Newspapers for India (“RNI”),
being the constituted authority appointed by the Central
Government under Section 19(a) of the Press and
Registration of Books Act, 1867 (“the said PRB Act”), is
vested with the powers of issuing a Certificate of Registration
in respect of the newspapers. After receiving the declaration
under Section 6 of the said PRB Act, the authority de-blocked
the titles “Pune Mirror” and “Sunday Pune Mirror”, which
th
were verified in the plaintiffs’ names on 24 January 2008.
After the title verification, plaintiff no. 2 failed to file the
requisite declaration and other compliances within the
prescribed period; the titles were then blocked with effect
th th
from 25 January 2010 and 17 February 2010. The
defendants thus pleaded that they filed an application for a
declaration of title in their favour and that the title of “Pune
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Mirror” was approved in their favour. The defendants thus
contended that they published Volume I, Issue I of Pune
Mirror, a fortnightly newspaper and applied for registration of
title.
8. Considering the defendants’ compliance and the
procedures for registration, a certificate of registration is
issued in their favour in accordance with Section 19 of the
said PRB Act. Plaintiff no. 2 applied under Section 8B of the
PRB Act for cancellation of the defendant’s title, “Pune
Mirror”. The defendants applied for a prohibitory order to stop
the “Pune Mirror” supplement published by Plaintiff No. 2 and
to stop the plaintiffs’ registration process for the title “Pune
Times Mirror”. The defendants pleaded that Plaintiff No. 2 did
not complete the registration process and that the RNI
deblocked the plaintiff's title. Similarly, the plaintiff’s other
titles have also been deblocked; thus, the plaintiffs are not
entitled to seek any relief based on the registered trade
marks.
9. The defendants denied that the plaintiffs had registered
the titles “Pune Mirror” and “Sunday Pune Mirror” in their own
name under Class 16 of the Trade Marks Rules. The
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Registration Certificate of Marks “Pune Mirror” is in respect of
Class 9 and 41. For Class 16, the plaintiffs relied on an
th
application for registration dated 18 November 2008 bearing
No. 1754729, for the mark “IDEA-I”. The defendants denied
that the plaintiffs are publishing the newspaper “Pune Mirror”.
The defendants relied upon the registration of “Pune Mirror”
and “KM Kothrud Mirror” with the Registrar of Newspapers
under the PRB Act.
SUBMISSIONS ON BEHALF OF THE DEFENDANTS:
10. Learned counsel for the defendants submitted that the
plaintiffs have not been using the trade marks continuously
and exclusively. Hence, in view of the lack of bona fide use of
the trade marks and the defendants’ continuous, exclusive,
and uninterrupted use of the title “Pune Mirror”, the plaintiffs
are not entitled to seek any injunction or damages against
the defendants.
11. According to the defendants, the registration of the
plaintiffs' trade mark is ex facie invalid, illegal and not
bonafide. Hence, the defendants have filed an application for
rectification/cancellation of the trade mark before the Trade
Marks Registry on the ground of no bonafide use for a
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continuous period of five years. The defendants have relied
on three rectification applications. One rectification
th
application is dated 16 March 2024 in respect of the
plaintiffs’ trade mark “Pune Mirror” in Class 41, the second
th
rectification application filed on 27 September 2023 in
respect of the plaintiffs’ trade mark “Sunday Pune Mirror” in
nd
Class 16 and the third rectification application dated 22 July
2024 in respect of the plaintiffs’ trade mark “Sunday Pune
Mirror” in Class 41. It is therefore submitted on behalf of the
defendants that the plaintiff's trade marks are invalid and,
since the proceedings are pending, the suit must be stayed
under Section 124 of the Trade Marks Act.
12. To support his submissions, learned counsel for the
defendants relied on this Court's decision in Franco India
Pharmaceuticals Private Limited vs. Corona Remedies
1
Private Limited (“ Franco India Pharmaceuticals ”) . He
submitted that this Court has discussed the decision of the
Apex Court in Patel Field Marshal Agencies and Another vs.
