# M/S Sterling Irrigations And Ors v. Ms Bharat Industries

- **Citation:** (2025) 7 ILRA 142
- **Court:** High Court of Judicature at Allahabad
- **Decided:** 2025-07-01
- **Case number:** Matters Under Article 227 No. 8521 of 2024
- **Bench:** Neeraj Tiwari
- **Source:** https://unisonlegal.in/judgment/allahabad-high-court/m-s-sterling-irrigations-and-ors-v-ms-bharat-industries-53606
- **Pages:** 12

## Headnote

Ajay Kumar Pandey, Chhaya Gupta, Sujeet
Kumar

Issue for Consideration
Matter
pertains
to
the
applicability
and
interpretation of SS.124 ,125 of the Trade Marks
Act, 1999 in a suit filed for injunction, and the
legality of stay granted by the Commercial Court
on
the
basis
of
pending
rectification
proceedings.

Headnotes
Trade Marks Act, 1999 - SS.124 & 125 -
Stay of proceedings where validity of
registration is questioned - Suit and
counter-claim
filed
only
for
permanent/prohibitory injunction and not
for infringement - validity of registration
not challenged - S.124 not attracted -
stay
of
proceedings
bad
in
law
-
Rectification Application - Proper forum -
S.125
-
Rectification
application
in
pending suit for infringement must be
filed before the High Court, not before the
Registrar - O.14 R.1 CPC - Framing of
issues - Issues framed earlier under O.14
R. 1 CPC are distinct from issues required
to be framed under S.124 - absence of
such issue fatal to stay order.
Held: Suit and counter claim being for
injunction only, not for infringement of trade
mark, provisions of S.124 of the Trade Marks
Act, 1999 were not applicable - Even if treated
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
143
as a suit for infringement, the Commercial Court
erred in staying the proceedings without
framing issue as required under S.124(1)(b)(ii)
of the Act -Rectification applications filed before
Registrar, Trade Mark, Calcutta and Delhi were
not maintainable under S.125(1), being required
to be filed before the High Court - During the
pendency, if rectification application is to be
filed, same has only been filed before the High
Court and not before the Registrar - In case it is
pending before the Registrar, he is required on
his part to transfer the same before the High
Court - Law is very well settled that only High
Court is having authority to decide the
rectification application filed under SS. 124 &
125 of Act, 1999 - Impugned order dated
6.5.2024 passed by the Commercial Court No.2,
Agra was quashed - Petition allowed - No order
as to costs. (Paras 20,21,26,27,28,29,30,31,32)
(E-7)

Case Law Cited
Umesh Kumar Gupta and another v. M/s Shree
Girraj Food Products, 2013 (2) AII WC 2023;
Patel Field Marshal Agencies & Ors. v. P.M.
Diesels Ltd. & Ors., AIR 2017 SC 5619;
Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad
&
Ors.,
2017
DHC
7479-DB;
Jagatjit
Industries Ltd. v. Intellectual Property Appellate
Board & Ors., (2016) 4 SCC 381; Nedunuri
Kameswaramma v. Sampati Subba Rao, AIR
1963 SC 884; Kannan (dead) by Lrs. v. V.S.
Pandurangam (dead) by Lrs., (2007) 15 SCC
157; Asia Match Company Pvt. Ltd. v. Deputy
Registrar of Trade Marks & GI,
2023:
MHC:5361.

List of Acts
The Trade Marks Act, 1999; Code of Civil
Procedure, 1908; Commercial Courts Act, 2015

List of Keywords
Registered
Trademark
-
injunction
-
infringement
of
trademark
-
permanent
injunction - prohibitory injunction - rectification
application - validity of registration - stay of
proceedings - framing of issues - Registrar -
counter claim - Commercial Court.

Case Arising From
Impugned order dated 6.5.2024 passed by the
learned Commercial Court No.2, Agra in Original
Suit No. 04 of 2015 (M/s Bharat Industries v.
M/s Sterling Irrigation and others).

Appearances for Parties
Advs. for the Petitioners: Prateek Kumar
Advs. for the Respondent: Ajay Kumar
Pandey, Chhaya Gupta, Sujeet Kumar

## Text

_Characters 0–39,911 of 40,087. This is a partial read: ask again with offset=39911 for what follows._

142 INDIAN LAW REPORTS ALLAHABAD SERIES
is charged with or proceeded against
criminally. A surgeon with shaky hands
under fear of legal action cannot perform a
successful operation and a quivering
physician cannot administer the end-dose
of medicine of his patient. If the hands be
trembling with the dangling fear of facing a
criminal prosecution in the event of failure
for whatever reason whether attributable to
himself or not, neither can a surgeon
successfully wield his life-saving scalpel to
perform an essential surgery, nor can a
physician successfully administer the lifesaving dose of medicine. Discretion being
the better part of valour, a medical
professional would feel better advised to
leave terminal patient to his own fate in the
case of emergency where the chance of
success may be 10% (or so), rather than
taking the risk of making a last ditch effort
towards saving the subject and facing a
criminal prosecution if his effort fails. Such
timidity forced upon a doctor would be a
disservice to society."

