The Madras High Court has observed that a High Court will have inherent powers to transfer to itself a rectification application pending in a Trademark registry that is not within its jurisdiction.

In that context the Bench of Justice Abdul Quddhose observed that, "The intention of the legislature would never have been for two forums dealing with the same subject matter to give two conflicting decisions. When part of cause of action has arisen within the jurisdiction of this Court and the plaintiffs have also filed a trademark infringement suit against the defendants as they are having the principal place of business at Chennai and part of cause of action has also arisen at Chennai, this Court is of the considered view that, when the legislature deliberately thought it fit to omit defining 'High Court' under the present legislation in force viz., Trade Marks Act, 1999, this Court is empowered to entertain this transfer application seeking for transfer of the rectification proceedings pending on the file of the Trademarks Registry, New Delhi to the file of this Court. Even the Registrar of Trademarks (Controller General of Patents, Designs and Trademarks) is having the power to transfer proceeding pending on the file of any of the trademarks registries in India, from one officer to another officer. Therefore, the intention of legislature would not have been to curtail the powers of the High Court to transfer the rectification application in a case where the infringement suit filed by the plaintiff is already pending on its file."

Senior Counsel PS Raman appeared for the plaintiffs, while Counsel Davesh Vashishtha appeared for the defendants.

The court was considering a plea by Nippon Paint Holdings Co Ltd to move a Rectification Petition from the Trademarks Registry in New Delhi to the Madras High Court.

The respondents opposed the transfer, citing lack of territorial jurisdiction over the New Delhi registry.

The plaintiff argued that Rule 14 of the Madras High Court Intellectual Property Rights Division Rules 2022 allowed consolidation of proceedings and asserted that since part of the infringement occurred within the court's jurisdiction, it could hear the case. They also highlighted the potential impact of the pending registration within the court's jurisdiction.

Conversely, the respondents contended that as the Rectification petition was with the New Delhi Registry, the Madras High Court lacked territorial jurisdiction, asserting that its original jurisdiction only covered the Chennai Registry.

The Court came to the following conclusions:

a) There is no statutory bar under the Trade Marks Act, 1999, for entertaining a transfer application to transfer the rectification application pending before the Trademarks Registry at New Delhi, to the file of this Court, when already there is an infringement suit pending on the file of this Court, which suit has been filed by the plaintiffs who are having its principal place of business at Chennai and a part of cause of action has also arisen at Chennai;

b) The statutory rights of the defendants will not be affected in the event of transfer of the rectification proceeding from the file of the Trademarks Registry to the file of this Court;

c) The forum conveniens for deciding the rectification application seeking for rectification of the registered trademark of the defendants is only before this Court, as only through a consolidated hearing of the infringement suit and the rectification application, an effective adjudication of the dispute can be rendered as the forum conveniens is only the Madras High Court;

d) The dynamic effect of registration of the identical trademark at New Delhi has an effect at Chennai within the jurisdiction of this Court, where the plaintiffs categorically pleaded that the infringed products are advertised and sold by the defendants. Hence, this Court by applying the 'dynamic effect' principle is empowered to transfer the rectification proceeding pending on the file of the Trademarks Registry, New Delhi to the file of this Court;

e) When the Registrar of Trademarks under Section 125 (2) of the Trade Marks Act, 1999, is empowered to suo motu transfer the rectification proceeding to the High Court, the High Court being a Constitutional Court and superior to the Trademarks Registry, is having the inherent power to transfer the rectification application from the file of the Trademarks Registry to the file of this Court.

f) The deliberate omission to define 'High Court' under the new Act, 1999, will make it clear that there is no statutory bar for this Court to entertain this transfer application and allow the same, that too when a trademark infringement suit filed by the plaintiffs, is already pending adjudication before this Court. When the Registrar of the Trademarks under Section 4 is empowered to transfer proceedings from one officer to another throughout India, this Court being a Constitutional Court is certainly empowered to exercise its inherent powers to transfer the rectification proceedings pending on the file of the Trademarks Registry, New Delhi to the file of this Court;

g) Allowing the rectification application to be adjudicated by the Trademarks Registry at New Delhi may result in conflicting decisions i.e., one rendered by this Court in the infringement suit filed by the plaintiffs and the other rendered by the Trademarks Registry, New Delhi in the rectification application filed by the plaintiffs. Undoubtedly, a decision in one will certainly have a bearing on the other;

h) If the test of reasonableness and fairness is applied, it would be proper to transfer the rectification application pending on the file of the Trademarks Registry, New Delhi to the file of this Court as the forum conveniens is only the Madras High Court.

i) The Intellectual Property Division Rules of Madras High Court as well as the Delhi High Court, allows consolidation of proceedings in the interest of justice and for uniformity, it is proper to consolidate both the infringement suit and the rectification application together and render a single decision adjudicating both the claims;

j) The Doctrine of harmonious construction has to be necessarily applied and in the interest of justice, the rectification proceedings pending on the file of the Trademarks Registry, New Delhi has to be transfered to the file of this Court;

k) The defendants will also not be prejudiced, if the rectification proceedings pending on the file of the Trademarks Registry, New Delhi is transfered to this Court and be heard along with the trademark infringement suit, as the defendants are already here to defend the infringement suit.

Accordingly, the petition was allowed.

Appearances:

Plaintiff: Senior Counsel PS Raman and Counsel Arun C Mohan

Respondent: Counsel Devesh Vashishtha

Cause Title: Nippon Paint Holdings Co. Ltd. & Anr. Suraj Sharma & Anr.

Click here to read/download the Judgment


Madras High CourtJustice Abdul QuddhoseTrademarks Act

Verdictum News Desk