2
P. M. Diesels Limited and Others , (“ Patel Field Marshal ”),
emphasising that the Court would refuse to frame an issue
under Section 124 of the Trade Marks Act only in a situation
1 2025 SCC OnLine Bom 1007
2 (2018) 2 SCC 112
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to further the cause of justice by eliminating false, frivolous
and untenable claims of invalidity. This Court has taken a
view that, for applying the position of law as held in Patel
Field Marshal , it was found in the facts of the case before this
Court that the plea raised on behalf of the defendants did
satisfy the lower prima facie case tests, and certainly it was
not a case of false, frivolous and untenable claims regarding
invalidity raised on behalf of the defendants. Learned
counsel for the defendants submits that in view of the similar
facts of this case, the view taken by this Court in Franco
India Pharmaceuticals would squarely apply to stay further
proceedings of the suit.
13. Learned counsel for the defendants submitted that in
Patel Field Marshal the Apex Court held that in a situation
where a suit inter alia raising the issue of validity of the trade
mark is pending whether instituted before or after the filing of
the rectification application, the exercise of jurisdiction by the
prescribed authority is contingent on the findings of civil court
as regards the prima facie tenability of the plea of invalidity.
He therefore submitted that the Apex Court has held that the
right to seek rectification under Sections 47 and 57 of the
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Trade Marks Act does not stand extinguished where, in a suit
for infringement, a plea of invalidity is found to be prima facie
tenable. It is held that the only difference is that, under
Sections 47 and 57 of the Trade Marks Act, the aggrieved
party can move the Registry for rectification, and in the latter
situation, i.e. where the suit is pending, the Intellectual
Property Appellate Board (“IPAB”) alone has exclusive
jurisdiction, to the exclusion of the Registry. Learned counsel
for the defendants submitted that in view of the amendment,
such an application would now lie before the High Court.
14. Learned counsel for the defendants relied upon the
pleadings in paragraphs 4 and 5 of the written statement to
support his submissions that non-use of the registered trade
mark is a ground of invalidity. Hence, a plea can be raised at
any time by filing an affidavit, as this Court held in Cipla
3
Limited vs. Cipla Industries Pvt. Ltd. and Another (“ Cipla ”).
He further submits that, even under Order XIV of the CPC, a
plea can be raised to frame an issue on the invalidity of the
plaintiffs’ registered trade marks. In such an event, the
defendants would be entitled to file an appropriate
application before the High Court in accordance with law for
3 2014 SCC OnLine Bom 5107
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rectification, and, in such circumstances, the further
proceedings in this suit must be stayed.
SUBMISSIONS ON BEHALF OF THE PLAINTIFFS:
15. Learned counsel for the plaintiffs opposes this
application on the ground that it is malafide application filed
at the fag end of the final arguments in the suit. Hence, the
frivolous, untenable, and casual nature of the objection
raised on behalf of the defendants shows a clear
abandonment of any right to raise such a plea. The suit was
th
filed on 27 January 2015, and the defendants filed their
th
written statement on 14 June 2019. The issues were framed
th th
on 24 November 2020 and were recasted on 16 April 2024.
The plaintiffs' affidavit of evidence was taken on record on
th
10 March 2022, and the defendants' evidence affidavit on
th
30 August 2023. Thereafter, the defendants amended the
th
written statement on 30 April 2024. The evidence of both the
th
parties was closed on 26 August 2025.
16. Learned counsel for the plaintiffs therefore submits
that, by their conduct, the defendants have abandoned the
plea of invalidity, if any. The defendants could have raised
such a plea; however, they did not raise it until the final
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hearing of the suit. Hence, such a plea cannot be entertained
at this stage. He further submits that the rectification
applications filed by the defendants are bad in law. The
contentions of non-use of the plaintiffs’ trade marks are
th
pleaded from 2009 and/or 20 January 2024 with reference
to the registration under the PRB Act. Hence, the defendants
have raised no fresh plea to seek a stay of the suit under
Section 124. The allegation of non-user has been pleaded in
the written statement. Hence, on this ground, the defendants
cannot raise a fresh plea and seek a stay of the proceedings.
