Besides filing a counter to the rectification petition, the respondent, Mr. Salahudeen Abdul Latheef (Latheef) also filed a counter claim seeking removal of the registered trademark of the Solidaire Digital Electronics Private Limited (Solidaire). Solidaire challenged the maintainability of such a counterclaim on the ground that neither the Trade Marks Act, 1999 (the TM Act) nor the Madras High Court Intellectual Property Rights Division Rules, 2022 provide for a counter claim in response to a rectification petition. 

Latheef, on the other hand argued that the Court’s powers under Section 57 (power to cancel or vary registration and to rectify the register) of the TM Act are so wide that these could even be stretched to rectify the trademark of a petitioner in a rectification action, should a counter claim were to be made by the respondent in such an action. After reviewing the various subsections of Section 57 of the TM Act, the Court noted that it does not provide for or deal with counter claims. On the other hand, the Indian Code of Civil Procedure expressly provides for a counterclaim and sets out an elaborate procedure for dealing with such counter claim. As such, the Court held that a counter claim cannot be filed in a rectification petition under the TM Act.

However, since Latheef filed the counter claim by paying the requisite Court fee and since Solidaire has already filed a written statement, the Court ordered that the counter claim be treated as a petition for challenging the validity of the Solidaire’s trademark.