Whether a
The Hon'ble Court, while underscoring the interplay between jurisdictional boundaries and consolidation of proceedings, considered the principle of Dynamic effect and test of reasonableness and fairness held that it is proper to consolidate the infringement suit and the rectification application together and render a single decision adjudicating both the claims.
Furthermore, the Hon'ble Court, observed that, being a constitutional and superior court, it possess the inherent power to transfer to itself a Rectification Application pending in a Trademark Registry outside its jurisdiction.
Brief facts about the Case:
Nippon Paint Holdings (hereinafter referred to as the 'Plaintiff') originally filed a suit for infringement againstSuraj Sharma (hereinafter referred to as the 'Defendant') in theMadras High Court onJanuary 9, 2024 , pleading that the Defendants have infringed their trademark and are selling the impugned products inChennai .-
Both the Plaintiff and the Defendant are the registered proprietors of the identical trademark '
NIPPON PAINT ' in identical class of goods, obtaining registration from the Trademarks Registry inChennai andDelhi respectively. -
Prior to the filing of the suit, the Plaintiffs had filed a rectification petition before the Trademark Registry at
New Delhi against the Defendant's mark. -
The Plaintiff after filing the suit immediately filed an application seeking transfer of Rectification Petition filed by them before the Trademark Registry in
New Delhi to the file of Hon'bleHigh Court . -
While opposing the transfer application, the Defendants questioned its maintainability on the ground that the
Madras High Court does not have territorial jurisdiction over the Trademarks Registry atNew Delhi .
Contentions of Plaintiff
- The Court is empowered to consolidate all proceedings and hear the same together as per Rule 14 of the
Madras High Court IPD Rules, 2022. -
The Defendants are selling the infringing products in
Chennai and are advertising their goods within the territorial limits of this Court. Therefore, a part of Cause of Action has arisen within the jurisdiction of this Court. -
There exists no statutory bar for this Court to hear the rectification proceedings pending before the Trademark Registry in
Delhi and the present infringement suit together. - The dynamic effect of the impugned registration of the Defendants is felt within the jurisdiction of this Court, thereby allowing the Court to entertain this transfer application.
Submissions of Defendant
The Madras High Court does not have the territorial jurisdiction to decide the present transfer application as the Registrar of Trademarks inDelhi , before which the rectification petition was filed, falls under the original jurisdiction of theDelhi High Court .- Under Section 124 of the Trade Marks Act, the present suit proceedings are to be stayed until the rectification petition is adjudicated upon. Thus, this transfer application would not be maintainable.
The Madras High Court has original jurisdiction only over the Trademarks Registry inChennai . Thus, if this transfer application is allowed, the statutory right of both parties to file an appeal before theDelhi High Court in respect of the Rectification Petition will be defeated.
Issues considered by the Hon'ble Court
- Statutory Bar for this
High Court to entertain the transfer application
No statutory bar exists under the Trade Marks Act for entertaining a transfer application to transfer the rectification application to a court where an infringement suit is already pending and a part of cause of action has also arisen within the jurisdiction of this Court. - Forum conveniens
The forum conveniens for deciding the rectification application is only theMadras High Court , as an effective adjudication can be rendered only through a consolidated hearing of the infringement suit and the rectification proceedings. - Dynamic Effect
The dynamic effect of the registration of the Defendants' mark inNew Delhi has an effect inChennai , as the infringing products are being advertised and sold by the Defendants inChennai within the jurisdiction of this Court. Suo Motu powers of Registry and Inherent powers ofHigh Court
When the Registrar of Trademarks has suo motu powers to transfer the rectification petition to High Courts, it can be inferred that theHigh Court , being a constitutional and a superior court, also has inherent powers to transfer rectification petitions to its file.- Omission of definition of 'High Court' in Trade Marks Act, 1999- 'High Court' had been defined in the Act of 1958 but the same was omitted when the Trade Marks Act, 1999 came into force. This deliberate omission may be to get over the traditional approach of jurisdiction in intangible matters on account of increasing globalization and the advent in Information Technology. The intention of legislature would not have been to curtail the powers of the
High Court but to make justice more accessible. - Consolidation of proceedings
Allowing the suit for infringement and the rectification proceedings to be adjudicated separately may create complexities and result in conflicting decisions. Thus, it is in the interest of justice and uniformity to consolidate both the proceedings together and adjudicate both by a single decision.
Judgement
The Hon'ble
- The Trademark Registry has suo motu powers to transfer Rectification Petitions pending on its file to the
High Court at any stage for further adjudication. Thus, theHigh Court being a constitutional court and a superior court, will also have inherent powers to transfer trademark cancellation Petitions to its file. -
The Tribunals Reforms Act, 2021 abolished the Intellectual Property Appellate Board (IPAB) and reinstated the powers of
High Court to hear trademark cancellation petitions. -
The Plaintiffs' place of business is
Chennai . Furthermore, the dynamic effect of the Defendants' registration is felt atChennai since the Defendants have been advertising and selling the infringing products inChennai . Thus, a part of cause of action arises within the jurisdiction of theMadras High Court . - No prejudice will be caused to the Defendants as the Defendants are already appearing before the Court to defend the infringement suit.
-
Omission to define the word 'High Court' under the Trade Marks Act, 1999 makes it clear that there is no statutory bar to entertain the transfer of the Rectification Petition filed by Plaintiffs before the Trademark Registry in
New Delhi to the file of theMadras High Court .
Conclusion
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