In an important ruling, the Supreme Court of India clarified that during a civil suit if an aggrieved party does not approach the Tribunal for a decision on the issue of invalidity of trademark registration, the right to raise the issue of invalidity would no longer survive between the parties to enable the concerned party to seek enforcement of the same by recourse to or by a separate action under the other provisions of the Trademarks Act.
“…..all questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, in fact, is not empowered by the  Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority
[Registrar/High Court (now IPAB)] will bind the Civil Court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations”, the Court said after reviewing a plethora of case law.
“In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity”, the Court said.
The Court said that the mandate of the 1958 Act, particularly, Section 111 thereof, appears to be that if an aggrieved party does not approach the Tribunal for a decision on the issue of invalidity of registration as provided for under Section 111(2) and (3), the right to raise the issue (of invalidity) would no longer survive between the parties to enable the concerned party to seek enforcement of the same by recourse to or by a separate action under the provisions of Section 46/56 of the 1958 Act.
It is to be noted that Sections 47, 57, 124 and 125 of the Trademarks Act 1999 are pari materia with Sections 46, 56, 111 and 107 of the old Trademarks act 1958.