Chapter XIII - Miscellaneous
Section 124
Section 124: Invalidity issues and stays in infringement suits
A registration-validity issue in the specified infringement suit can require rectification proceedings and a stay, while interim protection remains possible.
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This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
(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 High Court, 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 High Court 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.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit 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.
Rule and business relevance
The section distinguishes already-pending rectification from a new, prima facie tenable invalidity plea. For the latter, the court frames an issue and allows three months for a High Court application, subject to sufficient-cause extension. Missing the allowed application period abandons that validity issue; the final rectification decision binds the parties on validity.
Limits and related provisions
A stay does not bar interlocutory orders such as an injunction, accounts, a receiver or attachment. Nor does an unsupported validity allegation automatically trigger the entire procedure.
Hypothetical business example
Hypothetical example: A defendant challenges the plaintiff’s registration. Once the court finds the plea tenable, the defendant files in the allowed period while the trial court separately considers interim protection.
Practical decision flow
Identify the pleaded invalidity route and any pending rectification.
Comply with the court’s issue-framing and High Court application timeline.
Track the rectification result and any continuing interim orders.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Identify the pleaded invalidity route and any pending rectification.
- Comply with the court’s issue-framing and High Court application timeline.
- Track the rectification result and any continuing interim orders.
Avoid
- A stay does not bar interlocutory orders such as an injunction, accounts, a receiver or attachment. Nor does an unsupported validity allegation automatically trigger the entire procedure.
Glossary
- Prima facie tenable plea
- The threshold for the new rectification application route.
- Interlocutory order
- An interim order the court may still make during the stay.
Frequently asked questions
Does a stay prevent an interim injunction?
No. Subsection (5) preserves interlocutory powers.
What if the required application is not made in time?
The validity issue is deemed abandoned and the suit proceeds on other issues.
Does the rectification result affect the suit?
Yes. The final order binds the parties and the suit must conform on validity.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026