17. To support his submissions on the maintainability of
such an application, learned counsel for the plaintiffs relied
upon the decisions of the Apex Court in Kanwar Singh Saini
4
vs. High Court of Delhi (“ Kanwar Singh Saini ”) , Harshad
5
Chiman Lal Modi vs. DLF Universal Ltd and Another
(“ Harshad Modi ”) , Kiran Singh and Others vs. Chaman
6
Paswan and Others (“ Kiran Singh ”), M. Murali vs. Sri
7
Krishna Sweets Private Limited (“ M. Murali ”) , Country Inn
Private Limited vs. Country Inns and Suites by Carlson, Inc
8
and Anr. (“ Country Inn ”) , and Hardie Trading Ltd. and
4 (2012) 4 SCC 307
5 (2005) 7 SCC 791
6 (1954) 1 SCC 710
7 2020 SCC OnLine Mad 1070
8 2018 SCC Online Del 8549
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Another v. Addisons Paint and Chemicals Ltd. (“ Hardie
9
Trading ”) .
18. Learned counsel for the plaintiffs submitted that the
post-suit rectification application can be filed only in the High
Court. Hence, in the absence of a valid and proper
application for rectification, the mere pendency of an
application before an incompetent authority cannot be a
ground to stay further proceedings. In the absence of basic
foundational pleadings raising any ground of invalidity, there
is no question of applying the provisions of Section 124 to
stay further proceedings on the ground of pendency of an
invalid application filed before the incompetent authority.
19. Learned counsel for the plaintiffs submitted that the
plea of non-use in the present case is unsupported by any
prima facie evidence and is a false and untenable plea that
would not even fall within the category of a low-threshold
plea. He therefore submits that an application under Section
124(1)(i) or any alternative prayer for framing issues and
seeking adjournment under Section 124(1)(ii) is not available
to the defendants. He further submitted that, in the absence
of any specific plea, no question would arise of framing the
9 (2003) 11 SCC 92
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additional issue and permitting the defendants to file an
appropriate application.
20. Learned counsel for the plaintiffs submitted that the
plaintiffs have a strong case and are likely to succeed in the
suit. Hence, to avoid a final decree in the suit, this is an
attempt by the defendants to stall further hearing of the suit.
Hence, learned counsel for the plaintiffs submitted that in the
absence of any prima facie evidence of non-user or invalidity,
the further proceedings of the suit cannot be stayed at this
stage. Hence, the application be rejected, and the suit be
heard on merits.
LEGAL POSITION:
21. In Patel Field Marshal , t he defendants (the appellants
in the Apex Court) contested the plaintiff’s (the respondents
in Apex Court) claims on the ground of jurisdiction as well as
on merits. In the written statement, the defendants also
contested the validity of the registration of the plaintiff’s trade
mark “Field Marshal” and claimed that the same was liable to
be rectified in the trade mark register. An issue to that effect
was framed in the suit. T he defendants had filed three
rectification applications under Sections 46/56 of the Trade
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and Merchandise Marks Act, 1958 (“the 1958 Act”) for
removal and cancellation of the three trade marks registered
in favour of the plaintiff. The learned Single Judge of the High
Court of Gujarat dismissed the three applications; the
Division Bench confirmed the order. The said orders were
the subject matter of challenge in the Apex Court. The Apex
Court observed that Sections 46, 56, 111 and 107 of the
1958 Act correspond to Sections 47, 57, 124 and 125 of the
1999 Act.
22. The Apex Court in Patel Field Marshal held that Section
111 of the 1958 Act (Section 124 of the 1999 Act) specifically
provides that if a proceeding for rectification of the register in
relation to the trade mark of either the plaintiff or the
defendant is pending before the Registrar or 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. It is further held that if
no proceedings for rectification are pending on the date of
filing of the suit and the issue of validity of the registration of
the plaintiff's or the defendant's trade mark is raised/arises
subsequently and the same is prima facie found to be
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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 party concerned to apply to the High Court for
rectification of the register. It is held that sub-section (3) of
Section 111 (Section 124(3) of the 1999 Act) provides that, if
no such application for rectification is filed despite the order
passed by the civil court, the plea regarding the validity of the
registration of the trade mark in question shall be deemed
abandoned.
