Bombay HC Restrains ‘Pune Mirror’ Dispute: Rules on Section 124 Delay

In KOTHRUD MITRA NEWSPAPERS PVT LTD Vs METROPOLITAN MEDIA COMPANY LTD [IA/2031/2026], the Bombay High Court refused to stay a commercial trademark infringement suit at the final argument stage, holding that a defendant who fails to seek leave of the court to challenge trademark validity before trial concludes abandons its statutory right under Section 124 of the Trade Marks Act, 1999. Presiding over the single bench, Hon’ble Mrs. Justice Gauri Godse dismissed Interim Application No. 2031 of 2026 filed by Defendants Kothrud Mitra Newspapers Pvt. Ltd. and Sunnjoy Manohar Dahake in Commercial (IP) Suit No. 230 of 2015. The suit, instituted by Metropolitan Media Company Ltd., Bennett Coleman & Co. Ltd., and Lexicon Media Pvt. Ltd., sought permanent injunctions and Rs. 100 crore in damages for the alleged infringement of registered marks “Pune Mirror” and “Sunday Pune Mirror”. The Court ruled that post-suit rectification petitions filed directly before the Trade Marks Registry without prior judicial determination on the prima facie tenability of invalidity are legally incompetent and cannot stall final judgment after evidence has closed.

Interplay of Section 124, Section 28, and Section 34: Structural Boundaries in Trademark Infringement

For foundational statutory analysis, consult our in-depth Trademark Law Guide.

The statutory design of the Trade Marks Act, 1999 establishes a clear balance between the exclusive rights conferred by registration under Section 28 and the common law rights preserved under Section 34. Section 28(1) grants the registered proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered and to obtain relief in respect of infringement. However, this statutory monopoly is not absolute. Section 34 provides a saving for vested rights, stipulating that a registered proprietor or registered user cannot interfere with or restrain the use of an identical or deceptively similar mark by a prior continuous user who has been using the mark from a date prior to the registration or the date of first user of the registered mark, whichever is earlier.

In S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, the Supreme Court emphasized that registration does not confer absolute title where an earlier continuous user exists under common law. The rights of a prior user under Section 34 override the statutory privileges of a subsequent registrant under Section 28, confirming that passing off actions under Section 27(2) remain unaffected by registration status. Similarly, in Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016) 2 SCC 672, the Apex Court affirmed the first-in-the-market test, holding that a registered mark holder who fails to bring its mark into commercial operation cannot restrain a prior non-registered user who has already established actual market presence and public reputation.

When a defendant in an infringement action challenges the validity of the plaintiff’s registration based on non-user under Section 47 or wrongful entry under Section 57, the procedural mechanism under Section 124 comes into operation. Section 124 regulates the jurisdictional sequence to prevent parallel, conflicting adjudications between civil courts and rectification authorities. Under Section 124(1)(a), if a rectification proceeding is already pending prior to the institution of the suit, the court must stay the suit. However, under Section 124(1)(b), if no rectification proceeding is pending at the time the suit is filed, a defendant seeking to challenge registration validity must satisfy two mandatory prerequisites: raising a specific plea of invalidity in its written statement and establishing to the satisfaction of the civil court that such a plea is prima facie tenable.

Judicial Screening under Section 124: Reconciling Patel Field Marshal, Franco India, and Lupin

The procedural architecture of Section 124 was authoritatively clarified by the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Limited (2018) 2 SCC 112. The Apex Court held that where a suit for infringement is pending and no rectification application was filed prior to the suit, the statutory right to seek rectification under Sections 47 and 57 becomes contingent upon the civil court finding the invalidity plea to be prima facie tenable. If the civil court accepts the prima facie tenability of the plea, it must frame an issue regarding validity and adjourn the suit for three months to allow the party to file a rectification petition before the competent authority.

Reflecting on the procedural framework established in Patel Field Marshal Agencies, Justice Gauri Godse highlighted the mandatory sequence required before any stay of suit can be granted:

It is further held that if no proceedings for rectification are pending on the date of filing of the suit and the issue of validity of the registration of the plaintiff’s or the defendant’s trade mark is raised/arises subsequently and the same is prima facie found to be tenable, an issue to the aforesaid effect shall be framed by the civil court and the suit will remain stayed for a period of three months from the date of framing of the issue so as to enable the party concerned to apply to the High Court for rectification of the register.

Hon’ble Mrs. Justice Gauri Godse, Bombay High Court

The Defendants in the present dispute relied on the single-bench decision in Franco India Pharmaceuticals Pvt. Ltd. v. Corona Remedies Pvt. Ltd. (2025 SCC OnLine Bom 1007), which analyzed the Full Bench ruling in Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596). The Defendants contended that Section 124 requires only a low threshold prima facie case to justify framing an issue and granting an adjournment. Evaluating the judicial screening standard mandated under Section 124, the High Court clarified the nature of the court’s inquiry when assessing invalidity pleas:

In Franco India Pharmaceuticals, this Court held that, while exercising jurisdiction under Section 124 of the Trade Marks Act, it must examine whether the claim of invalidity of the trade mark registration, raised on behalf of the defendant, is false, frivolous, and untenable. If the court is to reach the aforesaid conclusion, it must accept the contentions raised on behalf of the plaintiff, and such an issue cannot be framed.

Hon’ble Mrs. Justice Gauri Godse, Bombay High Court

Applying these principles, Justice Godse held that the Defendants had completely failed to meet even this low threshold standard. In the present case, the suit was instituted in 2015, written statements were submitted in 2019, issues were recasted in April 2024, and evidence closed on August 26, 2025. The Defendants filed post-suit rectification petitions directly before the Trade Marks Registry between September 2023 and July 2024 without obtaining prior leave or a finding of prima facie tenability from the High Court. The Court observed that filing post-suit rectification petitions directly before the Registry without judicial leave renders those petitions legally void and coram non judice. Citing Country Inn Private Limited v. Country Inns and Suites by Carlson, Inc. (2018 SCC OnLine Del 8549), the Court held that failing to request the framing of an issue on invalidity before trial commences and allowing evidence to close constitutes statutory abandonment under Section 124(3).