14. Considering the material available
on record, this Court finds that the relevant
inquiry
was
already
conducted.
The
daughter of the petitioner was admitted in a
critical condition in the Emergency Ward
and was attended by two junior doctors and
thereafter was referred to IMS-BHU. The
respondent No. 2 was in OPD and was
delivering lectures to the medical students
from 2.00 P.M to 3.00 P.M. There was no
gross medical negligence in her treatment.

15. Consequently, this Court does not
find any illegality in the orders impugned,
therefore, no interference is required.

16. Accordingly, the writ petition is
dismissed.
----------
(2025) 7 ILRA 142
ORIGINAL JURISDICTION
CIVIL SIDE
DATED: ALLAHABAD 01.07.2025
BEFORE

THE HON'BLE NEERAJ TIWARI, J.

Matters Under Article 227 No. 8521 of 2024

M/S Sterling Irrigations And Ors.
 ...Petitioners
Versus
Ms Bharat Industries ...Respondent

Counsel for the Petitioners:
Prateek Kumar

Counsel for the Respondent:
Ajay Kumar Pandey, Chhaya Gupta, Sujeet
Kumar

Issue for Consideration
Matter
pertains
to
the
applicability
and
interpretation of SS.124 ,125 of the Trade Marks
Act, 1999 in a suit filed for injunction, and the
legality of stay granted by the Commercial Court
on
the
basis
of
pending
rectification
proceedings.

Headnotes
Trade Marks Act, 1999 - SS.124 & 125 -
Stay of proceedings where validity of
registration is questioned - Suit and
counter-claim
filed
only
for
permanent/prohibitory injunction and not
for infringement - validity of registration
not challenged - S.124 not attracted -
stay
of
proceedings
bad
in
law
-
Rectification Application - Proper forum -
S.125
-
Rectification
application
in
pending suit for infringement must be
filed before the High Court, not before the
Registrar - O.14 R.1 CPC - Framing of
issues - Issues framed earlier under O.14
R. 1 CPC are distinct from issues required
to be framed under S.124 - absence of
such issue fatal to stay order.
Held: Suit and counter claim being for
injunction only, not for infringement of trade
mark, provisions of S.124 of the Trade Marks
Act, 1999 were not applicable - Even if treated
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
143
as a suit for infringement, the Commercial Court
erred in staying the proceedings without
framing issue as required under S.124(1)(b)(ii)
of the Act -Rectification applications filed before
Registrar, Trade Mark, Calcutta and Delhi were
not maintainable under S.125(1), being required
to be filed before the High Court - During the
pendency, if rectification application is to be
filed, same has only been filed before the High
Court and not before the Registrar - In case it is
pending before the Registrar, he is required on
his part to transfer the same before the High
Court - Law is very well settled that only High
Court is having authority to decide the
rectification application filed under SS. 124 &
125 of Act, 1999 - Impugned order dated
6.5.2024 passed by the Commercial Court No.2,
Agra was quashed - Petition allowed - No order
as to costs. (Paras 20,21,26,27,28,29,30,31,32)
(E-7)

Case Law Cited
Umesh Kumar Gupta and another v. M/s Shree
Girraj Food Products, 2013 (2) AII WC 2023;
Patel Field Marshal Agencies & Ors. v. P.M.
Diesels Ltd. & Ors., AIR 2017 SC 5619;
Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad
&
Ors.,
2017
DHC
7479-DB;
Jagatjit
Industries Ltd. v. Intellectual Property Appellate
Board & Ors., (2016) 4 SCC 381; Nedunuri
Kameswaramma v. Sampati Subba Rao, AIR
1963 SC 884; Kannan (dead) by Lrs. v. V.S.
Pandurangam (dead) by Lrs., (2007) 15 SCC
157; Asia Match Company Pvt. Ltd. v. Deputy
Registrar of Trade Marks & GI,
2023:
MHC:5361.

List of Acts
The Trade Marks Act, 1999; Code of Civil
Procedure, 1908; Commercial Courts Act, 2015

List of Keywords
Registered
Trademark
-
injunction
-
infringement
of
trademark
-
permanent
injunction - prohibitory injunction - rectification
application - validity of registration - stay of
proceedings - framing of issues - Registrar -
counter claim - Commercial Court.

Case Arising From
Impugned order dated 6.5.2024 passed by the
learned Commercial Court No.2, Agra in Original
Suit No. 04 of 2015 (M/s Bharat Industries v.
M/s Sterling Irrigation and others).

Appearances for Parties
Advs. for the Petitioners: Prateek Kumar
Advs. for the Respondent: Ajay Kumar
Pandey, Chhaya Gupta, Sujeet Kumar

(Delivered by Hon'ble Neeraj Tiwari, J.)

