A single bench of the Delhi High Court, in a recent judgment in a batch of five petitions including The Hershey Company vs. Dilip Kumar Bacha and others referred the question of jurisdiction concerning rectification and cancellation petitions under the Trade Marks Act, 1999 ('Act') under section 57 of the Act to a larger bench in view of the conflicting judgment passed by a co-ordinate bench in the matter of Dr. Reddy's Laboratories Ltd. v. Fast Cure Pharma held that the word 'High Court' in the Act would include even those High Courts within whose jurisdiction the dynamic effect of the registration is felt.
The present case raised a significant question as to which High Court has the jurisdiction to hear cancellation/rectification petitions under section 57 of the Act. The pertinent question which was referred to the larger bench, is whether cancellation petitions under the Act can be filed only before a High Court where the Trade Marks Registry has granted the registration, or whether such applications can also be filed before the High Courts within whose jurisdiction the ramifications of registration are witnessed by the Petitioner.
Contention of the Parties:
The Petitioners discussed the term 'High Court' and analysed various acts which define the term "High Court" in respect of the jurisdiction ambiguity for rectification under section 57 of the Act, this judgment discusses various acts that define the term "High Court" as under:
- Trade and Merchandise Marks Act, 1958 – wherein the Jurisdictional powers of the High Court are defined;
- Trade Marks Act, 1940 - wherein while the term 'High Court' is defined, it lacks clarity with respect to jurisdiction; and
- Trade Marks Act, 1999 - wherein the term 'High Court' is not defined.
The Petitioners also submitted that the jurisdiction of the High court cannot be restricted to five Courts as it will go against the ethos of the Commercial Courts Act, 2015 and will also cause grave inconvenience and injustice. The Petitioners heavily relied on the judgement passed in the case of Girdhari Lal Gupta v K. Gian Chand Jain ("Girdhari Lal Gupta") and submitted that all such High Courts where the dynamic effect of the registration is witnessed would have jurisdiction to adjudicate on the dispute.
The Respondents submitted that the reliance placed upon the Judgment of Girdhari Lal Gupta is incorrect as the same pertains to the Designs Act, 1911. It was further submitted that the definition of 'Appropriate office' in section 3 of the Act has more than one interpretation and in such case the provisions should be not be interpreted differently for registrar and High Court and hence cannot be interpreted in any manner that might cause utmost conundrum. Moreover, in reference to section 97 of the Act, when a rectification petition is filed and the order is passed the same would be executed by the Registrar and therefore the petition ought to be filed before the forum that can exercise jurisdiction over the said Registrar. Further the Respondents also argued that any confusion with jurisdiction might lead to multiplicity of suits and the two forums should not decide on the same matter as it would lead to conflict of decisions.
Held:
The Hon'ble Court held that it was unable to subscribe to the view taken by the Single Judge in Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma and in view of the significance of the issues raised including the applicability of the law laid down by Girdhari Lal Gupta in the context of proceedings under the Act, the Hon'ble Court was pleased to refer the matter to a larger bench for determination of the following three queries:
- Whether the decision of the Full Bench in Girdhari Lal Gupta, rendered under the Designs Act, 1911, would be applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining jurisdiction of a High Court under Section 57 of the Act?
- Whether the jurisdiction of the High Court under Section 57 of the Act would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the impugned trade mark registration?
- Whether the expression 'the High Court' can be differently construed in Sections 47, 57 and 91 of the Act?
MHCO Comment:
The upcoming verdict by the larger bench of the Delhi High Court is a welcome move in providing much needed clarity on matters pertaining to trademarks cancellation. The decision by the single bench of referring such a pivotal question of law to a larger bench is deemed necessary to ensure thorough adjudication and to give quietus to such important matters.
This article was released on 5 April 2024
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