Evidentiary Forensics, Commercial Invoices, and Regulatory Approvals under the Press Act

A core aspect of the defense rested on alleging non-user of the registered marks “Pune Mirror” and “Sunday Pune Mirror” under Section 47. In commercial trademark litigation, proving or disproving non-user requires rigorous evidentiary forensics. To substantiate non-user under Section 47(1)(b), a party must demonstrate a continuous period of five years or longer during which there was no bona fide commercial use of the mark in relation to the goods or services for which it was registered.

Commercial evidence in contemporary IP disputes relies on tangible, objective documentation: audited financial statements, continuous GST tax invoices showing sales of publications or advertising space, e-commerce circulation transaction logs, digital subscription records, and audited ABC (Audit Bureau of Circulations) distribution reports. A mere assertion of non-user in a written statement, unsupported by documentary evidence or cross-examination of the plaintiff’s witnesses during trial, fails to meet the evidentiary burden required to displace a statutory registration under Section 28.

Furthermore, the Defendants sought to justify their adoption of “Pune Mirror” by producing title registration certificates issued by the Registrar of Newspapers for India (RNI) under Section 19 of the Press and Registration of Books Act, 1867 (PRB Act). The Defendants argued that because the RNI had deblocked the titles in the Plaintiffs’ names and approved the title “Pune Mirror” in favor of the Defendants, their publication enjoyed statutory immunity.

The High Court rejected this contention, reinforcing the fundamental legal principle that regulatory title registration under the PRB Act is entirely distinct from trademark ownership under the Trade Marks Act, 1999. Title verification by the RNI is a regulatory requirement for press publishing compliance under administrative law: it does not confer proprietary intellectual property rights, nor does it override statutory registrations granted under Class 9 (electronic editions), Class 16 (printed publications), and Class 41 (publishing services). Administrative approval under a press regulation cannot operate as a defense against trademark infringement or passing off brought by a registered trademark proprietor under Section 28.

Strategic Interlocutory Playbook for IP Litigators: Triple Test Dynamics and Trial Tactics

The decision provides essential strategic guidance for intellectual property practitioners managing dual-track infringement actions and rectification proceedings. When evaluating applications for interlocutory relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, courts apply the classic triple test: prima facie case, balance of convenience, and irreparable injury.

• Prima Facie Case: A registered proprietor under Section 28 establishes a strong prima facie case by demonstrating valid registration across relevant classes. A defendant seeking to displace this prima facie right through a Section 124 application must raise a tenable invalidity plea at the earliest stage, ideally in the written statement, and immediately move the court to frame a specific issue on validity before trial commences.
• Balance of Convenience: Filing post-suit rectification petitions directly before administrative registries without judicial leave disrupts the orderly progress of commercial suits. Courts will not allow defendants to use belated Section 124 applications to stall final arguments after trial has concluded, as doing so severely prejudices plaintiffs who have completed evidence.
• Irreparable Injury: Delayed statutory challenges created by negligent procedural management compromise the enforcement of intellectual property rights. To prevent irreparable harm to registered proprietors, civil courts must strictly enforce Section 124(3) statutory abandonment when defendants fail to follow the prescribed procedural timeline.

Litigation Playbook Rules:

• For Defense Counsel: Assert invalidity grounds explicitly in the written statement. Move an application under Section 124(1)(b)(ii) requesting the civil court to frame an issue on trademark validity prior to the commencement of cross-examination. Never file a post-suit rectification petition directly before the Trade Marks Registry or High Court without first obtaining an explicit judicial finding confirming prima facie tenability.
• For Plaintiff Counsel: Interrogate all post-suit rectification filings made by opponents. If a defendant files a post-suit rectification petition without obtaining prior leave under Section 124(1)(b), challenge the petition as a jurisdictional nullity under Patel Field Marshal Agencies. If the defendant delays raising Section 124 until the close of evidence, invoke statutory abandonment under Section 124(3) and the Country Inn doctrine to compel a final decree on merits.

Also Read: Karnataka HC Sets Aside Injunction: ‘Section 34’ Protects Prior Users

Corporate Brand Governance: Audit Protocols and Risk Mitigation for In-House Counsel

For corporate legal departments and in-house counsel managing publication portfolios and commercial brands, this judgment underscores the necessity of aligning regulatory compliances with comprehensive intellectual property management strategies.

• Uncouple Press Clearance from Trademark Protection: Operating under the assumption that an RNI title certificate under the PRB Act protects a brand against trademark infringement claims is a high-risk error. Corporate counsel must ensure that prior to launching any publication, journal, or digital platform, comprehensive trademark availability searches are conducted across Class 9, Class 16, and Class 41 of the Trade Marks Registry.
• Continuous Commercial Use Audits: To defend against non-user cancellation actions under Section 47, corporate brand managers must systematically archive commercial usage records. Maintenance of GST-compliant sales invoices, media rate cards, distribution ledgers, and digital subscriber logs ensures that proof of continuous commercial use is readily available during litigation.
• Timely Exercise of Rectification Remedies under Section 57: Where a corporation discovers an invalidly registered competing mark or an unused mark blocking its commercial expansion, it must initiate cancellation proceedings under Section 57 before an infringement suit is instituted, thereby securing automatic stay benefits under Section 124(1)(a) rather than facing the strict gatekeeping requirements of Section 124(1)(b).