1. Heard Sri Prateek Kumar, learned
counsel for the petitioners and Ms. Chhaya
Gupta, learned counsel for the respondent.

2. Present petition has been filed for
setting aside the impugned order dated
6.5.2024 passed by the learned Commercial
Court No.2, Agra in Original Suit No. 04 of
2015 (M/s. Bharat Industries vs. M/s
Sterling Irrigation and others)

3. Pleadings are exchanged between
the parties. With the consent of parties, writ
petition is being decided at the admission
stage itself.

4. Brief facts of the case are that
petitioners-defendants has published notice
in Amar Ujala on 18.6.2015 for transfer of
registered trademark. Feeling aggrieved by
that, respondent-plaintiff has filed Original
Suit No. 4 of 2015 under Section 134 of
The Trade Marks Act, 1999 (hereinafter
referred to as Act, 1999) upon which
petitioners-defendants have filed written
submission alongwith counter claim on
15.12.2015.
Thereafter,
respondentplaintiff filed reply to the counter claim on
31.5.2016. On the basis of pleadings made
by both the parties, learned trial Court vide
its order dated 22.8.2016 had framed
issues. During the pendency of suit,
petitioner-defendant has filed rectification
application on 1.8.2019 under Section 25(a)
of
Act,
1999
before
the
Registrar,
Trademark, Kolkata whereas respondent-
144 INDIAN LAW REPORTS ALLAHABAD SERIES
plaintiff
has
also
filed
rectification
application under Section 25(a) of Act,
1999 before the Registrar, Trademark,
Delhi
on
16.11.2023.
Thereafter,
respondent-plaintiff has filed Application
No.196 C on 1.3.2024 to stay the
defendants' counter claim (paper no. 20Ga)
bearing case no. 11 of 2023. Petitionerdefendant has filed reply to the said
application on 6.3.2024 and thereafter
respondent-plaintiff has also filed rejoinder
reply to the defendants' reply dated
6.3.2024
on
21.3.2024.
Learned
Commercial Court vide impugned order
dated 6.5.2024 has stayed the proceedings
of counter claim No. 11 of 2023 as well as
Original Suit No. 4 of 2015. Hence, the
present petition.

5. Learned counsel for the petitionersdefendants submitted that present suit has
not
been
filed
for
infringement
of
trademark rather it has been filed for
permanent injunction. Likewise, counter
claim
has
also
not
been
filed
for
infringement of trademark rather it was
filed for prohibitory injunction whereas
Section 124 of Act, 1999 is only applicable
in case suit is filed for infringement of
trademark, therefore, provision of Section
124 of Act, 1999 shall not be applicable in
the present case. He also pointed out that
nature of suit has to be seen from the prayer
i.e. relief clause and from perusal of the
prayer, it is apparently clear that counter
claim and suit were filed for permanent
injunction as well as prohibitory injunction
and not for infringement of trademark. In
support of his contention, he has placed
reliance upon the judgment of this Court in
the case of Umesh Kumar Gupta and
another vs. M/s Shree Girraj Food
Products reported as 2013 (2) AII WC
2023.

6. He next submitted that Section 124
of Act, 1999 is applicable for stay of
proceedings,
where
the
validity
of
registration of trade mark is questioned. In
the present case, from perusal of the
pleadings as well as prayer either in the suit
or in the counter claim, validity of
registration of trademark has not been
challenged by either side, therefore, this
provisions would also not applicable.

7. He next submitted that assuming it
not admitting, if it is the case of suit for
infringement of trademark, as per Section
of 124(1)(b)(i) of Act, 1999, if the
proceedings is pending for rectification of
the register of trademark before the
Registrar or the High Court before filing of
suit, proceedings shall be stayed till final
disposal of such proceedings. Further, as
per Section 124(1)(b)(ii), if no such
proceedings is pending and same has been
filed during the pendency of suit, In that
case, if the Court is satisfied that the plea
regarding the invalidity of registration of
trademark is prima facie tenable, Court
shall frame an issue regarding the same and
adjourn the case for a period of three
months from the date of framing the issue
in order to enable the party concerned to
apply
before
the
High
Court
for
rectification of the register. In the present
case, no issue has been framed by the
Commercial Court, while staying the
proceedings under Section 124 of Act,
1999. In support of his contention he has
placed reliance upon the judgment of Apex
Court as well as Delhi High Court in the
cases of Patel Field Marshal Agencies
(Supra) and Ors. vs. P.M. Diesels Ltd.
And others reported as AIR 2017 SC 5619
and Abbott Healthcare Pvt. Ltd. Vs. Raj
Kumar Prasad and others reported as 2017
DHC 7479-DB.
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
145

8. Learned counsel for the petitioner
further submitted that in case of suit for
infringement of registered trademark in
terms of Section 125 of Act, 1999,
rectification application can only be filed
before the High Court and not before the
Registrar,
but
in
the
present
case,
undisputedly it has been filed before the
Registrar. In support of his contention, he
has placed reliance upon the judgment of
Apex Court in the case of Jagatjit
Industries
Limited
vs.
Intellectual
Property Appellate Board and others
reported as 2016 (4) SCC 381. He lastly
submitted that in light of above facts as
well as law laid down, order impugned is
bad and liable to be set aside.

