High Court Can Transfer Rectification Petition Pending In Trademark Registry Outside Its Jurisdiction To Its File: Madras High Court

Justice Abdul Quddhose observed that the Trade Marks Act had deliberately omitted to define the word “High Court” and thus the intention of the legislature was not to curtail the powers of the High Court. The court noted that the legislature intended to not for two forums to deal with the same subject matter and give conflicting decisions.

“When the Registrar of the trademarks is having suo motu power to transfer the rectification proceedings to the High Court, as a Constitutional Court, it can be inferred that the High Court is having inherent powers to transfer the rectification proceedings to its file, in order to avoid any inconsistencies in the decision making i.e., one made by the Trademarks Registry and the other by the High Court,” the court observed.

The court was hearing a plea by Nippon Paint Holdings Co Ltd to transfer a Rectification Petition filed by them before the Trademarks Registry in New Delhi to the file of the Madras High Court. The transfer application was opposed by the respondents stating that the Court did not have territorial jurisdiction over the Trademarks Registry in New Delhi and thus could not hear the plea.

The plaintiff had argued that under Rule 14 of the Madras High Court Intellectual Property Rights Division Rules 2022, the High Court had the power to consolidate all proceedings and hear them together. They argued that since a part of the cause of action i.e., the infringement of their trademark took place in the jurisdiction of the court, the court could hear the same and there was no express statutory bar for the court to hear the rectification petition. It was also submitted that since the dynamic effect of the pending registration will be felt within the jurisdiction of the Madras High Court, the court could entertain the plea.

The respondents, on the other hand, argued that since the Rectification petition was pending before the Trademarks Registry in New Delhi, the Madras High Court did not have territorial jurisdiction to decide the application. The respondents argued that the Madras High Court had original jurisdiction only over the Trademarks Registry in Chennai.

While the court noted that a Full Bench had been constituted in the Delhi High Court to decide a similar issue, the court felt that it could take an independent view regarding the current issue. The court also agreed with the view taken by a single judge of the Delhi High Court in Dr.Reddy's Laboratories Ltd. vs. Fast Cure Pharma and others in which the court had applied the dynamic effect principle. In the present case, the court noted that a decision rendered in the infringement suit filed before the Madras High Court will have a bearing while deciding the rectification application before the Delhi Trademarks Registry and vice versa.

The court also noted that since a part of the cause of action arose in Chennai, the High Court had jurisdiction to entertain the transfer application. Further, applying the rule of harmonious construction, the court observed that the interest of justice will be served by consolidating both the proceedings instead of allowing the pleas to continue parallelly.

The court thus observed that it had inherent jurisdiction to transfer the rectification proceedings pending before the Trademarks Registry New Delhi to itself and thus allowed the transfer application.

Counsel for the Applicant: Mr.P.S.Raman, Senior Counsel for Mr.Arun C.Mohan

Counsel for the Respondents: Mr.Davesh Vashishtha

Citation: 2024 LiveLaw (Mad) 154

Case Title: Nippon Paint Holdings Co. Ltd and Another v Suraj Sharma and Another

Case No: A.No.556 of 2024 in C.S.(Comm.Div.)No.7 of 2024