Trademark Infringement Suits and the Impact of Pending Rectification Proceeding

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INTRODUCTION

The Hon’ble High Court of Judicature at Bombay recently delivered a comprehensive Judgment clarifying the procedural boundaries and statutory prerequisites governing applications under Section 124 and Section 125 of the Trade Marks Act, 1999 (“the Act”). In the case of Metropolitan Media Company Ltd. & Ors. v. Kothrud Mitra Newspapers Pvt. Ltd. & Ors. (Interim Application No. 2031 of 2026 in Commercial (IP) Suit No. 230 of 2015), a Single Bench comprising Hon’ble Ms. Justice Gauri Godse, on October 21, 2026, dismissed the Interim Application filed by the Defendants seeking a stay of the Suit and framing of an issue regarding trademark invalidity. The Court held that a stay of an Infringement Suit under Section 124 cannot be granted on the basis of rectification proceedings filed before an incompetent authority (such as the Trade Marks Registry during the pendency of a suit). Furthermore, the Court affirmed that a party cannot seek framing of an issue on trademark invalidity at the stage of final arguments after the completion of trial unless foundational pleadings establishing even a low-threshold prima facie case of invalidity exist within the Plaint or Written Statement under the Act.

BRIEF FACTS

The controversy originated from a Commercial Suit for Trademark Infringement and Passing Off instituted in January 2015 by the Plaintiffs (Metropolitan Media Company Ltd., Bennett Coleman and Company Limited and Lexicon Media Private Limited). The Plaintiffs claimed exclusive statutory rights over the registered trademarks “Pune Mirror” and “Sunday Pune Mirror”, alongside a family of “Mirror” formative marks across various cities. The Suit sought a permanent injunction restraining the Defendants (Kothrud Mitra Newspapers Pvt. Ltd. and its publisher, Sunnjoy Manohar Dahake) from using the marks “Pune Mirror” and “KM Kothrud Mirror”, along with ₹100 Crores in damages.

The Defendants filed their Written Statement in June 2019, contending that they had been publishing a fortnightly newspaper named “Pune Mirror” since October 2010 pursuant to title registration under the Press and Registration of Books Act, 1867 (“the PRB Act”) before the Registrar of Newspapers for India (“RNI”). Issues in the Suit were framed in November 2020 and modified in April 2024. After both Parties led evidence and the trial was formally closed in August 2025, the matter was posted for final arguments.

At the stage of final arguments, the Defendants filed Interim Application No. 2031 of 2026 under Section 124 of the Act. The Defendants prayed for a stay of further suit proceedings on the ground that they had filed post-suit rectification applications (in 2023 and 2024) before the Trade Marks Registry alleging non-use of the Plaintiffs’ registered marks for a continuous period of five years under Sections 47 and 57 of the Act. Alternatively, the Defendants prayed for the Court to frame an issue on the invalidity of the Plaintiffs’ trademarks and grant a three-month deferment under Section 124(1)(b)(ii) to enable them to move the appropriate forum for rectification.

ISSUES OF LAW

The High Court was called upon to resolve two primary legal questions:

1. On Forum Jurisdiction under Section 125: Whether pending rectification applications filed before the Registrar of Trade Marks during the pendency of an infringement suit can serve as a valid ground under Section 124 of the Act to stay further proceedings in the civil suit.
2. On the Scope and Stage of Section 124 Applications: Whether a Defendant can seek the framing of an issue on trademark invalidity at the final argument stage after the closure of evidence without explicit foundational pleadings challenging trademark validity under the Trade Marks Act.

ANALYSIS OF THE JUDGMENT

The High Court thoroughly evaluated the statutory framework, procedural timeline and settled judicial precedents, arriving at several foundational conclusions:

• Exclusive Forum for Post-Suit Rectification under Section 125: The Bench emphasized that under Section 125 of the Act, when a suit for infringement is pending and a party questions the validity of a registered trademark, the issue of validity can strictly be determined only via an application before the High Court, not the Registrar. Consequently, Rectification Applications filed before an incompetent authority (the Trade Marks Registry) are bad in law and cannot operate to stay suit proceedings under Section 124.
• Distinction Between Pre-Trial Applications and Post-Trial Stages: Addressing the Defendants’ reliance on Cipla Limited v. Cipla Industries Pvt. Ltd., 2014 SCC OnLine Bom 5107, the Court clarified that the flexibility to raise invalidity outside formal pleadings applies primarily to pre-trial or interlocutory stages. Once the trial has concluded and the Suit is at the final argument stage, a party cannot raise new grounds under Section 124 without pre-existing pleadings in the Written Statement.
• Interplay Between the PRB Act and the Trade Marks Act: The Court held that registration or title proceedings under the PRB Act, 1867 represent a distinct statutory mechanism governing newspaper publications. Allegations or defenses grounded in RNI title de-blocking under the PRB Act do not automatically translate into a plea of invalidity or non-use under the Trade Marks Act. Invalidity must be specifically pleaded in reference to the provisions of the Trade Marks Act itself.
• Failure to Satisfy the Low-Threshold Prima Facie Test: Reaffirming the principles established by the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018) 2 SCC 112 and the Bombay High Court in Franco India Pharmaceuticals, 2025 SCC OnLine Bom 1007, the Court noted that a stay or framing of an issue under Section 124 requires a prima facie finding that the plea of invalidity is tenable and not false, frivolous or untenable. In the absence of substantive pleadings challenging trademark validity under the Act, the Defendants failed to pass even the low-threshold prima facie test.

CONCLUSION

Holding that no issue regarding the invalidity of the Plaintiffs’ registered trademarks arose from the rival pleadings and that the Application was an attempt to stall the Suit at the stage of final arguments, the High Court rejected Interim Application No. 2031 of 2026. The Court directed the Suit to be listed for final arguments on merits. This Judgment serves as a crucial precedent reinforcing procedural discipline in IP litigation, highlighting that statutory remedies under Section 124 cannot be invoked casually or through incompetent forums to delay the final adjudication of infringement suits.

ANIKET KUMAR PARCHA

Legal Associate

The Indian Lawyer & Allied Services

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