Kerala High Court dismisses plea to cancel ‘INDIA GATE’ trade mark; clarifies jurisdiction is with Delhi HC

Kerala High Court: The present Special Jurisdiction Case was filed under the Trade Marks Act, 1999 (‘Trade Marks Act’) and the Copyright Act, 1957 (‘Copyright Act’), by the petitioner (‘Pas Agro Foods’), a firm in Kerala, to cancel the trade mark registration ‘INDIA GATE’ owned by Respondent 1 (‘KRBL Ltd.’), incorporated in New Delhi. A Single Judge Bench of M.A. Abdul Hakhim, J., dismissed the present case, observing that the rectification petition under Section 57 of the Trade Marks Act could not be filed before the Kerala High Court as Delhi High Court was the proper forum given that the trade mark was registered at the Delhi Trade Mark Registry.

Background:

KRBL Ltd. had acquired the statutory rights of the trade mark ‘INDIA GATE’ through a Deed of Assignment dated 06-08-2019, assigned by a person, who had obtained the trade mark registration from the Trade Marks Registry, New Delhi, on 18-06-1993.

KRBL Ltd. filed a suit (‘former suit’) under Section 134 of the Trade Marks Act against Pas Agro Foods before the District Court, Tis Hazari Courts, New Delhi, for infringement of its registered trade mark, ‘INDIA GATE’, on 14-01-2025. The District Court, by its order dated 21-01-2025, granted temporary injunction against the use of the trade mark by Pas Agro Foods and appointed an Advocate Commissioner to take into custody the infringing goods and other incriminating materials like stationery, packing materials, etc, who visited the Pas Agro Food’s business premises with police assistance and took into custody all the materials connected with the name ‘INDIA GATE’.

On 07-02-2025, Pas Agro Foods filed the present case under Section 57 read with Sections 124 and 125 of the Trade Marks Act and Section 50 of the Copyright Act. Thereafter, it filed an application in the former suit seeking its stay, pending the final disposal of the present suit. The said application was pending for consideration before the District Court, New Delhi.

KRBL Ltd. challenged the maintainability of the present case on the grounds of:

1. lack of territorial jurisdiction; and

2. the case being premature.

KRBL Ltd. contended that the rectification petition under Section 57 of the Trade Mark Act was to be filed before the Delhi High Court as it exercised appellate jurisdiction over the Trade Marks Registry where the trade mark was originally registered. However, Pas Agro Foods argued that the rectification petition was maintainable before the Kerala High Court, as a part of the cause of action had arisen within its territorial jurisdiction when Pas Agro Foods was allegedly obstructed from conducting its lawful business and its goods were seized. It was further submitted that Section 57 of the Trade Marks Act referred only to ‘the High Court’ and not to the one exercising appellate jurisdiction. Therefore, Pas Agro Foods asserted its right to file the rectification petition before the Kerala High Court.

KRBL Ltd. further contended that the present case was premature for want of framing of issue regarding invalidity of registration of trade mark by the District Court, New Delhi in the former suit under Section 124(1)(ii) of the Act, after being satisfied that the plea regarding the invalidity of the registration of the trade mark was prima facie tenable.

Analysis and Decision:

1. Lack of Territorial Jurisdiction

   The Court clarified that Section 134(2) of the Trade Marks Act was an exception to the general rule stated under Section 20 of the Civil Procedure Code, 1908 that a suit is to be filed in the Court at the defendant’s place or where part of the cause of action wholly or in part arises. Thus, Section 134(2) permitted the plaintiff to institute the infringement suit at his place. The Court also opined that the High Court was the proper forum to file a rectification petition when a suit for infringement was pending. But the question was whether only the High Court having territorial jurisdiction over the Trade Marks Registry office where the trade mark was registered was the proper forum to file for rectification?

   The Court relied on Woltop India Pvt. Ltd. v. Union of India¹, wherein it was held that the use of the definite article ‘the High Court’ in Sections 47 and 57 of the Trade Marks Act showed that the Parliament intended a specific High Court, not any High Court generally. An application for rectification would only lie before the Trade Marks Registry office, within whose territorial limits the principal place of business of the registered proprietor was situated. Any other interpretation would result in jurisdictional chaos because ‘any person aggrieved’ was entitled to petition which would lead to multiple rectification petitions before different High Courts leading to the possibility of conflicting decisions. It was thus concluded that the power of rectification is exercisable only by the High Court exercising appellate jurisdiction over the appropriate office of the Trade Marks Registry wherein the entry relating to the impugned mark is made.

   The Court concluded that since the trade mark ‘INDIA GATE’ was registered at the Delhi Trade Marks Registry, only Delhi High Court had the jurisdiction to entertain the rectification petition. Therefore, the Court held that the present Special Jurisdiction Case was not maintainable in Kerala High Court for want of jurisdiction.

2. The case is premature

   The Court referred to Section 124 of the Trade Marks Act which dealt with two situations relating to an infringement suit:

   1. the pendency of the rectification petition at the time of institution of the suit- In such a situation, Section 124(1)(i) mandates that the suit shall be stayed pending final disposal of the rectification proceedings.

   2. no rectification petition is pending at the time of institution of the suit- In such a situation, the party to the suit cannot file a rectification without following the procedure prescribed under Section 124(1)(ii).

   The Court explained that this provision indicated that if a party did not raise a plea regarding the invalidity of the registration of the trade mark in the infringement suit, it must be treated as if he had no grievance against the registration of the trade mark. If the Court was not prima facie satisfied with the invalidity plea and did not frame an issue, the party aggrieved must challenge the same before the Appellate Court.

   The Court relied on Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, wherein the Supreme Court held that all questions relating to the validity of the trade mark would be decided by the Registrar or the High Court under the Trade and Merchandise Marks Act,1958, or by the Registrar or the Intellectual Property Appellate Board (‘IPAB’) under the Trade Marks Act and not by the Civil Court.

   The Court observed that Pas Agro Foods could not have filed the present case under Section 57 of the Trade Marks Act seeking cancellation of the trade mark registration of ‘INDIA GATE’ granted to KRBL Ltd., without the framing of an issue regarding the invalidity of the registration in the former suit pending before the District Court, New Delhi.

Based on the above analysis, the Court rejected both grounds raised by KRBL Ltd., held that the Special Jurisdiction Case was not maintainable and dismissed it.

[Pas Agro Foods v. KRBL Ltd., SP. JC No. 2 of 2025, decided on 27-10-2025]

Advocates who appeared in this case:

For the Petitioner: M. Uma Devi, Advocate.

For the Respondents: Praveen K. Joy, R. Muraleekrishnan (Malakkara), T. Anup Joachim, M.J. Xavier Thomas, N. Abhilash, Albin Varghese, M.P. Unnikrishnan, E.S. Saneej, Abisha E.R, Megha G., Fathima Shalu S., Advocates.