9. Per contra, Ms. Chhaya Gupta,
learned
counsel
for
the
respondent
vehemently opposed the submission and
submitted that undisputedly at the time of
filing of suit and counter claim, it was not
for infringement of trade mark rather it was
filed for injunction as earlier stated, but
after filing of rectification application, in
light of Section 29 and 30(2)(e) of Act,
1999, it shall be treated to be suit for
infringement of trade mark. She also
pointed that in light of Order 7 Rule 7 of
CPC, while deciding the nature of suit,
entire plaint is required to be seen and not
only prayer. Undisputedly, in paragraph 30
of the plaint, defendant plaintiff has
mentioned
the
word
'infringement'.
Likewise
petitioner-claimant
has
also
mentioned the word 'infringement' at least
in three paragraphs, therefore, in light of
such facts as well as legal position, suit has
to be treated for infringement of trade mark
and Section 124 of Act, 1999 would be
applicable.

10. She has also opposed the second
argument made by the learned counsel for
the petitioner and submitted that issues
were already framed much earlier on
22.8.2016 and issue nos. 9 and 16 are
relevant for this purpose, therefore, there is
no occasion for the Court to frame the issue
again. She also submitted that even if
issues are not framed, suit cannot be
dismissed in light of Order 14 Rule 1 of
CPC. In support of his contention, she has
placed reliance upon the judgment of Apex
Court
in
the
cases
of
Nedunuri
Kameswwaramma
vs.
Sampbba
Rao
reported in 1963 0 AIR (SC) 884 and
Kannan (dead) by Lrs. And other vs. V.S.
Pandurangam (dead) by Lrs and others
reported as (2007) 15 SCC 157.

11. Demolishing the third argument of
learned counsel for the petitioner, she
submitted that undisputedly rectification
application has to be filed before the High
Court, but in case it has been filed before
the Registrar and if Registrar thinks fit, he
may refer the application at any stage of
proceedings
before
the
High
Court,
therefore, once rectification application
may be sent to High Court at any stage,
argument of learned counsel for the
petitioner is not sustainable. In support of
her contention, she has placed reliance
upon the judgment of Madras High Court
in the case of Asia Match Company Pvt.
Ltd., vs Deputy Registrar of Trade Marks
& GI, Trade Marks Registry, Intellectural
Property Office Building G.S.T. Road,
Guindy
and
another
reported
as
2023:MHC:5361.

12. In the rejoinder argument, learned
counsel for the petitioner reiterated that it is
not the suit for trade mark rather it was
filed for prohibitory injunction and mere
filing of any application under any
provision of law before the Commercial
Court, that can not change the nature of
146 INDIAN LAW REPORTS ALLAHABAD SERIES
suit. So far as framing of issues on
22.8.2016 is concerned, he pointed out that
those issues were framed after filing of
written submission under Order 14 Rule 1
of CPC. In the present case, issues has to be
framed by the Commercial Court after
filing of application under Section 124 of
Act, 1999. Both the issues framed under
Order 14 Rule 1 of CPC and Section 124 of
Act, 1999 are entirely different, therefore,
issue so framed earlier is having no concern
with the issue required to be framed under
Section 124 of Act, 1999. So far as third
argument of learned counsel for the
respondents is concerned, he submitted that
undisputedly Registrar may refer the
application before the High Court under
Section
125(2)
of
Act,
1999,
but
undisputedly, till date reference has not
made to the High Court, therefore,
rectification
application
itself
is
not
maintainable.

13. I have considered the rival
submissions advanced by the learned
counsel for the parties and perused the
record as well as judgment relied upon.

14. The basic issue before this Court is
about the applicability and interpretation of
Sections 124 & 125 of Act, 1999. For ready
reference Sections 124 & 125 are being
quoted below:-

"124. Stay of proceedings where
the validity of registration of the trade mark
is questioned, etc.- (1) Where in any suit
for infringement of a trade mark-

a) the defendant pleads that
registration of the plaintiff's trade mark is
invalid; or

(b) the defendant raises a defence
under clause (e) of sub-section (2) of
section 30 and the plaintiff pleads the
invalidity of registration of the defendant's
trade mark,

the court trying the suit (hereinafter
referred to as the court), shall,-

(i)
if
any
proceedings
for
rectification of the register in relation to
the plaintiff's or defendant's trade mark
are pending before the Registrar or the
Appellate Board, stay the suit pending the
final disposal of such proceedings;

(ii) if no such proceedings are
pending and the court is satisfied that the
plea regarding the invalidity of the
registration of the plaintiff's or defendant's
trade mark is prima facie tenable, raise an
issue regarding the same and adjourn the
case for a period of three months from the
date of the framing of the issue in order to
enable the party concerned to apply to the
Appellate Board for rectification of the
register.

