CR No.6252 of 2023 1

IN THE HIGH COURT OF PUNJAB AND HARYANA

AT CHANDIGARH

Reserved on 9

th

of December, 2025

Pronounced on 22

nd

of January, 2026

Uploaded on 22

nd

of January, 2026

Whether only operative part of the judgment is pronounced? No

Whether full judgment is pronounced? Yes

CR No.6252 of 2023

Sanjeev Kumar Juneja and another ....Petitioners

Versus

Terrace Pharmaceuticals Pvt. Ltd. .....Respondent

CORAM : HON'BLE MR. JUSTICE PANKAJ JAIN

Present : Mr. Amit Jhanji, Senior Advocate with

Mr. Shashank Shekhar Sharma, Advocate,

Mr. Sahil Sehrawat, Advocate and

Mr. Mehtab Singh Dhaliwal, Advocate

for the petitioners.

Ms. Aparna Jain, Advocate

for the respondent.

PANKAJ JAIN, J.

Defendants are in revision aggrieved of order dated 14.09.2023

(Annexure P-11) whereby Trial Court framed additional issue regarding

validity of Trade Mark, but dismissed the application filed by the petitioner

under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as

'1999 Act') praying for grant of time to approach appropriate forum.

2. Plaintiff filed suit claiming ownership over registered Trade

Mark 'ROOP MANTRA' and claimed infringement of its Trade Mark by the

CR No.6252 of 2023 2

defendants and also alleged passing off.

3. As per the plaint, plaintiff is a company incorporated under

Indian Companies Act and is engaged in the business of manufacturing and

selling medicinal & pharmaceutical preparations, cosmetics and other allied

goods. Plaintiff claims to be a registered proprietor of trade mark

‘MANTRA’ under Registration No.1867357, dated 25.09.2009 in respect of

medicines under 1999 Act. Plaintiff claims of having applied for

registration of the said ‘MANTRA’ formative trade mark for various other

products and claims that by virtue of prior, long, continuous, extensive and

exclusive use, the mark has become distinctive with their products. As per

the plaintiff, trade mark ‘MANTRA’ and ‘MANTRA’ formative marks have

become well recognized trade marks in respect of the goods owing to

excellent quality produced by them. Plaintiff thus claims sole and exclusive

proprietary rights over the same.

3.1. Plaintiff alleges that in the month of 2014, they came across the

trade mark applications filed by the defendant for registration of trade marks

‘MEMORY MANTRA’ and ‘KESH MANTRA’. The plaintiff immediately

filed opposition to the registration of the said trade mark applications. The

applications were filed by defendant No.1 as 'proposed to be used' on their

respective date of applications without launching any goods in market.

However, in the month of November, 2017, the plaintiff came to know that

defendant has started selling infringing goods by user ‘MANTRA’. The

Plaintiff accordingly filed plaint praying for following relief(s):