23. In Franco India Pharmaceuticals , this Court held that,
while exercising jurisdiction under Section 124 of the Trade
Marks Act, it must examine whether the claim of invalidity of
the trade mark registration, raised on behalf of the defendant,
is false, frivolous, and untenable. If the court is to reach the
aforesaid conclusion, it must accept the contentions raised
on behalf of the plaintiff, and such an issue cannot be
framed. It is further held that if the defendant successfully
passes the test of prima facie tenability of its plea regarding
invalidity of the registration of the plaintiff's trade marks, such
an issue will have to be framed. Thus, the pleadings must
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first be examined to determine whether the defendant has
raised a specific plea regarding the invalidity of the
registration of the plaintiff's trademark.
24. In Franco India Pharmaceuticals , this Court referred to
the legal principles laid down by the Full Bench of this Court
10
in Lupin Ltd Vs Johnson and Johnson (“ Lupin ”) . Before the
Full Bench, the question was whether the Court can consider
the invalidity of the plaintiff’s trade mark registration at an
interlocutory stage when the defendant raises the defence of
invalidity of registration in an infringement suit. The Full
Bench concluded that the court has a limited window in such
situations and would not be powerless to refuse to grant an
injunction where the trade mark registration is found to be ex
facie illegal, fraudulent, or shocking to the conscience of the
court. By referring to the Full Bench's decision, this Court
held that the Full Bench contemplates a very high threshold.
But in discussing the scope of the Court's jurisdiction, the Full
Bench referred to Section 124 of the Trade Marks Act and, in
that context, used the expression low threshold prima facie
case.
25. It is thus held by this Court in Franco India
2014 SCC OnLine Bom 4596
10
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Pharmaceuticals that, as per the law laid down by the Full
Bench, the test of prima facie tenability contemplated under
Section 124(1)(b)(ii) of the Trade Marks Act is a low
threshold prima facie case test. It is further held that it is
lower than the prima facie case test a plaintiff must satisfy
when pressing for interim reliefs before the court in the
context of a rival having a registered trade mark. This Court
thus held that while considering the question of framing an
issue regarding the invalidity of a registered trade mark
under Section 124(1)(b)(ii), the court has to apply a low
threshold prima facie case test.
26. This Court, in Franco India Pharmaceuticals, thus
concluded that, as per the law laid down by the Apex Court in
Patel Field Marshal , the court would refuse to frame an issue
under Section 124 only in situations to further the cause of
justice by elimination of false, frivolous, and untenable claims
of invalidity. This Court therefore, by applying the well-settled
position of law, found that in the facts and circumstances of
the case, the plea raised on behalf of the defendant did
satisfy the low threshold prima facie case test and it was
certainly not a case of false, frivolous or untenable claims
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regarding invalidity being raised on behalf of the defendant.
Accordingly, this Court framed the issue and stayed further
proceedings in the suit, granting liberty to the defendant to
pursue the rectification application in accordance with law.