(2) 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 (1) within the time
specified therein or within such extended
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.

(3) If no such application as
aforesaid has been made within the time so
specified or within such extended time as
the court may 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.
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
147

(4) The final order made in any
rectification proceedings referred to in subsection (1) 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.

(5) The stay of a suit for the
infringement of a trade mark under this
section shall not preclude the court from
making any interlocutory order (including
any order granting an injunction directing
account to be kept, appointing a receiver or
attaching any property), during the period
of the stay of the suit.

125. Application for rectification
of register to be made to Appellate Board
in certain cases.-

(1)
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 (e) of subsection (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 of the trade
mark concerned shall be determined only
on an application for the rectification of the
register and, notwithstanding anything
contained in section 47 or section 57, such
application shall be made to the Appellate
Board and not to the Registrar.

2) Subject to the provisions of
sub-section (1), where an application for
rectification of the register is made to the
Registrar under section 47 or section 57,
the Registrar may, if he thinks fit, refer the
application at any stage of the proceedings
to the Appellate Board.

15. First argument of learned counsel
for the parties is about the nature of suit, as
to whether it is suit for infringement of
trade mark or not. From the perusal of the
prayer of the suit as well as counter claim,
it is apparently clear that both are only for
permanent injunction as well as prohibitory
injunction and opposite to that learned
counsel for the respondents relying upon
the Order VII Rule 7 of CPC, submitted
that nature of suit has to be seen from the
plaint not from the prayer. From the
headlines of Section 124 of Act, 1999, it is
clear that to invoke the provision of Section
124 of Act, 1999 there must have been
challenge the validity of registration of
trade mark. In the present case, it is
apparently clear that nothing has been
challenged in the suit as well as counter
claim rather injunctions have only been
sought.

16. I have perused the Order VII Rule
7 of CPC, which is being quoted
hereinbelow:-

" "7. Relief to be specifically
stated.-Every plaint shall state specifically
the relief which the plaintiff claims either
simply or in the alternative, and it shall not
be necessary to ask for general or other
relief which may always be given as the
Court may think just to the same extent as if
it had been asked for. And the same rule
shall apply to any relief claimed by the
defendant in his written statement."

17. From perusal of the same, it is
apparently clear that relief clause in the
plaint should be specific either simply or
alternative in the plaint as well as counter
claim. It does not say to go through the
148 INDIAN LAW REPORTS ALLAHABAD SERIES
pleadings for ascertaining the nature of suit
rather it only clarifies that relief clause
should be specific.

18. I have also perused the prayer of
the plaint as well as counter claim. Same
are being quoted hereinbelow:-

Prayer of Plaint:-

"A. The defendants be restrained
by means of permanent injunction from
using the trade name/ trade mark 'Bharat
Industries' or any other identical or
deceptively similar names in their business
or
their
products
in
any
manner
whatsoever
either
in
making
advertisements of their business or by
printing or putting or affixing levels or
otherwise
the
above
name
'Bharat
Industries' on their polythene bags, boxes,
containers in which they sell their products
or on the products and the defendants be
restrained from passing off their goods as
those of the plaintiffs.

B. The defendants be directed to
deliver up for description all the polythene
bags, boxes, containers & levels, etc. on
which the name 'Bharat Industries' or other
identical or deceptively similar names have
been used by the defendants and to remove
such names also from their products and if
they fail to do so, such polythene bags,
containers, levels & products, ete. of the
defendants be confiscated & destroyed.

C. Costs of the suit be awarded to
the plaintiff as against the defendants.

D. Any other relief, which the
court thinks fit, be also granted to the
plaintiff

Prayer of counter claim:-

"A. That a decree of permanent
prohibitory injunction be passed in favour
of the defendants are against the plaintiff,
restraining the plaintiff from using the
trade mark 'Bharat' or identical &
deceptively similar trade mark including
'Bharat Industries' or 'Bharat Industries
ESTD 1972' on their products in any
manner whatsoever.

B. That the plaintiff be ordered to
render true & proper accounts of profits
earned by it during last three years by use
of trade m ark 'Bharat Industries or
'Bharat Industries ESTD 1972' and after
proper calculation, decree be passed in
favour of the defendants against the
plaintiff. The remaining court fees on more
than Rs. 10 Lakh will be paid in execution
side.

C. That the plaintiff be ordered to
deliver/destroy all the Labels, Stickers,
Letter Heads, etc. containing Mark 'Bharat
Industries or 'Bharat Industries ESTD
1972'.

D. That the costs of the counter
claim be awarded to the defendants as
against the plaintiff.

E. That any other relief; which
the Hon'ble Court may deem fit & propert
in the circumstances of the counter claim,
be also granted to the defendants as
against the plaintiff."