"a). Pass a decree for permanent injunction restraining the

defendants by themselves, their proprietor/ dealers, partners/

CR No.6252 of 2023 3

assigns-in-business, distributors, agents and all other persons acting

for and on their behalf from manufacturing, selling, offering for

sale or otherwise dealing in 'Medicines including Ayurvedic, herbal

& pharmaceutical, preparations, dietetic substances adapted for

medical use, cosmetics, soaps, perfumery, essential oils, cosmetics,

hair lotions' & other similar/allied & cognate/associated goods

under the infringing trademark "ROOPMANTRA" either as a

standalone mark and/or with some prefix/suffix/mark/label, said

infringing "MANTRA" suffixed/formative marks namely

"MEMORY MANTRA", "FACE MANTRA", "KESH MANTRA

NAARI MANTRA", "FAIRMANTRA", "PAACHAN MANTRA",

"SHAPE MANTRA", "ORTHO MANTRA", "COUGH

MANTRA", "NETRA MANTRA", "DANT MANTRA",

"MUSCLE MANTRA", "EYE MANTRA", "MADHU

MANTRA", "MASS MANTRA", "PAIN MANTRA", "SWEET

MANTRA", "SAUNDARYA KA AYURVEDIC MANTRA",

"SMILE MANTRA", "PACHAN MANTRA", "COW MANTRA",

"AROGYA MANTRA", MANTRA", "FRAGRANCE

"LIVOMANTRA", "DR.JUNEJA'S ROOP MANTRA" and I or

from using any other similar/deceptively similar trade mark thereto

in respect of identical/similar/allied cognate/associated goods,

which may constitute infringement of registered trade mark

"MANTRA" of the plaintiff under registration no. 1867357 in any

manner; &

b) Pass a decree for permanent injunction restraining the

defendants by themselves, their proprietor/ dealers, partners/

assigns-in-business, distributors, agents and all other persons acting

for and on their behalf from manufacturing, selling, offering for

sale or otherwise dealing in 'Medicines including Ayurvedic, herbal

& pharmaceutical preparations, dietetic substances adapted

formedical use, cosmetics, soaps, perfumery, essential oils,

cosmetics, hair lotions' & other similar/allied & cognate associated

goods under the infringing trademark "ROOP MANTRA" either as

a standalone mark and/or with some prefix/suffix/mark/label, said

infringing "MANTRA” suffixed/formative marks namely

"MEMORY MANTRA", "FACE MANTRA", "KESH MANTRA",

NAARI MANTRA", "FAIR MANTRA", "PAACHAN

CR No.6252 of 2023 4

MANTRA", "SHAPE MANTRA", "ORTHO MANTRA",

"COUGH MANTRA", "NETRA MANTRA", "DANT MANTRA",

"MUSCLE MANTRA", "EYE MANTRA", "MADHU

MANTRA", "MASS MANTRA", "PAIN MANTRA", "SWEET

MANTRA", "SAUNDARYA KA AYURVEDIC MANTRA",

"SMILE MANTRA", "PACHAN MANTRA", "COW MANTRA",

"AROGYA MANTRA", "FRAGRANCE MANTRA",

"LIVOMANTRA", "DR.JUNEJA'S ROOP MANTRA" and I or

from using any other similar/deceptively similar trade mark thereto

in respect of identical/similar/allied & cognate/associated of goods,

which may constitute violation proprietory rights of the plaintiff

with respect to its prior used, reputed and well-recognized

trademarks "MANTRA", "BREASTIL MANTRA", "NEEMANI

MANTRA","VIRGIN FRESH MANTRA" & "KESH MANTRA"

in any manner;

c) Pass a decree for permanent injunction restraining the

defendants by themselves, their proprietor/ dealers, the partners/

assigns-in-business, distributors, agents and all other persons acting

for and on their behalf from passing off their goods as the goods of

the plaintiff in any manner;

d) Pass an order for destruction of all the blocks, dies, finished

goods, semi-finished goods, packing box/cartons, packing material,

bills, advertisements, stationery and other incriminating material of

the defendant bearing infringing/violating trademark "ROOP

MANTRA" either as a standalone mark and or with some

prefix/suffix/mark, said infringing "MANTRA" suffixed/formative

marks namely "MEMORY MANTRA", "FACE MANTRA",

"KESH MANTRA", NAARI MANTRA", "FAIR"MANTRA",

"PAACHAN MANTRA", "SHAPE MANTRA", "ORTHO

MANTRA", "COUGH MANTRA", "NETRA MANTRA", "DANT

MANTRA", "MUSCLE MANTRA", "EYE MANTRA",

"MADHU MANTRA", "MASS MANTRA", "PAIN MANTRA",

"SWEET MANTRA", "SAUNDARYA KA AYURVEDIC

MANTRA", "SMILE MANTRA", "PACHAN MANTRA", "COW

MANTRA", "AROGYA MANTRA, "FRAGRANCE MANTRA",

"LIVOMANTRA", "DR JUNEJA'S ROOP MANTRA" and/or any

CR No.6252 of 2023 5

other similar/deceptively similar trade mark thereto in any manner;

e) Pass a decree for permanent injunction thereby restraining

the defendants by themselves, their proprietor/partners/ assigns-in-

business, dealers, distributors, agents and all other persons acting

for and on their behalf from operating the infringing website

www.roopmantra.com & further transfer the said website

www.roopmantra.com' to the plaintiff

f) Pass a decree for the sum of Rs. 20,01,000/- (Rs. Twenty Lacs

one thousand only) in favour of the plaintiff and against the

defendants as damages;

g) An order for cost of the proceedings be also passed in favour of

the plaintiff and against the defendants;

h) Any other relief(s) as this Hon'ble Court may deem fit and

proper under the facts and circumstances of the case be also passed

in favour of the plaintiff and against the defendants."

4. Defendant claims that trade mark certificate stands issued in his

name on 26.04.2018 and the opposition initiated by plaintiff, stands

abandoned. The subsequent rectification filed by plaintiff on 08.05.2018 is

pending before the registrar.

5. Suit was contested by defendant filing written statement

denying the allegations of misrepresentation and deception. The defendant

preferred application under Order VII Rule 11 CPC seeking rejection of the

plaint. The same was dismissed. The defendant preferred revision petition.

