In this case an original rectification application was filed by the Applicant for rectification of the register and to cancel the trade mark of the Respondent was challenged by the Respondent on the ground of the Section 124 of the Trade Mark Act, 1999. The Respondent contended that an application for rectification of register without prior permission of the Court should be treated as invalid and nullity where a civil suit related to the same matter is already pending before a Court.
The Board opine that in view of the two judgements (i) M.P.No.13/2008 in ORA/209/2007/TM/DEL and (ii) Astrazeneca case, the instant case is on the same nature and the same view, that the respondent filed this rectification application in the year 2008 after filed a civil suit against the applicant being suit No. C.S. (O.S.) No. 19 of 2005 before the Hon’ble High Court of Delhi. The same original rectification application has been filed without taking permission of the Hon’ble High Court of Delhi.
It is also settled law as per provision of section 124 of the Act, the applicant in the aforesaid circumstances is required to take permission of the Hon’ble High Court where the suit is filed prior to filing of original rectification application. Failure to take such permission renders the original rectification as invalid and nullity. In this above ground the application for rectification is deserve to be dismissed.
Source: http://www.ipab.tn.nic.in/Orders/137-2009.htm
2010 (43) PTC 183 (IPAB)
On a plain reading of the provisions of the section 124 of the Act, we do not find any specific requirement of permission from the Civil Court for filing the rectification petition.