Analysing The Dynamic Effects Of Registration In Trademark Infringement In Light Of Dr. Reddys Laboratories Ltd. V. Fast Cure Pharma

Justice Hari Shankar while deciding the case said that “the Registrar, who could exercise jurisdiction under Section 47 or Section 57 would undoubtedly be the Registrar who granted registration to the impugned mark, the High Court which could exercise such jurisdiction would not only be the High Court having territorial dominion over such Registrar, but also any High Court within whose jurisdiction the petitioner experiences the dynamic effect of the registration”.

Therefore, it becomes pertinent to understand what does dynamic effect of registration in the issue of jurisdiction entails in light of the concerned case in hand.

Background of the Case

Fast Cure Pharmaceuticals, the respondent in the current case got their mark “RAZOFAST” registered for an antacid pharmaceutical compound 'Rabeprazole on 23^rd December 2018. Following this, Dr. Reddy Labs filed an infringement application before the Delhi High Court contending the said mark infringes their mark i.e., “RAZO”, which was also registered, by the Kolkata Trademark Registry for the same compound. The court ruled in favour of the latter citing the claim of the petitioner to be correct.

However, during the pendency of the said hearing, the petitioner filed an adjournment application on 23^rd August 2023 and went on to file the petition u/s 47, 57, and 124 of the Trademarks Act, 1999^[2] before the Delhi High Court to remove “RAZOFAST” from the register and thus sought rectification.

What was the Issue before the Court?

Sections 47, 57, and 124 of the Trademarks Act, 1999 talk about the revocation, rectification, and the procedural hearing of such trademark suits.

Section 47 states that a trademark can be cancelled if there has been no genuine use of the trademark in relation to the goods or services for which it is registered for a continuous period of five years and three months or more. The section vests this power to the Registrar or the High Court.

Section 57 gives the authority to the High Court or the Registrar to make orders for cancelling or changing the registration of a trademark if there has been a violation or failure to follow the conditions listed in the register.

Similarly, Section 124 allows the High Court to stay proceedings in trademark infringement cases when there are pending rectification proceedings or when there is a prima facie tenable claim regarding the invalidity of the trademark registration, providing an opportunity for rectification before proceeding with the infringement suit.

Consequently, the contention before the court was whether the said petition of removal and rectification would lie to the Delhi High Court, where the infringement took place, or to the Calcutta High Court, where the trademark of the respondent was registered. Therefore, the issue of territorial jurisdiction was presented before the court.

The Ruling of the Court-

The court, following the principle of “est exclusio alterius”, observed that the Trademark Act of 1999 neither expressly approves nor excludes any High Court from taking up the matter related to alteration under sections 47, 57 and 124. Also, going by the general definition of the “High Court” under the General Clauses Act, the court negated the claim that only the Calcutta High Court would have jurisdiction over the case.

The court relied on the case of Girdhari Lal Gupta v. K. Gian Chand & Co^[3], wherein it was held that “the application could be made either before the High Court having jurisdiction over the office of the Controller of Designs which granted registration to the design or any High Court within whose jurisdiction the “dynamic effect” of the registration could be felt.

Dynamic Effects of Registration

The principle of the dynamic effect of registration basically embodies that the jurisdiction would not be limited to the territoriality of the registration. It states that since the substantial matter in the case includes the issue of registration as well as the infringement of the trademark, a dynamic approach has to be taken to resolve it. Therefore, rather than sticking to the principle of territorial jurisdiction of registration, the dynamic effect also allows the trademark owner to file the suit for the infringement, where the actual infringement took place.

The principle (in the domain of IPR) laid down in the case of Girdhari Lal Gupta, by a full bench, is still a “good law”. The court in this case dealt with a similar issue of cancellation of a registered design under section 51 (a) of the Designs Act, 1911. It observed, “the reason for the legislature for not confining, in the P & D Act, the jurisdiction to cancel the registration of a design only to the High Court having jurisdiction over the office of the Controller of Designs which granted registration, could only be that the legislature did not intend to confine jurisdiction to one High Court alone”.^[4]

However, the principle does not signify that a petition can be filed before any High Court irrespective of its relevance to the case. The prerequisite to give the principle effect is that the person filing the petition must be aggrieved and the petition shall be filed in the High Court where the actual infringement took place. A person aggrieved here refers to a person who has suffered injury or there is a probability of it.

Therefore, in terms of trademark, a petition can be filed by any aggrieved person if his registered trademark has been infringed not only before the place of registration but at any High Court within whose jurisdiction, he suffered damage due to infringement.

The shift of the courts from a conventional static principle to a dynamic approach was essential in the cases of IPR. The Trade Mark Registry being located in only 5 states of India^[5], cannot justify the cases of infringement which take place all over the country. The principle of dynamic effect of registration states that a petition can be filed at any high court within whose jurisdiction the infringement of the trademark occurred. The developing jurisprudence of IPR would perhaps be augmented and structured by adopting these dynamic approaches in this digital era where accessibility and infringement can take place from anywhere.

Views are personal.

[1] Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma 2023: DHC: 6324.