The same was also dismissed by this Court vide order dated 22.07.2022. The

present application was filed by the petitioner/defendant under Section 124

of the 1999 Act seeking leave of the Court to file rectification petition

against the registration of the plaintiff's trade mark and seeking stay of the

CR No.6252 of 2023 6

suit. Trial Court vide impugned order, dated 14.09.2023 framed specific

Issue 7A w.r.t. validity of plaintiff's trade mark “MANTRA” but denied the

prayer made by the defendant seeking stay of suit, observing as under:

7. From the submissions of the learned counsel for the parties

and from the perusal of the file, it is clear that the plaintiff has filed

the suit. The defendants preferred an application under Order 7

Rule 11 of CPC. That application was dismissed. It is an admitted

fact that the Hon’ble High Court also dismissed the revision against

the said order. Now the defendants moved an application under

Section 124 of the Trade Mark Act read with Section 151 of the

CPC. Section 124 of the Trade Mark Act reads as under:-

Section 124 of Trademarks Act, 1999 is a unique provision

which provides for stay of suit involving trademarks

infringement, in certain situation. This provision pertain to

Suit pertaining to Trademark Infringement as the opening

word of this provision clearly indicates that.

Under Section 124 of the Act, it is provided that defendant

can raise a defence under Clause E Sub section (2) of Section 30

and the plaintiff pleads the invalidity of the Registration of the

defendants Trade Mark.

Section 30 (2) (e) of the Trade Mark Act reads as under:-

(e) the use of a registered trade mark, being one of two or

more trade marks registered under this Act which are

identical or nearly resemble each other, in exercise of the

right to the use of that trade mark given by registration

under this Act.

This Court has already framed the issues, the application

under Section 124 of the Trade Marks Act, 1999 is filed at a

belated stage but this Court is of the view that in the interest of

justice, the issues are re-framed as under:-

7.A Whether the Trade Mark of the plaintiff’s ‘MANTRA’ is

invalid ? OPR

Above said issue should be added in the issues already

framed on 02.02.2023. Accordingly, the present application

dismissed and disposed of. The authorities cited by the learned

counsel for the applicant/defendants are not applicable to the given

CR No.6252 of 2023 7

facts of the present case. Now case is adjourned to 30.09.2023 for

evidence.

6. Ld. Senior Counsel appearing for the petitioners has assailed the

impugned order, submitting that even though the Court found that the

petitioner has raised a valid issue regarding validity of the registration of

trade mark of the plaintiff, yet has not stayed the suit as per the mandate of

Section 124 of 1999 Act. He claims that the entire approach of the Trial

Court is in teeth of the mandate of Section 124 of the 1999 Act. Thus the

impugned order needs to be modified to the extent that the suit be stayed.

He submits that order if allowed to stand, shall defeat the very objective of

Section 124 of the 1999 Act. The same may lead to an absurd situation and

shall undermine the binding effect of final orders passed in rectification

proceedings. He submits that by framing additional issue regarding validity

of the trade mark of the plaintiff, the Trial Court has tried to clutch upon the

jurisdiction not vested in it. The Trial Court clearly stands denuded of the

authority or jurisdiction to independently proceed to examine the aspect of

validity of the trade mark. The same can only be tested either before the

Registrar or the High Court. In order to hammer-forth his submission, he

relies upon Division Bench judgment of Delhi High Court rendered in the

case of Mr. Amrish Aggarwal Trading as M/s Mahalaxmi Product vs.

M/s Venus Home Appliances Pvt. Ltd and another, CO (COMM.IPD-

TM) 258/2022 dated 17.05.2024.

7. Per contra, Ms. Aparna Jain, counsel representing the

respondent/plaintiff submits that the Trial Court has rightly dismissed the

CR No.6252 of 2023 8

application filed by the defendant, under Section 124 of the 1999 Act

seeking stay of the suit as the application is not bona fide. Suit was filed in

the year 2018. The defendant/petitioner has not allowed the same to proceed

beyond the stage of framing of issues. Earlier an application was filed under

Order VII Rule 11 CPC seeking rejection of plaint. Application was

dismissed by the Trial Court. Revision petition preferred by the petitioner,

also stands dismissed. Thereafter, present application was filed under

Section 124 of the 1999 Act as the endeavor was not to allow the suit to

proceed. She submits that even if the argument raised by petitioners is taken

on its face value, at the most it is action qua infringement that can be stayed.

Action qua passing off shall remain unaffected. She submits that Section

124 deals with action for infringement of trade mark and not action qua

passing off. She submits that the ratio of law laid down by Division Bench

of Delhi High Court in Amrish Aggarwal's case (supra) qua stay of suit of

passing off has been held to be obiter dicta by subsequent judgment

rendered in the case of Balar Marketing Private Limited vs. Lakha Ram

Sharma Proprietor of Kundan Cable India, SCC Online Del 2151.

8. Mr. Jhanji, Ld. Senior Counsel representing the petitioners joins

issue w.r.t. following observations made in the case of Balar Marketing

Private Limited vs. Lakha Ram Sharma Proprietor of Kundan Cable India

(supra), in Para 34:

34. In view of the discussion above, in my humble view, the

reference made by the Division Bench in paragraph 44 of Amrish

Aggarwal (supra) to 'passing off' has to be treated as obiter dicta

and would not be a binding precedent.

