Role of Trial Courts in the Cases of Rectification Petitions under Section 124 of Trade Marks Act, 1999

Role of Trial Courts in the Cases of Rectification Petitions under Section 124 of Trade Marks Act, 1999The Court’s decision in Lotus Organic Care vs. Aadhar Products Pvt. Ltd. clarifies the role of trial courts when assessing applications under Section 124 of the Trademark Act, 1999. By focusing on the prima facie validity of the petitioner’s pleadings, the Court ensures a fair and efficient adjudication process, balancing the rights of both parties involved in trademark disputes.


In the present case, a writ petition was filed against the order of learned Additional District and Sessions Judge, Mawli, District Udaipur, where the petitioner (Lotus Organic Care) of the present petition filed an application under Section 124 of the Trademark Act, 1999 for staying the suit proceedings on the ground that the petitioner proposed to file a rectification application against the Trademarks [ (Registration no.:1961814) &  (Registration no.: 2551769)] of the respondent of the present petition, which was rejected and dismissed. This came after the respondent of the present petition filed a suit of infringement and passing off against the petitioner of the present case.

Contentions of the Petitioner

The petitioner argued that the trial court failed to assess the prima facie validity of their submissions, both in the written statement and the application under Section 124. They contended that the Court erred in not acknowledging the potential invalidity of the respondent’s trademark, as raised in their defence.

Contentions of the Respondent

The respondent opposed the petitioner’s claims, asserting that the trial court adequately addressed the issue and concluding that the petitioner failed to establish the prima facie validity of their arguments. They argued that the petitioner’s submissions were insufficient to support the claim of trademark invalidity under Section 124.

They also argued that Section 124 is applicable only in cases where a suit for infringement of the trademark is under consideration. In the present case, since the plaintiff preferred a suit for infringement as well as passing off, they prayed that the trial court may be allowed to proceed with the infringement/passing off suit proceedings on the issue framed with respect to the prayer for passing was concerned.

Observations by the Court

The Court examined Section 124(1)(ii) of the Trademark Act, emphasising that in pending suits, the trial court must prima facie satisfy itself regarding the alleged invalidity of the trademark in question. It was noted that the trial court correctly considered the petitioner’s pleadings but concluded that the learned trial court was not required to measure the sufficiency or insufficiency of the evidence or other factors for adjudicating the factum of the success or failure of the rectification application. Since the rectification proceedings were required to be undertaken at a different forum and the parameters for the same would stand on different footings, the learned trial court was only required to record prima facie satisfaction with respect to the pleadings made in support of the invalidity of the trademark of the plaintiff.

Decision of the Court

The Court was satisfied with the petitioner’s pleadings and found them sufficient to show that the application preferred under Section 124 was required to be accepted. The writ petition was allowed, the order of the trial court was quashed, and infringement proceedings were stayed. The petitioner is allowed to file the rectification application as per law.


The Court’s decision underscores the procedural aspect of Section 124 applications. It clarifies that the trial court’s role is not to delve into the merits of the rectification application itself but to determine whether the petitioner’s pleadings prima facie support the claim of trademark invalidity. This ruling reaffirms the principle that the sufficiency of evidence and other factors related to rectification proceedings are not within the trial court’s purview at this stage.

Authors: Manisha Singh and Ruhi Kapoor

First Published by: Mondaq here