Bombay High Court Rejects Late Section 124 Stay Plea Where Trademark Invalidity Was Never Properly Pleaded

The defendants in a long-pending trademark infringement suit sought a stay under Section 124 of the Trade Marks Act, 1999 on the basis of rectification applications alleging non-use of the plaintiffs’ registered “Pune Mirror” and “Sunday Pune Mirror” marks. The Court held that Section 124 requires a prima facie tenable plea of invalidity arising from the pleadings; a civil court cannot itself finally determine trademark validity, but it must first decide whether an issue of invalidity should be framed. Here, the defendants’ pleadings concerned their own newspaper use and proceedings under the Press and Registration of Books Act, not invalidity under the Trade Marks Act. The application was filed at the final-arguments stage and did not cross even the low-threshold prima facie test. The stay request was rejected and the suit was directed to proceed to final arguments (Paras 35–51).

Key Proposition: Section 124 of the Trade Marks Act does not permit a defendant to obtain a stay merely by asserting that a registered trademark is invalid; the defendant must raise a legally relevant and prima facie tenable invalidity plea in the pleadings before the civil court can frame an issue and enable rectification proceedings.

• Trade Marks Act, 1999 – Section 124 – invalidity of registered trademark – Held, a prima facie tenable issue must arise from the pleadings (Paras 44–50).
• Trade Marks Act, 1999 – Sections 47 and 57 – rectification – Held, proceedings without a proper pleaded invalidity case cannot justify stay (Paras 18–20, 44–50).
• Press and Registration of Books Act – newspaper-title registration – Held, RNI proceedings do not themselves establish trademark invalidity (Para 48).

Background / Synopsis :

• The plaintiffs filed Commercial (IP) Suit No. 230 of 2015 seeking injunction against use of “Pune Mirror”, “KM Kothrud Mirror” and deceptively similar marks, plus ₹100 crore damages.
• The defendants relied on their own use of “Pune Mirror” and newspaper-title proceedings before the Registrar of Newspapers.
• At the final-arguments stage, the defendants sought a Section 124 stay based on rectification applications alleging non-use of the plaintiffs’ marks.
• Alternatively, they sought framing of an invalidity issue and a three-month deferment under Section 124.

Issues For Consideration :

• Whether the defendants raised a specific and prima facie tenable plea challenging trademark validity.
• Whether the rectification applications triggered Section 124 and required a stay.
• Whether newspaper-title proceedings under the PRB Act could constitute trademark invalidity.
• Whether a Section 124 application filed at final arguments could reopen the suit.

Submissions Of Parties :

Applicants / Defendants:

• The defendants alleged lack of continuous bona fide use and asserted that the registrations were invalid.
• They relied on three rectification applications and Patel Field Marshal and Franco India Pharmaceuticals.
• They argued that their continuous use of “Pune Mirror” supported the invalidity plea.

Plaintiffs:

• The plaintiffs argued that there was no properly pleaded invalidity case under the Trade Marks Act.
• They submitted that RNI title registration was legally distinct from trademark validity.
• They argued that the application was a late attempt to delay final hearing.

Court's Observations & Analysis :

Re: Section 124 and prima facie invalidity

• Patel Field Marshal requires the civil court to first determine whether an invalidity issue arises.
• Franco India Pharmaceuticals applies a low-threshold prima facie test, but the plea must still be legally tenable.
• Held: No invalidity issue could be framed because the defendants had not raised a legally relevant prima facie challenge.

Re: Non-use under trademark law

• The defendants’ pleadings focused on their own newspaper use rather than a statutory non-use challenge under the Trade Marks Act.
• The existence of rectification applications did not remove the Court’s duty to test the underlying plea.
• Held: The defendants failed to cross the low-threshold prima facie test.

Re: PRB Act versus Trade Marks Act

• Newspaper-title registration is governed by a separate statute
• Such registration does not itself establish invalidity of a trademark registered under the Trade Marks Act.
• Held: The PRB Act proceedings did not create an invalidity issue.

Re: Late filing

• The application was made when final arguments were due.
• A bare assertion at that stage could not substitute for foundational pleadings.
• Held: The timing reinforced rejection of the Section 124 request.

Notable Observations: The civil court cannot finally decide trademark validity; the statutory rectification forum does so once the Section 124 threshold is satisfied.

Decision & Directions :

• Interim Application No. 2031 of 2026 was rejected.
• The suit was not stayed under Section 124.
• No invalidity issue was framed.
• The suit was directed to proceed to final arguments.
• No separate order as to costs was recorded.
• Legal Provisions Discussed & Precedents Cited :
• Trade Marks Act, 1999 – Section 124 – stay and rectification procedure in infringement suits.
• Trade Marks Act, 1999 – Sections 47 and 57 – rectification/removal.
• Trade Marks Act, 1999 – Section 124(4) – effect of final rectification order.
• Press and Registration of Books Act – newspaper-title registration.
• Doctrine – low-threshold prima facie test under Section 124.
• Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112 – relied on.
• Franco India Pharmaceuticals Pvt. Ltd. v. Corona Remedies Pvt. Ltd., 2025 SCC OnLine Bom 1007 – relied on.
• Lupin Ltd. v. Johnson and Johnson, 2014 SCC OnLine Bom 4596 – referred to.
• Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92 – referred to.
• Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145 – referred to.