CR No.6252 of 2023 9

9. Mr. Jhanji submits that the conjoint reading of Para 15, Para 53

and Para 54 of the judgment rendered by the Division Bench judgment in

Amrish Aggarwal's case (supra) would reveal that the specific argument

regarding stay of suit of passing off, was raised before the Division Bench.

The same was explicitly dealt with and rejected. In these circumstances, the

observations cannot be considered to be obiter dicta.

10. I have heard counsel for the parties and have carefully gone

through records of the case.

11. In the considered opinion of this Court, the following Issues

that arise for consideration of this Court are:

(i) Whether Trial Court can look into validity of the

registration of trade mark when the rectification

proceedings are sought to be initiated before Registrar

under the Trade Marks Act, 1999?

(ii) Whether Section 124 mandates stay of action qua passing

off or the same relates only to the suit for infringement of

the registered trade mark? and

(iii) Whether the Court can allow action qua passing off to

proceed and stay action qua infringement in a composite

suit filed by the plaintiff.

12. Section 2(1)(zb) defines “trade mark” as under:

2(zb) ―trade mark means a mark capable of being

represented graphically and which is capable of distinguishing the

goods or services of one person from those of others and may

CR No.6252 of 2023 10

include shape of goods, their packaging and combination of

colours; and—

(i) in relation to Chapter XII (other than section 107), a

registered trade mark or a mark used in relation to goods or

services for the purpose of indicating or so as to indicate a

connection in the course of trade between the goods or services, as

the case may be, and some person having the right as proprietor to

use the mark; and

(ii) in relation to other provisions of this Act, a mark used

or proposed to be used in relation to goods or services for the

purpose of indicating or so as to indicate a connection in the course

of trade between the goods or services, as the case may be, and

some person having the right, either as proprietor or by way of

permitted user, to use the mark whether with or without any

indication of the identity of that person, and includes a certification

trade mark or collective mark;

13. Section 2(1)(m) defines “mark”. The law recognizes registered

trade mark as well as unregistered (but well known) trade marks. Law

protects unregistered trade mark used in the course of trade. Suit for passing

off is a remedy under common law recognized under the 1999 Act. Owner

of registered trade mark is entitled to maintain suit for infringement of his

rights arising out of registration of a trade mark. Suit for infringement is a

statutory remedy. To make it more clear, reference can be made to Section

27 and Section 29 of 1999 Act, which read as under:

27. No action for infringement of unregistered trade

mark.—(1) No person shall be entitled to institute any proceeding

to prevent, or to recover damages for, the infringement of an

unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of

action against any person for passing off goods or services as the

goods of another person or as services provided by another person,

CR No.6252 of 2023 11

or the remedies in respect thereof.

29. Infringement of registered trade marks.—(1) A

registered trade mark is infringed by a person who, not being a

registered proprietor or a person using by way of permitted use,

uses in the course of trade, a mark which is identical with, or

deceptively similar to, the trade mark in relation to goods or

services in respect of which the trade mark is registered and in such

manner as to render the use of the mark likely to be taken as being

used as a trade mark.

(2) A registered trade mark is infringed by a person who,

not being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which because

of—

(a) its identity with the registered trade mark and the

similarity of the goods or services covered by such

registered trade mark; or

(b) its similarity to the registered trade mark and the

identity or similarity of the goods or services covered by

such registered trade mark; or

(c) its identity with the registered trade mark and the

identity of the goods or services covered by such registered

trade mark, is likely to cause confusion on the part of the

public, or which is likely to have an association with the

registered trade mark.

(3) In any case falling under clause (c) of sub-section (2),

the court shall presume that it is likely to cause confusion on the

part of the public.

(4) A registered trade mark is infringed by a person who,

not being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade

mark; and

(b) is used in relation to goods or services which are

not similar to those for which the trade mark is registered;

and

(c) the registered trade mark has a reputation in India

CR No.6252 of 2023 12

and the use of the mark without due cause takes unfair

advantage of or is detrimental to, the distinctive character or

repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he

uses such registered trade mark, as his trade name or part of his

trade name, or name of his business concern or part of the name, of

his business concern dealing in goods or services in respect of

which the trade mark is registered.

(6) For the purposes of this section, a person uses a

registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on

the market, or stocks them for those purposes under the

registered trade mark, or offers or supplies services under

the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers

or in advertising.

(7) A registered trade mark is infringed by a person who

applies such registered trade mark to a material intended to be used

for labeling or packaging goods, as a business paper, or for

advertising goods or services, provided such person, when he

applied the mark, knew or had reason to believe that the application

of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising

of that trade mark if such advertising—

(a) takes unfair advantage of and is contrary to

honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade

mark consist of or include words, the trade mark may be infringed

by the spoken use of those words as well as by their visual

representation and reference in this section to the use of a mark

shall be construed accordingly.