27. In Cipla , the suit was filed urging that the defendants
were infringing the plaintiff’s registered trade mark. Although
the plaintiff had not used the word ‘invalid’ qua the impugned
registration of the defendants, it averred that it would take
appropriate steps to remove the impugned registration before
the appropriate forum. The defendants raised a defence
under clause (e) of sub-section (2) of Section 30 of the Trade
Marks Act. The plaintiff applied under Section 124 for a stay
of the suit on the ground of a pending rectification application
against the impugned registration of the defendants. This
Court held that a defence or plea by the defendant can be
raised by an affidavit and/or other application and does not
have to be by way of a written statement alone. It is observed
that Section 124(1)(b) of the Act contemplates a situation
where, “the Defendant raises a defence under clause (e) of
Sub-section (2) of Section 30 and the Plaintiff pleads the
invalidity of the registration of the defendant's trade mark”. In
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the context of the plaintiff’s application for stay, this Court
accepted the submissions on behalf of the plaintiff that the
acts of raising a defence by the defendant and subsequent
challenge to the validity of the defendant’s mark by the
Plaintiff are sequential, i.e. the challenge contemplated is
one which is raised after the filing of the plaint and as such
‘plead’ as used can never mean the plaint at all, as it
contemplates the plea being raised subsequent to the filing
of the plaint; hence, it would always be open to the plaintiff to
raise the plea of invalidity by way of an affidavit or otherwise
seeking stay of the Suit in respect of infringement so that
appropriate proceedings may be filed, despite the plaint
having no pleading in this regard.
28. This Court further held that the orders contemplated by
sub-section (5) of Section 124 are usually made before the
trial of an action in interlocutory proceedings. Accordingly, the
interlocutory application for stay of the Suit is not premature,
and the question of the defendant filing a written statement
does not arise. It is therefore held that ‘pleads’ in Section
124(1)(b) of the Act cannot mean only the plaint or written
statement.
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29. This Court further held that Section 125 states that
where in a suit for infringement of a registered trade mark,
the defendant raises a defence under clause (e) of sub-
section 2 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 registration shall be determined
only on the application for rectification made to the Appellate
Board and not the Registrar. This Court held that the
language of Section 125 is identical to Section 124, save and
except that instead of the word ‘pleads’ as used in Section
124, Section 125 uses the word ‘questions’, which also
shows that “pleads” in 124(1)(b) of the Act cannot be given a
restricted meaning. The Court held that Section 124 of the
Act was enacted to avoid multiplicity of proceedings.
30. It is further held that the Court does not have the power
to finally adjudicate upon the validity and/or invalidity of a
registered trade mark, and Section 124(4) of the Act
expressly states that the final order made in any rectification
proceedings referred to in sub-section (1) or sub-section (2)
shall be binding upon the parties and the court shall dispose
of the suit in conformity with such order, in so far as it relates
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to the issues as to the validity of the registration of the trade
mark. This Court, thus, held that it would run against the
scheme of the Act to continue with the trial of the suit in
respect of infringement, as no final finding can be rendered
by the civil Court in the absence of adjudication by the IPAB
of the plaintiff’s application seeking rectification of the
impugned mark.
31. In Kiran Singh , the Apex Court held that a decree
passed by a court without jurisdiction is a nullity, and that its
invalidity could be set up whenever and wherever it is sought
to be enforced or relied upon, even at the stage of execution
and even in collateral proceedings. It is held that a defect of
jurisdiction, whether it is pecuniary or territorial, or whether it
is in respect of the subject-matter of the action, strikes at the
very authority of the court to pass any decree, and such a
defect cannot be cured even by consent of parties. It is held
that when the Court is coram non judice , its judgment and
decree would be a nullity. This view is followed in Harshad
Modi . In Kanwar Singh Saini , the Apex Court held that w hen
a statute gives a right and provides a forum for adjudication
of rights, a remedy must be sought only under the provisions
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of that Act.
32. In M. Murali , the Madras High Court held that there is a
clear difference between removal of registration and
rectification of registration, and that invalidity of registration
on the ground of non-user must be specifically pleaded to fall
within the purview of Section 124.