19. From perusal of the prayers of the
plaint as well as counter claim, it is clear
that there is no prayer questioning the
validity of registration of trade mark rather
it has been filed only for injunction. The
identical issue has been considered by this
Court in the judgment of Umesh Kumar
Gupta (Supra). Relevant paragraph Nos.
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
149
20, 21 and 29 of the said judgment are
quoted below:-

"20. The entire reading of the
plaint
and
relief
claimed
therein
demonstrates that it is a suit for decree of
permanent
injunction
restraining
the
defendants to the suit from marketing their
Namkeen
products
under
the
name
"Chacha
Aur
Chaudhary"
which
is
identical and deceptively similar to the
registered
trademark
of
the
plaintiff
"Chacha Chaudhary".

The relief clause as contained in
the plaint reads as under:-

v&;g
fd
tfj;s
fu"ks/kk
LFkkbZ]
izfroknhx.k ,oa muds ,tsUVksa] lgk;dksa ,oa eky
fodzsrkvksa dks oftZr fd;k tkos fd oks oknh ds uedhu
mRikn pkpk pkS/kjhß ds iSd ,oa iSdst ls feyrs
tqyrs ,oa fMlSfVoyh uedhu mRikn Þpkpk vkSj
pkS/kjhß ds iSd ,oa iSdst es cukus vkSj cspus rFkk
oknh ds mDr mRiknks dks vius Nne mRikn ls ikflax
vkQ djus ls ,oa oknh ds VsaM iathdj.k vf/kdkjks es
dksbZ Hkh gLr{ksi djus ls ckt jgsA

c&;g fd izfroknhx.k dks funsZ'k fn;k
tkos fd oks oknh ds uedhu mRikn pkS/kjhß ls
feyrs tqyrs ,oa fMlSfIVoyh flfeyj vkSj pkS/kjhß
ls leLr Hkjs o [kkyh ikmp muds fMCcs rFkk mUgs
cukus ds lEcU/k es iz;qDr leLr eky eSVsfj;y ,oa
LVs'kujh oknh ds gokys dj ns gj lwjr dkflj jgus
mudk udyh o Nne eky vkSj eSVsfj;y tcr fd;k
tkdj oknh dks gLrxr djk;k tkosA

21. The plaintiff in the relief
clause has clearly asked for the passing off
the goods and services and an injunction in
that regard.

29. In the totality of the above
facts and circumstances, notwithstanding
the other reasons recorded by the court
below in rejecting the application under
Section 124 of the Act, I am of the opinion
that as the suit in question is not one for
infringement of the trademark, it is not
liable to be stayed in exercise of power
under Section 124 C.P.C."

20. From perusal of the aforesaid
judgment, it is clear that nature of suit has
to be ascertained from the prayer and in
light of prayer of suit and counter claim,
there is no doubt that it has been filed for
injunction only. Even after going through
the contents of plaint and counter claim,
not a single word has been stated
questioning the validity of registration of
trade mark, therefore, this Court is of the
view that suit in question is not for the
infringement of trade mark, therefore,
Section 124 of Act, 1999 is not applicable.
In light of such fact, stay of proceedings is
also bad and liable to be set aside.

21. Now coming to the second
argument, treating this case as suit for
infringement
of
trade
mark.
Section
124(1)(b)(I) of Act, 1999 clearly provides
that in case at the time of filing of suit, any
proceedings for rectification of register of
plaintiff defendant's trade mark is pending
before the Registrar or the High Court,
proceedings shall be stayed. In the present
case, at the time of filing of suit,
undisputedly no such proceedings was
pending, therefore, this would not be
applicable. Now coming to the Section
124(1)(b)(II) of Act, 1999, here again it is
undisputed that during the pendency of suit,
rectification application has been filed by
both the parties i.e. plaintiff and defendant,
therefore, Section 124(1)(b)(II) would also
not applicable in the present case, which
says that in case initiation of such
proceedings, it is required on the part of
Court to frame issues and stay the
proceedings for three months to enable the
party concerned to apply before the Court
for rectification of register. Once the
150 INDIAN LAW REPORTS ALLAHABAD SERIES
application 196-C was filed before the
Commercial Court, it is also required on
the part of Court that after taking
cognizance of rectification proceedings
pending before the Registrar, issues should
have been framed prior to staying the
proceedings, but undisputedly no issues
have been framed. Therefore, argument of
learned counsel for the respondents is not
sustainable, which refers about the framing
of issue vide order dated 22.8.2016.

22. I have perused the order of
Commercial Court dated 22.8.2016 in
which issues were framed under Order 14
Rule 1 of CPC after filing of written
submission.
Those
are
issues,
while
deciding the same, Court is required to
return his findings. So far as issue, which is
to be framed under Section 124 of Act,
1999 is entirely different. It has to be
framed only after taking cognizance of
proceedings of rectification application and
Court while framing the issues is not
supposed to decide the same, but only stay
the proceedings. In fact, framing of issue is
only for the purpose of staying the
proceedings. Therefore, once it is brought
into
knowledge
of
Court
through
application No.196-C, it is mandatory on
the part of Court to frame issues first and
then stay the proceedings, but undisputedly
issues have not been framed. This point has
also considered by the Apex Court in the
matter of Patel Field Marshal Agencies
(Supra). Relevant paragraph of the said
judgement is being quoted hereinbelow:-

"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 right to an aggrieved
party to seek rectification of a trade mark.
However, 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 under 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 invalidity ought to be
framed in the 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 with regard to
rectification will no longer survive.