14. Chapter VII of 1999 Act deals with rectification and correction

of the register as under:

CR No.6252 of 2023 13

CHAPTER VII

RECTIFICATION AND CORRECTION OF THE REGISTER

57. Power to cancel or vary registration and to rectify

the register.—(1) On application made in the prescribed manner to

the Appellate Board or to the Registrar by any person aggrieved,

the tribunal may make such order as it may think fit for cancelling

or varying the registration of a trade mark on the ground of any

contravention, or failure to observe a condition entered on the

register in relation thereto.

(2) Any person aggrieved by the absence or omission from

the register of any entry, or by any entry made in the register

without sufficient cause, or by any entry wrongly remaining on the

register, or by any error or defect in any entry in the register, may

apply in the prescribed manner to the Appellate Board or to the

Registrar, and the tribunal may make such order for making,

expunging or varying the entry as it may think fit.

(3) The tribunal may in any proceeding under this section

decide any question that may be necessary or expedient to decide

in connection with the rectification of the register.

(4) The tribunal, of its own motion, may, after giving notice

in the prescribed manner to the parties concerned and after giving

them an opportunity of being heard, make any order referred to in

sub-section (1) or sub-section (2).

(5) Any order of the Appellate Board rectifying the register

shall direct that notice of the rectification shall be served upon the

Registrar in the prescribed manner who shall upon receipt of such

notice rectify the register accordingly.

58. Correction of register.—(1) The Registrar may, on

application made in the prescribed manner by the registered

proprietor,—

(a) correct any error in the name, address or description of

the registered proprietor of a trade mark, or any other entry relating

to the trade mark;

(b) enter any change in the name, address or description of

the person who is registered as proprietor of a trade mark;

CR No.6252 of 2023 14

(c) cancel the entry of a trade mark on the register;

(d) strike out any goods or classes of goods or services from

those in respect of which a trade mark is registered, and may make

any consequential amendment or alteration in the certificate of

registration, and for that purpose, may require the certificate of

registration to be produced to him.

(2) The Registrar may, on application made in the

prescribed manner by a registered user of a trade mark, and after

notice to the registered proprietor, correct any error, or enter any

change, in the name, address or description of the registered user.

59. Alteration of registered trade marks.—(1) The

registered proprietor of a trade mark may apply in the prescribed

manner to the Registrar for leave to add to or alter the trade mark

in any manner not substantially affecting the identity thereof, and

the Registrar may refuse leave or may grant it on such terms and

subject to such limitations as he may think fit.

(2) The Registrar may cause an application under this

section to be advertised in the prescribed manner in any case where

it appears to him that it is expedient so to do, and where he does so,

if within the prescribed time from the date of the advertisement any

person gives notice to the Registrar in the prescribed manner of

opposition to the application, the Registrar shall, after hearing the

parties if so required, decide the matter.

(3) Where leave is granted under this section, the trade

mark as altered shall be advertised in the prescribed manner, unless

the application has already been advertised under sub-section (2).

60. Adaptation of entries in register to amended or

substituted classification of goods or services.—(1) The

Registrar shall not make any amendment of the register which

would have the effect of adding any goods or classes of goods or

services to those in respect of which a trade mark is registered

(whether in one or more classes) immediately before the

amendment is to be made or of antedating the registration of a

trade mark in respect of any goods or services:

Provided that this sub-section, shall not apply when the

Registrar is satisfied that compliance therewith would involve

CR No.6252 of 2023 15

undue complexity and that the addition or antedating, as the case

may be, would not affect any substantial quantity of goods or

services and would not substantially prejudice the rights of any

person.

(2) A proposal so to amend the register shall be brought to

the notice of the registered proprietor of the trade mark affected

and advertised in the prescribed manner, and may be opposed

before the Registrar by any person aggrieved on the ground that the

proposed amendment contravenes the provisions of sub-section (1).

15. Section 30 prescribes limits on effect of registered trade mark

and also prescribes valid defences in a suit for infringement. The same reads

as under:

30. Limits on effect of registered trade mark.—(1)

Nothing in section 29 shall be construed as preventing the use of a

registered trade mark by any person for the purposes of identifying

goods or services as those of the proprietor provided the use—

(a) is in accordance with honest practices in

industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be

detrimental to the distinctive character or repute of the trade

mark.

