Infringement Suit Can Be Filed Before Any Court Within Whose Jurisdiction Dynamic Effect Of Trademark Registration Is Felt: Delhi High Court
|While considering a case as to whether a petition under Sections 47, 57 or 124 of the Trade Marks Act, 1999 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, the Delhi High Court held 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.
The High Court clarified that there is no reason why the petitioner, who can prefer and prosecute his infringement suit before this Court, should not be allowed to prefer and prosecute his removal/cancellation/rectification petition, likewise.
A Single Judge Bench of Justice C. Hari Shankar observed that “applications under Section 47 or Section 57 of the Trade Marks Act, 1999, as also under Section 124(1)(ii), would be maintainable not only before the High Courts within whose jurisdiction the offices of the Trade Mark Registry which granted the impugned registrations are situated, but also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt by the petitioner/applicant”.
Advocate Ranjan Narula appeared for the Petitioner, whereas CGSC Harish Vaidyanathan Shankar appeared for the Respondent.
As per the brief facts of the case, the Trade Mark Registry where the impugned mark was registered were situated outside Delhi, and hence it was alleged that the petition would be outside the territorial reach of the High Court. In the first case, the petitioner (Dr. Reddy’s Laboratories) had filed a suit against first respondent (Fast Cure Pharma) alleging that first respondent’s mark ‘RAZOFAST’ infringed the petitioner’s mark ‘RAZO’. Although the suit was decreed in the petitioner’s favour, the petitioner thereafter filed the present petition seeking rectification of the Trade Marks Register by removal of first respondent’s mark ‘RAZOFAST’.
Now, the dispute arose that whether the present rectification petition would lie before the Delhi High Court or before the Calcutta High Court, since ‘RAZOFAST’ mark was registered at Kolkata office of Trade Marks Registry. Similarly, in the second case, first respondent’s mark ‘USDC’ was registered at the Ahmedabad office of the Trade Marks Registry. Thus, again the question for consideration was whether the rectification petition would lie before the Delhi High Court Court in this case as well.
After considering the submission, the Bench 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 Bench noted that 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.
Relying on Girdhari Lal Gupta v. K. Gian Chand & Co. [1977 SCC OnLine Del 146], the Bench reiterated 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 Bench observed 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.
Although the Bench observed 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, the Bench clarified 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.
At last, the High Court listed the matter for further hearing on Oct 12, 2023.
Cause Title: Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma [Neutral Citation: 2023: DHC: 6324]
Click here to read/ download the Judgment