23. The Delhi High Court in the matter
of Abbott Healthcare Pvt. Ltd. (Supra) has
followed the judgment of Apex Court in the
matter of Patel Field Marshal Agencies
(Supra). Relevant paragraph of the said
judgment is quoted hereinbelow:-

"28. From the aforesaid analysis
of the dicta of the Supreme Court in Patel
Field Marshal Agencies supra, my view is
re-enforced that without an issue having
been urged and framed, this Court cannot
in exercise of powers under Section 124
stay the proceedings in the suit as is the
want of the plaintiff. It is only after an issue
qua invalidity of registration is framed that
the legislature has provided for stay of
proceedings in the suit to avoid the Civil
Court as well as IPAB both adjudicating
the
same
question
and
to
avoid
duplicity/multiplicity. To the said extent,
Section 124 is akin to Section 10 of the
CPC albeit that even if proceedings before
the IPAB have not been instituted prior to
the institution of the suit, IPAB is given
7 All. M/S Sterling Irrigations & Ors. Vs. Ms Bharat Industries
151
supremacy in deciding the question of
rectification.

24. I have also perused the judgment
of Apex Court in the cases of Nedunuri
Kameswwaramma (Supra) and Kannan
(dead) (Supra) placed by the learned
counsel for the respondent. Relevant
paragraph of the aforesaid judgments are
being quoted hereinbelow:-

Nedunuri
Kameswwaramma
(Supra):-

"6.On the first point, we do not
see how the suit could be ordered to be
dismissed, for, on the facts of the case, a
remit was clearly indicated. The appellant
had already pleaded that this was jeroyti
land, in which a patta in favour of her
predecessors existed, and had based the
suit on a kadapa, which showed a subtenancy. It was the respondent who had
pleaded that this was a Dharmila inam and
not jeroyti land, and that he was in
possession of the kudiwaram rights though
his predecessors for over a hundred years,
and had become an occupancy tenant.
Though the appellant had not mentioned a
Karnikam service inam, parties well
understood that the two cases opposed to
each
other
were
of
Dharmila
Sarvadumbala inam as against a Karnikam
service inam. The evidence which has been
led in the case clearly showed that the
respondent attempted to prove that this was
a Dharmila inam and to refute that this was
a Karnikam service inam. No doubt, no
issue was framed, and the one, which was
framed, could have been more elaborate ;
but since the parties went to trial fully
knowing the rival case and led all the
evidence not only in support of their
contentions but in refutation of those of the
other side, it cannot be said that the
absence of an issue was fatal to the case, or
that there was that mis-trial which vitiates
proceedings. We are, therefore, of opinion
that the suit could not be dismissed on this
narrow ground, and also that there is no
need for a remit, as the evidence which has
been led in the case is sufficient to reach
the right conclusion. Neither party claimed
before us that it had any further evidence to
offer. We therefore, proceed to consider the
central point in the case, to which we have
amply referred already."

Kannan (dead) (Supra)

11. By a series of decisions of this
Court it has been settled that omissions to
frame an issue as required under Order
XIV Rule 1 C.P.C. would not vitiate the
trial in a suit where the parties went to trial
fully knowing the rival case and led
evidence in support of their respective
contentions and to refute the contentions of
the
other
side
vide
Nedunuri
Kameswaramma vs. Sampati Subba Rao 4,
AIR 1963 SCC 884."

25. From perusal of the judgment, it is
apparently clear that issue so referred
hereinabove, having no concern with
Section 124 of Act, 1999 rather it refers
issues framed under Order 14 Rule 1 of
CPC. As discussed earlier, issues framed
under Section 124 of Act, 1999 and under
Order 14 Rule 1 of CPC are entirely
different and having different meaning,
therefore, this would not come into the
rescue
of
learned
counsel
for
the
respondents.

26. Therefore, in light of facts as well
as provisions of law laid down by the Court
even in case suit is treated to be suit for
infringement of trade mark, issues have not
been framed as required under Section
152 INDIAN LAW REPORTS ALLAHABAD SERIES
124(1)(b)(II), therefore, order is bad on this
ground and liable to be set aside.

27. Now the other argument made by
the learned counsel for the parties about the
filing of rectification application for
register of trade mark before the High
Court as provided Under Section 125 of
Act, 1999. From perusal of Section 125 of
Act, 1999, it is apparently clear that it has
to be filed before the High Court and not
before the Registrar. In the present case, it
is also undisputed between the parties that
applications were filed before the Registrar,
Trade Mark, Calcutta & Delhi, which are
having no authority in light of Section 125
of Act, 1999. Therefore, such filing is not
in accordance with law and applications are
not maintainable.

