The DB of the DHC overruled the Sana Herbals decision. The DB specifically ruled that the IPD Rules are applicable merely to the original suits brought before it and it would be wholly imprudent to construe Section 124 based on such IPD Rules. The DB further observed that Rule 26 of the IPD Rules would not eliminate the requirement of an order of stay of proceedings. The DB also observed that where the rectification/ cancellation proceedings is already pending before the Registrar, the question of consolidation of proceedings would not arise at all. In the unambiguous words of the DB:
“Notwithstanding the abolition of the IPAB and the power of rectification reverting to the High Court, a Trial Judge would necessarily have to stay its hands once it is apprised of the pendency of a rectification or cancellation action and which may have been initiated prior to the institution of the suit itself.”
With respect to plea of invalidity of registration being raised during the infringement suit, the DB clarified that,
“The Trial Judge while trying a suit would have to also necessarily take cognizance of any plea of invalidity that may be raised in the suit proceedings itself. Once the Trial Judge on a prima facie examination of that plea finds the same to raise triable issues, it would be bound to stay further proceedings in the pending suit.”
Another question raised before DB during reference proceedings concerned whether the infringement suit shall be automatically stayed in all cases where rectification/ cancellation proceedings has been filed. The DB answered such query in negative by ruling,
“….. that since the statute does not contemplate the stay of proceedings as a natural corollary or one which would come into effect by operation of law, the obligation of the Court (trying the infringement suit) to frame an order staying further proceedings in the suit is neither dispensed with nor eliminated.”
Source: Barandbench