(2) A registered trade mark is not infringed where—

(a) the use in relation to goods or services indicates

the kind, quality, quantity, intended purpose, value,

geographical origin, the time of production of goods or of

rendering of services or other characteristics of goods or

services;

(b) a trade mark is registered subject to any

conditions or limitations, the use of the trade mark in any

manner in relation to goods to be sold or otherwise traded

in, in any place, or in relation to goods to be exported to

any market or in relation to services for use or available for

acceptance in any place or country outside India or in any

other circumstances, to which, having regard to those

conditions or limitations, the registration does not extend;

CR No.6252 of 2023 16

(c) the use by a person of a trade mark—

(i) in relation to goods connected in the

course of trade with the proprietor or a

registered user of the trade mark if, as to

those goods or a bulk of which they form

part, the registered proprietor or the

registered user conforming to the permitted

use has applied the trade mark and has not

subsequently removed or obliterated it, or

has at any time expressly or impliedly

consented to the use of the trade mark; or

(ii) in relation to services to which the

proprietor of such mark or of a registered

user conforming to the permitted use has

applied the mark, where the purpose and

effect of the use of the mark is to indicate, in

accordance with the fact, that those services

have been performed by the proprietor or a

registered user of the mark;

(d) the use of a trade mark by a person in relation to

goods adapted to form part of, or to be accessory to, other

goods or services in relation to which the trade mark has

been used without infringement of the right given by

registration under this Act or might for the time being be so

used, if the use of the trade mark is reasonably necessary in

order to indicate that the goods or services are so adapted,

and neither the purpose nor the effect of the use of the trade

mark is to indicate, otherwise than in accordance with the

fact, a connection in the course of trade between any person

and the goods or services, as the case may be;

(e) the use of a registered trade mark, being one of

two or more trade marks registered under this Act which

are identical or nearly resemble each other, in exercise of

the right to the use of that trade mark given by registration

under this Act.

(3) Where the goods bearing a registered trade mark are

CR No.6252 of 2023 17

lawfully acquired by a person, the sale of the goods in the market

or otherwise dealing in those goods by that person or by a person

claiming under or through him is not infringement of a trade mark

by reason only of—

(a) the registered trade mark having been assigned

by the registered proprietor to some other person, after the

acquisition of those goods; or

(b) the goods having been put on the market under

the registered trade mark by the proprietor or with his

consent.

(4) Sub-section (3) shall not apply where there exists

legitimate reasons for the proprietor to oppose further dealings in

the goods in particular, where the condition of the goods, has been

changed or impaired after they have been put on the market.

16. The same finds reference under Section 124 of the 1999 Act. It

provides that where the defendant raised a defence under Section 30(2)(e),

the Court trying the suit shall stay the same pending final disposal. The

present case falls under Section 124(1)(ii). The Trial Court has found that

the defendant has raised a prima facie issue regarding validity of the

registration of the plaintiff's trade mark and has framed specific issue i.e.,

Issue 7A. However, the Trial Court did not adjourn the case for a period of

‘three months’ from the date of framing of issue to enable the party

concerned i.e., petitioner in the present case, to apply to the High Court for

rectification of the register.

16.1. While considering the import of Section 124 in the light of the

scheme of the Act, Supreme Court in the case of 'Patel Field Marshal

Agencies and another vs. P.M. Diesels Ltd.', (2018) 2 SCC 112, observed

as under:

CR No.6252 of 2023 18

17. The observations made by Supreme Court in Patel Field

Marshal's case (supra) were relied upon by Division Bench of Delhi High

Court in Amrish Aggarwal's case (supra) to observe as under:

“44. The position in law which thus emerges upon a

consideration of Patel Field Marshal Agencies and Puma Stationer

clearly appears to be the necessity of suit proceedings being stayed

awaiting a final decision being rendered on any proceedings for

rectification or cancellation that may be either pending or are

intended to be initiated. The fact that the provision includes any

decision rendered in those rectification or cancellation proceedings

as binding upon the court trying the suit, lends added credence to

the requirement and obligation of the suit court awaiting a final

decision being rendered on those proceedings before taking up and

examining the challenge of infringement or passing off.

45. This aspect unerringly comes to the fore when one reads

Section 124(4) of the 1999 Act and which in explicit terms

provides that the final orders passed in rectification proceedings

would bind the parties and additionally oblige the court to dispose

of the suit itself in conformity with the decision which may have

CR No.6252 of 2023 19

been arrived at in the rectification or cancellation proceedings. The

suit court thus clearly stands denuded of the authority or

jurisdiction to independently proceed to examine the aspect of

validity. The clear intent of the statute appears to be of ensuring

that rectification challenges are placed exclusively before the

Registrar or the High Court and consequently requiring the Trial

Judge to stay its hands in any pending action.

46. All that Section 124(1)(ii) of the 1999 Act additionally

provides is for the Trial Judge evaluating whether the challenge to

registration as raised either by the plaintiff or the defendant gives

rise to a triable issue. The expression 'prima facie tenable'

essentially requires the Trial Judge to undertake a preliminary

examination of the plea of invalidity as opposed to a definitive

determination. The aforesaid caveat essentially appears to have

been introduced in order to enable the Trial Judge to dispose of

pleas which may be wholly specious or devoid of substance. Thus,

if on a preliminary examination itself, the Trial Judge were to

come to the conclusion that the plea of invalidity as raised is

clearly untenable and merits no further examination, it would be

entitled to proceed further in the suit. However, and once the court

comes to the prima facie conclusion that the challenge to

registration of a mark does merit further examination, it would

have to undoubtedly place the suit proceedings in a state of latency

and await the outcome of any rectification or cancellation action

that may come to be instituted.

