High Court of Karnataka Dismisses Writ Petition in Trademark Infringement Case, Upholds Trial Court's Refusal to Stay Suit Pending Rectification. Civil Court Has Concurrent Jurisdiction to Decide Infringement and Validity of Trademark Under Section 124 of Trade Marks Act, 1999.

High Court: Karnataka High Court Bench: DHARWAD In Favour of Prosecution

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2026-05-18 15:52:50

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Case Note & Summary

The petitioners, M/s. Sri Laxmi Balaji Industries and M/s. Sri Laxmi Vinayaka Rice Industries, filed a writ petition under Articles 226 and 227 of the Constitution of India challenging the order dated 30.03.2013 passed by the Principal District Judge, Ballari, on I.A.No.7 in O.S.No.3/2012. The respondent, M/s. Lakshmi Venkateshwar Rice Industries, had filed the suit for permanent injunction against the petitioners for trademark infringement and passing off in respect of the trademark 'LAKSHMI VENKATESHWARA' used for rice products. The petitioners filed I.A.No.7 under Section 124 of the Trade Marks Act, 1999, seeking stay of the suit proceedings pending disposal of their rectification applications before the Registrar of Trademarks, Chennai. The trial court dismissed the application, holding that the civil court has jurisdiction to try the suit and that the rectification applications were filed belatedly and were not bona fide. The High Court, after hearing both sides, upheld the trial court's order. The court observed that the petitioners had not challenged the respondent's trademark registration for several years and only filed rectification applications after the suit was instituted and after the trial had commenced. The court held that the civil court has concurrent jurisdiction to decide both the infringement suit and the validity of the trademark, and stay under Section 124 is not automatic. The court also noted that the trial court had earlier rejected the plaint under Order VII Rule 11 CPC, but that order was set aside by the High Court and the matter was remanded. The present petition was found to be without merit, and the court dismissed it, directing the trial court to expedite the disposal of the suit.

Headnote

A) Civil Procedure - Stay of Suit - Section 124 Trade Marks Act, 1999 - Jurisdiction of Civil Court - The court considered whether a civil suit for trademark infringement and passing off must be stayed pending rectification proceedings before the Registrar of Trademarks. Held that the civil court has concurrent jurisdiction to decide both the infringement suit and the validity of the trademark, and stay is not automatic; the court may proceed with the suit if the rectification application is not bona fide or is filed to delay proceedings. (Paras 1-30)

B) Trade Marks - Rectification Proceedings - Section 124 Trade Marks Act, 1999 - Abuse of Process - The court examined the conduct of the petitioners who filed rectification applications after the suit was filed and after the trial had commenced. Held that such belated filing, without any prior challenge to the trademark, amounts to an abuse of process of law and cannot be a ground to stay the civil suit. (Paras 15-25)

C) Civil Procedure - Rejection of Plaint - Order VII Rule 11 CPC - Maintainability - The court noted that the trial court had rejected the plaint under Order VII Rule 11 CPC, but the High Court had set aside that order and remanded the matter. The present petition challenges the rejection of I.A.No.7 for stay, which was dismissed by the trial court. Held that the trial court's order refusing stay was correct and does not warrant interference. (Paras 5-10)

Issue of Consideration

Whether the civil court has jurisdiction to try a suit for infringement of trademark and passing off when the defendant has filed an application for rectification of the trademark before the Registrar, and whether the suit should be stayed pending disposal of the rectification proceedings.

Final Decision

The High Court dismissed the writ petition, upholding the trial court's order rejecting I.A.No.7. The court held that the civil court has jurisdiction to proceed with the suit and that the stay under Section 124 is not automatic. The trial court was directed to expedite the disposal of the suit.

Law Points

Jurisdiction of civil court in trademark matters
Stay of suit pending rectification proceedings
Section 124 of Trade Marks Act
1999
Order VII Rule 11 CPC
Abuse of process of law

Case Details

2024 LawText (KAR) (09) 14

WP No. 77807 of 2013 (GM-CPC)

2024-09-13

H.P. Sandesh

Sri. S.R. Kamalacharan (for petitioners), Smt. V. Vidya (for respondent)

M/s. Sri Laxmi Balaji Industries and M/s. Sri Laxmi Vinayaka Rice Industries

M/s. Lakshmi Venkateshwar Rice Industries

Nature of Litigation

Writ petition under Articles 226 and 227 of the Constitution of India challenging an order rejecting an application for stay of civil suit proceedings pending rectification of trademark.

Remedy Sought

Petitioners sought to quash the order dated 30.03.2013 on I.A.No.7 in O.S.No.3/2012 and to allow the application, thereby staying further proceedings in the suit pending disposal of rectification proceedings before the Registrar of Trademarks.

Filing Reason

The trial court dismissed I.A.No.7 filed under Section 124 of the Trade Marks Act, 1999, seeking stay of the suit for trademark infringement and passing off, on the ground that the civil court has jurisdiction and the rectification applications were not bona fide.

Previous Decisions

The trial court had earlier rejected the plaint under Order VII Rule 11 CPC, but that order was set aside by the High Court and the matter was remanded for trial.

Issues

Whether the civil court has jurisdiction to try a suit for infringement of trademark and passing off when the defendant has filed an application for rectification of the trademark before the Registrar. Whether the suit should be stayed under Section 124 of the Trade Marks Act, 1999, pending disposal of the rectification proceedings.

Submissions/Arguments

Petitioners argued that under Section 124 of the Trade Marks Act, the civil court must stay the suit if a rectification application is pending before the Registrar, and the trial court erred in dismissing the application. Respondent argued that the civil court has concurrent jurisdiction to decide both the infringement and the validity of the trademark, and the rectification applications were filed belatedly and are an abuse of process.

Ratio Decidendi

The civil court has concurrent jurisdiction to decide both the infringement suit and the validity of the trademark. Stay of suit under Section 124 of the Trade Marks Act, 1999, is not automatic and depends on the bona fides of the rectification application. Filing a rectification application after the suit has been instituted and trial has commenced, without prior challenge to the trademark, amounts to an abuse of process and does not warrant a stay.

Judgment Excerpts

The civil court has concurrent jurisdiction to decide both the infringement suit and the validity of the trademark. Stay under Section 124 is not automatic and depends on the bona fides of the rectification application. Filing a rectification application after the suit has been instituted and trial has commenced amounts to an abuse of process.

Procedural History

The respondent filed O.S.No.3/2012 for permanent injunction against the petitioners for trademark infringement and passing off. The petitioners filed I.A.No.7 under Section 124 of the Trade Marks Act seeking stay of the suit pending rectification proceedings before the Registrar. The trial court dismissed I.A.No.7 on 30.03.2013. The petitioners then filed the present writ petition under Articles 226 and 227 of the Constitution. The High Court reserved orders on 03.09.2024 and pronounced the judgment on 13.09.2024, dismissing the petition.