33. In Country Inn Private Limited , the Delhi High Court
discussed the legal principles settled by the Apex Court in
Patel Field Marshal on abandonment of plea of invalidity of
registration. The Apex Court held that after framing an issue
under Section 124 on invalidity of registration, when the suit
is stayed to enable the defendant to file the appropriate
application, and the defendant fails to do so within the time
granted, such a plea stands abandoned. By relying on these
principles, the Delhi High Court held that trial of the suit starts
after framing issues and the commencement of leading
evidence on the issues framed; therefore, a stay of trial is
before the commencement of trial, not after. The Delhi High
Court thus held that once the defendant in an infringement
suit does not seek framing of an issue of invalidity of the
plaintiff's registration before the commencement of trial, then
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the defendant is deemed to have abandoned its right to
question the validity of the registration of the plaintiff’s
trademark and such right to question the plaintiff's
registration is lost and will no longer survive.
34. In Satyam Infoway Ltd. , the principal question raised
before the Apex Court was whether internet domain names
are subject to the legal norms applicable to other intellectual
properties, such as trade marks. In the context of domain
names, the Apex Court explained the theory of passing off. In
Hardie Trading Ltd. , the Apex Court h eld that if the ground for
rectification is merely non-use under Section 46 of the Trade
Marks Act, it is not really on account of any public mischief
by way of an incorrect entry. The Court held that non-use
does not, by itself, render the entry incorrect, but it gives a
person whose interest is affected the right to apply for its
removal. The Apex Court held that under Section 46(1)( b ) of
the Trade Marks Act, an application for removal of a
registered trade mark will be allowed only if a continuous
period of five years or longer has elapsed up to the date of
one month prior to the date of the application during which
there was no bona fide use by the proprietor of the trade
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mark sought to be removed. The Apex Court held that there
is a distinction between the intention to abandon, which is
part of the “no bona fide use in relation to those goods” in
sub-section (1) of Section 46, which gives a cause for
removal of the trade mark and the intention to use under sub-
section (3) of Section 46, which provides a special defence to
the registered proprietor and is inferred from the existence of
special circumstances.
ANALYSIS AND CONCLUSIONS:
35. The dispute is regarding the use of the plaintiff’s
registered trade marks “Pune Times Mirror” and “Sunday
Pune Times Mirror”. In addition to these two trade marks, the
plaintiffs also claim ownership of other registered trade
marks with the word ‘Mirror’, as described in the suit. The
plaintiffs claim they began using the word “Mirror” when they
introduced the newspaper “Mumbai Mirror” in May 2005. The
th
plaintiffs claim to have launched “Pune Mirror” on 7 April
th
2008 and “Sunday Pune Mirror” on 6 April 2008 in Pune.
The plaintiffs rely on the Trade Mark registration certificates
th
dated 18 November 2008 for “Pune Mirror” and “Sunday
Pune Mirror”.
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36. The defendants claim to have been publishing a
st
fortnightly newspaper named “Pune Mirror” from 1 October
2010. The defendants rely upon the registration certificate
th
issued on 14 December 2010 by the RNI under the PRB
Act. The defendants pleaded the particulars of the
proceedings before the RNI under the PRB Act and the
notice issued by the Press Council of India. The defendants
alleged that the plaintiffs’ title was deblocked as the plaintiffs
did not complete the registration process before the RNI. The
defendants have raised a vague ground disputing the
plaintiffs’ registration certificate for the trademark “Pune
Mirror”.
37. The defendants have raised grounds regarding their
fortnightly newspaper published under the name “Pune
Mirror” and have thus contended that the plaintiffs’ case of
trademark infringement and/or passing off would not hold a
good ground in light of the provisions of the Trade Marks Act.
Thus, basically, the defendants have raised contentions to
support their claim of genuine use of the term “Mirror” in
publishing the fortnightly newspaper “Pune Mirror”.
38. The defendants have not raised a plea regarding the
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invalidity of registration of the plaintiffs’ trade marks; hence,
no such issue was framed in this suit. The issues framed are
based on the rival pleadings regarding alleged infringement
and passing off action and the defendants’ plea of a genuine
use of the trade mark “Pune Mirror”. The defendants filed
rectification applications after this suit; however, they never
pleaded the same in the written statement. As contended in
the application for stay under Section 124, the defendants
filed rectification applications in 2023 and 2024 under
Sections 47/57 of the Trade Marks Act by alleging no
bonafide use of the registered trade marks by the plaintiffs.