28. So far section 125(2) is concerned,
in case applications has been filed before
the Registrar for trade mark as the present
case is, it is required on the part of
Registrar to refer the application to High
Court . Here again undisputedly, same has
not been referred to the High Court,
therefore, once the application is pending
before
the
Registrar,
those
are
not
maintainable in terms of Section 125 of
Act, 1999. Therefore, in such facts as well
as provision of law, proceedings cannot be
stayed under Section 124 of Act, 1999.

29. I have perused the judgment of
Apex Court in the matter of Jagatjit
Industries Limited (supra) relied by
learned
counsel
for
the
petitioners.
Relevant paragraph of the said judgment is
being quoted hereinbelow:-

"23. The scheme under Section
124
is
of
great
importance
in
understanding the scope of Section 125. It
is clear that where proceedings for
rectification of the register are pending
before the filing of the suit for infringement
in which the defendant pleads that the
registration of the plaintiff's trademark is
invalid, such proceedings may be made
either before the Registrar or before the
Appellate Board, in view of Section 57(1)
and (2) of the Act. But, if rectification
proceedings are to be instituted after the
filing of such suit for infringement in which
the
defendant
takes
the
plea
that
registration of the plaintiff's trademark is
invalid, then rectification proceedings can
only be taken before the Appellate Board
and not before the Registrar.

30. I have also perused the judgment
of Madras High Court in the case of Asia
Match Company Pvt. Ltd. (Supra) placed
by the learned counsel for the respondent.
Relevant paragraphs of the said judgments
are being quoted hereinbelow:-

5. This case hinges on the
interpretation of Section 125 of the Trade
Marks Act. Section 125 is set out below:

125. Application for rectification
of register to be made to High Court in
certain cases:

(1)
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 (e) of sub~section (2)
of section 30 and the plaintiff questions the
validity of the registration of the defendants trade mark, the issue as to the validity of
the
registration
of
the
trade
mark
concerned shall be determined only on an
application for the rectification of the
7 All. Sachin Kumar Verma @ Sachin Kumar Soni @ Pawan Soni Vs. State of U.P. & Anr.
153
register and, notwithstanding anything
contained in section 47 or section 57, such
application shall be made to the High
Court and not to the Registrar.

(2) Subject to the provisions of
sub~section (1), where an application for
rectification of the register is made to the
Registrar under section 47 or section 57,
the Registrar may, if he thinks fit, refer the
application at any stage of the proceedings
to the High Court.

Sub Section (1) of Section 125
applies in two situations. The first of these is
when the defendant in a suit for infringement
questions the validity of registration of the
plaintiff-s trade mark. The second situation is
where the defendant in a suit for infringement
raises a defence on the basis of clause (e) of
sub~section (2) of Section 30 by relying on
the registration of such defendant. In both the
above situations, if a rectification petition
were
to
be
filed
subsequently,
such
rectification petition would only lie before the
High Court and not before the Registrar.
Therefore, learned counsel for the 2nd
respondent is correct in submitting that
sub~section (1) of Section 125 applies when
the rectification petition is filed subsequent to
the civil suit. The provision clearly prescribes
that the rectification petition shall only be
filed before the High Court in that situation.

8.
In a
situation
where
the
rectification petition was filed prior to the
institution of the civil suit, sub~section (2) of
Section 125 undoubtedly empowers the
Registrar to transfer the application at any
stage of the proceedings to the High Court. By
referring to the pending civil suit, the petitioner
made such request to the Registrar in
September 2023. Especially in view of the fact
that the final order made in the rectification
proceeding is binding on the civil court in terms
of sub~section (4) of Section 124 of the Trade
Marks Act, in situations where a civil suit is
pending, it is appropriate that the Registrar
exercises
discretionary
power
under
sub~section (2) of Section 125 by acceding to a
request for transfer. Therefore, this is a fit case
to direct the Registrar to transfer the
rectification petition.

31. From perusal of the both the
judgments, it is clear that during the pendency,
if rectification application is to be filed, same
has only been filed before the High Court and
not before the Registrar. Not only this, in case it
is pending before the Registrar, he is required
on his part to transfer the same before the High
Court. Law is very well settled that only High
Court is having authority to decide the
rectification application filed under Sections
124 & 125 of Act, 1999.

32. Therefore, under such facts and
circumstances of the case as well as law laid
down by the Apex Court as well as this Court,
impugned order dated 6.5.2024 is not
sustainable and hereby quashed. Petition is
allowed.

33. No order as to costs.
----------
(2025) 7 ILRA 153
ORIGINAL JURISDICTION
CRIMINAL SIDE
DATED: LUCKNOW 07.07.2025

BEFORE

THE HON'BLE SUBHASH VIDYARTHI , J.

Application U/S 482 No. 2141 of 2025