Can Section 124 Be Invoked in Section 47 Cancellation Proceedings?

Federal Split Emerges on Scope of Section 124 in Cancellation Proceedings

A growing divergence has emerged between the Calcutta and Delhi High Courts on whether non-use cancellation proceedings under Section 47 of the Trade Marks Act, 1999 constitute ‘rectification proceedings’ under Section 124 of the same Act. This statutory interpretation directly impacts the ability to seek a stay of infringement proceedings when a trademark's validity is challenged.

The Delhi High Court has held that Section 47 proceedings, though not titled ‘rectification’, substantially affect the register and should therefore trigger the mandatory stay provisions under Section 124(2) if infringement and cancellation are pending concurrently. In contrast, the Calcutta High Court has taken a narrower view, requiring proceedings to be initiated before the Intellectual Property Appellate Board (now IPAB) or Registrar to qualify as rectification.

This split creates strategic challenges for litigators: a defendant in a trademark suit may seek to file a Section 47 petition hoping for a stay, but success may depend on jurisdiction. Practitioners should carefully consider forum selection and the timing of parallel proceedings. The issue may eventually require resolution by the Supreme Court to ensure uniformity in trademark enforcement across India.