All the applications are filed before the Registrar of Trade
Marks.
39. Under Section 125 of the Trade Marks Act, when, in a
suit for infringement of a registered trade mark, the
defendant questions the validity of the plaintiff's trade mark
registration, the issue as to the validity of the registration of
the trade mark concerned shall be determined by filing an
application before the High Court. Hence, the defendants'
rectification applications before the Registrar are not tenable.
Hence, rectification applications pending before an
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incompetent authority cannot be a ground to stay the suit
under Section 124 of the Trade Marks Act.
40. The alternative prayer for framing an issue and then
permitting the defendants to apply to the appropriate forum
for rectification of the register is on the ground that even by a
separate application the plea of invalidity can be raised. The
defendants’ counsel relied upon this Court’s decision in Cipla
to support the submissions that raising a plea cannot be
restricted to pleading in the written statement. In Cipla , this
Court's observations on the plea of invalidity are in the
context of an application under Section 124 filed at the pre-
trial stage. Therefore, this Court explained the situations for
grant of stay of the trial by holding that Section 124(4)
expressly states that the final order made in any rectification
proceedings referred to in sub-section (1) or sub-section (2)
shall be binding upon the parties and the court shall dispose
of the suit in conformity with such order, in so far as it relates
to the issues as to the validity of the registration of the trade
mark. This Court thus held that it would run against the
scheme of the Act to continue with the trial of the suit in
respect of infringement as no final finding can be rendered by
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the court in that regard.
41. Hence, the view taken in Cipla , that ‘ plead’ as used in
Section 124(1)(b) cannot be restricted to the plaint or written
statement alone, is in the context of a pre-trial stage. The
decision in Cipla does not deal with a situation post framing
of issues and completion of trial. Hence, in my view, the said
decision would not apply to the facts of this case. In the
present case, the application under Section 124 is filed at the
stage of final arguments of the suit after the evidence is
closed. No ground of invalidity is pleaded in the application
that could not be pleaded in the written statement.
42. Another aspect regarding abandonment of the issue of
invalidity needs to be considered. Learned counsel for the
plaintiffs relied upon the decision of the Delhi High Court in
Country Inn Private Limited to support his submissions that
the defendants did raise the contention of non-use of the
trade mark by the plaintiffs; however, never pressed for
framing an issue on the invalidity of the plaintiff's registered
trademark on the ground of no bona fide use as
contemplated under the Trade Marks Act. Hence, according
to the learned counsel for the plaintiffs, it would amount to
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abandonment of such a plea. I do not find any substance in
the arguments raised on abandonment of the plea.
43. In view of the law laid down in Patel Field Marshal,
when the suit is stayed after framing an issue on the
invalidity of registration to enable the defendant to file the
appropriate application, and the defendant fails to do so
within the time granted, such a plea stands abandoned. The
Delhi High Court in Country Inn Private Limited applied the
same principles by holding that a stay of trial is before the
commencement of trial, and not after; hence, before the
commencement of trial, if such an issue is not raised, then
the defendant is deemed to have abandoned its right to
question the validity of the registration of the plaintiff’s
trademark. However, Section 124 provides for a stay of
proceedings, and not a trial. Hence, in view of the law laid
down by the Apex Court in Patel Field Marshal , the theory of
abandonment of the plea will apply only when the issue is
framed by the civil court and the defendant takes no steps to
challenge the validity within the time granted by the court.
Hence, the Delhi High Court’s decision relied upon by the
learned counsel for the plaintiffs would not bind this Court.
