Delhi High Court: In a case wherein, the question arose that whether a petition under Sections 47, 57 or 124 of the Trade Marks Act, 1999 (‘the Act’) for removal of a trade mark from Trade Marks Register would lie only before the High Court which had the territorial jurisdiction over the office of Trade Marks Registry where the impugned mark was registered or could be filed in any other High Court, C. Hari Shankar, J.*, opined that the petitioners in both the petitions were experiencing the dynamic effect of the registration within the jurisdiction of the present Court and therefore, the petitions were maintainable before the Court.
Background
In both the petitions filed before the Court, the Trade Mark Registry where the impugned mark was registered were situated outside Delhi, and hence, it was outside the territorial reach of the Court. Since, the issue was of recurring importance, and in both the petitions common question of law had been raised, the matters were taken up together for adjudication.
In the first case, Dr. Reddy’s Laboratories, the petitioner had filed a suit against Fast Cure Pharma, Respondent 1, alleging that Respondent 1’s mark ‘RAZOFAST’ infringed the petitioner’s mark ‘RAZO’. The suit was decreed on 16-8-2023 in the petitioner’s favour. Further, during the pendency of the suit, the petitioner sought an adjournment on 23-8-2022, which was granted by the present Court vide order dated 23-8-2022.
Thereafter, the petitioner filed the present petition to seek rectification of the Trade Marks Register by removal of Respondent 1’s mark ‘RAZOFAST’. The question before the Court was whether the present rectification petition would lie before the present Court or before the Calcutta High Court, since Respondent 1’s ‘RAZOFAST’ mark was registered at Kolkata office of Trade Marks Registry.
Similarly, in the second case, Respondent 1’s ‘USDC’ mark was registered at the Ahmedabad office of the Trade Marks Registry. Thus, again the question for consideration before this Court was whether the rectification petition would lie before the present Court in this case as well.
Analysis, Law, and Decision
The Court noted that at the outset, Section 57 of the Act was the only provision which provided for the rectification of Register of Trade Marks by removing a registered mark. Further, the only difference between Section 124(1)(ii) and Section 57 of the Act, was that under Section 124(1)(ii), an application had to be necessarily filed in the High Court, whereas a rectification petition under Section 57 could be filed either before the Registrar or in the High Court.
The Court opined there was no express statutory restriction under the Act against any High Court exercising jurisdiction either under Section 47 or 57 of the Act. Further, relying on Girdhari Lal Gupta v. K. Gian Chand & Co., 1977 SCC OnLine Del 146, the Court opined that the cancellation or rectification petition could be filed either before the High Court which had the jurisdiction over the office of Trade Marks Registry which granted the registration to the impugned mark or before the Court where the dynamic effect of registration was felt.
The Court further opined that with the expansion of the internet and the access by persons anywhere in the country, to the goods and services which might originate from a distant site, a litigant was free to file an infringement, or passing off suit, before any Court within whose jurisdiction ‘use’ of the impugned mark took place.
The Court further applied the principle laid down in Girdhari Lal Gupta v. K. Gian Chand & Co., 1977 SCC OnLine Del 146, and opined that a rectification petition could be instituted before any such court within whose jurisdiction the dynamic effect of the registration of the defendant’s trade mark was felt.
However, the Court opined that it had to be established by the petitioner that he was suffering the dynamic effect of the registration within such jurisdiction and, therefore, the petitioner could institute the cancellation or rectification petition within the jurisdiction of the High Court where he feels such effect.
The Court analysed Section 124(1)(ii) of the Act, and stated that, as per the said provision, the court trying the infringement suit should first ascertain that the challenge by the plaintiff or the defendant, to the registration of the mark was tenable. If, in case it was found to be tenable, the court was required to adjourn the proceedings by three months to enable the person who challenged the registration of the mark to file a rectification petition before the High Court. The provision also indicated that the High Court, which had the competence to decide the dispute in the suit, should have also competence to adjudicate on the rectification application.
Further, the Court held that the applications under Section 47, Section 57 and Section 124(1)(ii) of the Act, would be maintainable before the High Courts within whose jurisdiction the offices of the Trade Mark Registry which granted the impugned registrations were situated and also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration was felt by the petitioner.
Thus, the Court opined that in the present case, the petitioners in both the petitions were experiencing the dynamic effect of the registration within the jurisdiction of the present Court and therefore, the petitions were maintainable before the Court.
The matter is further listed to be heard on 12-10-2023.
[Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma, 2023 SCC OnLine Del 5409, decided on 4-9-2023]
Advocates who appeared in this case :
For the Petitioners: Ranjan Narula, Shashi P. Ojha, Aishani Singh and Shivangi Kohli, Advocates; Urfee Roomi, Soumya Jain, Anuja Chaudhury and Anubhav Chhabra, Advocates.
For the Respondents: Harish Vaidyanathan Shankar, CGSC with Srish Kumar Mishra, Alexander Mathai Paikaday and M. Sriram, Advocates;
*Judgment authored by- Justice C. Hari Shankar
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