47. This is further fortified from a reading of Section 124(2) of

the 1999 Act, which provides that once the party is able to

successfully establish that an action has been commenced in

accordance with sub-clause (ii) of Section 124(1) of the 1999 Act,

the trial of the suit shall stand stayed until the final disposal of the

rectification proceedings. A conjoint reading of sub-sections (1)

and (2) leads us to the irresistible conclusion that the Trial Judge is

obliged in law to await the outcome of a rectification action validly

instituted and to place the suit in a state of repose with proceedings

liable to be resumed upon conclusion of rectification proceedings.

The fact that the statute further provides for the decision on

rectification to be binding upon the suit court is yet another

affirmation of the legislative pre-eminence which the statute

CR No.6252 of 2023 20

accords upon the former and the imperatives of the Trial Judge

staying its hands whilst awaiting the outcome of those

proceedings. As we read Section 124 of the 1999 Act, we find that

the provision has been structured in order to give effect to the

legislative intent of what Mr. Ramanujan aptly described to be a

"sequencing of decision making". We consequently find that the

learned Single Judge while framing the present Reference has

correctly enunciated the legal position which would govern.”

18. In view of the aforesaid binding precedents laid down by

Supreme Court in Patel Field Marshal's case (supra), this Court finds that

once the Trial Court comes to a conclusion that the plea of invalidity of

registered trade mark is prima facie tenable, the Act mandates providing the

time to approach the Registrar or High Court. In the present case, the Trial

Court not being the High Court does not have the jurisdiction to try the Issue

w.r.t. rectification.

19. Bare perusal of Section 124 of 1999 Act makes it abundantly

clear that the same deals only with the suit for infringement of registered

trade mark and is not applicable to the suit for passing off. The Issue No.(ii)

framed herein-above is answered accordingly.

20. Counsel for the parties do not dispute that the action qua

passing off and action qua infringement are two different causes to maintain

action which have been joined in the present suit.

21. The Issue regarding maintainability of a composite suit alleging

passing off and infringement of trade mark cropped up before Full Bench of

Delhi High Court in Carlsberg Breweries A/S vs. Som Distilleries and

Breweries Ltd. AIR 2019 Delhi 23 (FB). The Full Bench of Delhi High

CR No.6252 of 2023 21

Court culled out the following two questions for adjudication:

(a) Is the court compelled by anything in law to reject a plaint

for misjoinder, if two causes of action cannot be clubbed;

(b) Are the two causes of action, i.e. a claim for design

infringement and the other for passing off, so disparate or

dissimilar that the court cannot try them together in one

suit;

22. In the present case, we are concerned with question (b).

23. Answering the Issue, Five Judges Bench of Delhi High Court

observed as under:

43. In regard to both causes of action, suits claims are(i)

against the same defendant or set of defendants, and; (2) in respect

of the same set of acts and transactions. The only difference is that

the relief claimed is different. The question is whether Mohan Lal's

understanding on the inconsistency and disparateness as to the

relief being fundamental to the frame of the suit, would defeat a

composite action, per se.

44. A registered design owner, this court notices, facially

satisfies the test of novelty (of the product's design) and that it was

not previously published. For registration, the article must contain

uniqueness or novelty in regard to elements such as shape,

configuration, pattern, ornament or composition of lines of colours

applied to any article; further there must be a visual appeal to the

article (i.e. the aesthetic appeal). However, if the defendant

establishes that indeed there was no novelty, or that a similar

design had been published earlier, in the public domain, the

infringement claim would be repelled. In respect of a passing of

claim, distinctiveness of the elements of the mark, its visual or

other presentation and its association with the trader or owner

needs to be established. The factual overlap here is with respect to

the presentation - in the design, it is the novelty and aesthetic

presentation; in a passing off action, it is the distinctiveness (of the

mark) with the attendant association with the owner. To establish

infringement (of a design) fraudulent imitation of the article (by

the defendant) has to be proved. Likewise, to show passing off, it

CR No.6252 of 2023 22

is necessary for the owner of the mark to establish that the

defendant has misrepresented to the public (irrespective of intent)

that its goods are that of the plaintiff's; the resultant harm to the

plaintiff's reputation is an actionable claim.

45. This court is also of the opinion that the Full Bench

ruling in Mohan Lal (supra) made an observation, which is

inaccurate: it firstly correctly noted that registration as a design is

not possible, of a trade mark; it, however later noted that "post

registration under section 11 of the Designs Act, there can be no

limitation on its use as a trademark by the registrant of the design.