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44. In light of the well-settled legal principles discussed
above, unless this Court records a prima facie finding that an
issue of invalidity of the registered trade marks arises in the
suit, the question of staying the suit to determine an issue of
invalidity by the competent forum would not arise. Such a
prima facie finding for framing an issue for trial can be
recorded only based on the rival pleadings, that is, the plaint
and the written statement. Therefore, if the court does not
frame an issue on invalidity while framing issues, but later
finds that such an issue arises from the rival pleadings, it
may frame an additional issue necessary for a fair trial,
provided it arises from the pleadings.
45. In Patel Field Marshal , the Apex Court held that a ll
issues relating to and connected with the validity of
registration have to be dealt with by the Tribunal and not by
the civil court, and in the event the civil court is approached,
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 only if the civil court is satisfied that an issue with
regard to invalidity ought to be framed in the suit. Thus, as
per well-established legal principles, once a suit relating to
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the registered trade mark is pending, the defendant can be
permitted to apply for rectification only if the civil court frames
the issue of invalidity.
46. The question to be decided in the present case is
whether the defendant has made out even a low threshold
prima facie case of invalidity of the plaintiffs’ registered trade
marks. In light of the legal principles as discussed in the
above paragraphs by referring to the decisions of the High
Courts and the Apex Court, a civil court would refuse to
frame an issue under Section 124 only in situations to further
the cause of justice by elimination of false, frivolous, and
untenable claims of invalidity. It is also a well-settled legal
principle as discussed in the above paragraphs that the civil
c ourt does not have the power to finally adjudicate upon the
validity and/or invalidity of a registered trade mark, and
Section 124(4) of the Act expressly states that the final order
made in any rectification proceedings referred to in sub-
section (1) or sub-section (2) shall be binding upon the
parties and the court shall dispose of the suit in conformity
with such order, in so far as it relates to the issues as to the
validity of the registration of the trade mark. Thus, the civil
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Court cannot render any final finding on rectification of the
impugned mark. However, the question of permitting the
defendant to apply for rectification would arise only if an
issue of invalidity arises in the suit.
47. In the present case, the defendants have pleaded
regarding their use of the trade mark “Pune Mirror”. All the
defendants' pleadings concern denying and opposing the
plaintiff's allegations of trade mark infringement and passing
off. The defendants have not raised any plea on the invalidity
of the plaintiffs’ registered trade marks either on the ground
of no bona fide use or otherwise. The defendants have
pleaded the particulars regarding the proceedings before RNI
under the PRB Act, but have not raised any plea on no
bonafide use of the registered trade marks in the context of
the Trade Marks Act.
48. The PRB Act is a special statute governing publication
of newspapers. Therefore, a plea raised regarding
proceedings under the PRB Act would not ipso facto
constitute a plea on the invalidity of the registered trade
marks under the Trade Marks Act. Registration of title under
the PRB Act would not itself constitute a ground to seek
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rectification of the register under the Trade Marks Act or raise
a plea of invalidity of registered trade marks under the Trade
Marks Act. Invalidity of a registered trade mark must be in
relation to registration under the Trade Marks Act and not
merely on the ground of another statutory registration or non-
registration. Therefore, a plea of invalidity on the ground of
non-use must be framed with reference to the provisions and
requirements under the Trade Marks Act.
49. In the present case, the defendants have raised neither
a low-threshold prima facie case nor any challenge to the
validity of the plaintiffs’ registered trade marks in relation to
the provisions of the Trade Marks Act. Hence, no issue on
invalidity of the plaintiffs’ registered trade marks arises in the
present suit. Hence, the question of granting stay of the suit
to enable the defendants to challenge the validity of the
plaintiffs’ registered trade marks does not arise in the present
suit. The defendants have filed this application at the fag end
of the suit, that is, at the time of final arguments. Hence,
merely stating in the application under Section 124 that the
plaintiffs’ registered trade marks are invalid cannot be a
ground to frame an issue and stay this suit.
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50. The application is devoid of any merit. For the reasons
recorded above, the interim application is rejected.
51. The suit be listed for final arguments before the court
having assignment.
[GAURI GODSE, J.]
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