The reason being: the use of a registered design as a trade mark, is

not provided as a ground for its cancellation under section 19 of

the Designs Act." This observation ignores that the Designs Act,

2000 Section 19 (e) specifically exposes a registered design to

cancellation when "(e) it is not a design as defined under clause (d)

of section 2." The reason for this is that section 2 of the Designs

Act, defines "design" as "...the features of shape, configuration,

pattern, ornament or composition of lines or colours applied to any

article.......; but does not include any trade mark as defined in

clause (v) of sub-section (1) of section 2 of the Trade and

Merchandise Marks Act, 1958....." Therefore, if the registered

design per se is used as a trade mark, it apparently can be

cancelled. The larger legal formulation in Mohan Lal (supra), that

a passing off action i.e one which is not limited or restricted to

trademark use alone, but the overall get up or "trade dress"

however, is correct; as long as the elements of the design are not

used as a trademark, but a larger trade dress get up, presentation of

the product through its packaging and so on, given that a "passing

off" claim can include but is also broader than infringement of a

trademark, the cause of action against such use lies.

46. It is evident that there is a similarity between the nature of

inferences and conclusions that are presented to the court, in the

two causes of action. Significantly, the complaint of passing off as

well as that of design infringement emanate from the same fact:

sale or offer for sale, by the defendant of the rival product. In this

context, it is relevant to notice that the expression "cause of action"

was explained in this incisive manner in Kusum Ingots & Alloys v.

Union of India 2004 (6) SCC 254 as:

CR No.6252 of 2023 23

"every fact which would be necessary for the plaintiff to

prove, if traversed, in order to support his right to the

judgment of the Court. Negatively put, it would mean that

everything which, if not proved, gives the defendant an

immediate right to judgment, would be part of cause of

action."

47. It is clear therefore, that the basic facts which impel a

plaintiff to approach a court, complaining of design infringement

are the same as in the case of passing off. In such circumstances, it

is inconceivable that a cause of action can be "split" in some

manner and presented in different suits. In this context, this court

notes that whereas Order 2, Rule 3 enables plaintiffs to join

disparate causes of action, Order 2, Rule 2 compels the whole

claim to be clubbed together. Speaking on the effect of the latter

(Order II Rule 2) the Supreme Court, noting its previous rulings,

said in M/s Raptakos, Brett v. M/S Ganesh Property AIR 1998

Supreme Court 3085 is an authority for the proposition that a suit

cannot be rejected as partly barred.

48. We are also of the opinion that a composite suit has the

advantage of a bird's eye view by the court, with respect to a

common set of facts: if for some reason, the claim for design

infringement is prima facie weak and the plaintiff cannot secure

interim relief, it does not have to face uncertainty of another action

before another court; the same court can review the same facts and

evidence, and conclude pendente lite, if prima facie passing off is

made out, necessitating interim relief.

24. The Full Bench observed that in view of enabling provisions

of Order II Rule 3 CPC, joinder of cause of action was permissible and the

plaintiff was well within his right to maintain a composite suit joining two

different cause of actions for infringement and that for passing off.

24.1. The issue w.r.t. splitting of different causes of action joined in a

composite suit stands answered by the Code of Civil Procedure itself under

CR No.6252 of 2023 24

Order II Rule 6 as under:

“[6. Power of Court to order separate trials.—Where it appears

to the Court that the joinder of causes of action in one suit may

embarrass or delay the trial or is otherwise inconvenient, the Court

may order separate trials or make such other order as may be

expedient in the interests of justice.]”

25. Having already held herein-above that Section 124 deals with

suit for infringement and not qua suit for passing off, this Court finds that

Section 124 cannot be invoked qua suit for passing off. The cause of action

for passing off is severable from cause of action for filing suit for

infringement.

25.1. From the records, it is discernible that the suit was filed in 2018

joining two separate causes of action, one qua infringement of a registered

trade mark and the other qua passing off. In almost 6 years, the suit could

not proceed beyond the stage of framing of issues. Accordingly, this Court

finds that the joinder of causes of action in the present suit has led to delay

in the trial. Thus, the impugned order needs to be modified to the extent that

the defendant(s) is granted three months time to move an appropriate

application seeking rectification of the registered trade mark owned by the

plaintiff.

26. The claim qua infringement shall remain stayed for three

months.

27. The Trial Court shall try the suit for passing off separately by

registering the same plaint as as separate suit i.e. Civil Suit No.12/2018-A

and shall proceed with the trial thereof on the basis of pleadings on record.

CR No.6252 of 2023 25

28. With the aforesaid observations, the revision petition is

disposed off.

29. Pending application, if any, shall disposed off.

January 22, 2026 (Pankaj Jain)

Dpr Judge

Whether speaking/reasoned : Yes

Whether reportable : Yes