The Delhi High Court is examining jurisdictional issues in the Trade Marks Act, 1999, due to the absence of a ‘High Court’ definition. The court has referred the matter to a larger Bench to clarify the applicability of past decisions and determine if jurisdiction depends on the Trade Mark Registry’s location or the impact of registration.
The Delhi High Court has recently raised important queries regarding the jurisdictional scope and legislative intent related to rectification petitions under the Trade Marks Act, 1999. In a series of cases, the court highlighted a notable absence of a specific definition for ‘High Court’ in the 1999 Act, in contrast to the Patents Act, 1970, and the Designs Act, 2000, which contain such definitions.
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Justice Prathiba M Singh, while presiding over the matter, expressed concern, stating,
“both in the Patents Act, 1970 and in the Designs Act, 2000, the term ‘High Court’ has been defined. However, under the 1999 Act, the term ‘High Court’ has not been defined.”
This omission has led to uncertainties surrounding the legislative intent and the jurisdictional ambit of the court in entertaining rectification petitions.
The matter was elevated to a larger Bench for resolution, underscoring the importance of addressing the inconsistency in defining ‘High Court’ within different intellectual property statutes. The court emphasized that this lack of uniformity poses a substantial challenge in establishing a cohesive jurisdictional approach for rectification petitions under the Trade Marks Act, 1999.
“In view of the significance of the issues raised in these cases, including the question as to whether Girdhari Lal Gupta (supra) would be applicable in the context of the 1999 Act, as amended by the TRA, this Court is of the opinion that the issues deserve to be considered by a larger Bench,”
– said the court.
The reference to Girdhari Lal Gupta (supra) pertains to a case under the Designs Act, 2000, which is now being questioned for its applicability in the context of the amended Trade Marks Act, 1999.
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The matters were subsequently placed before the Acting Chief Justice for the formation of a larger Bench to address specific questions:
i) Whether the decision of the Full Bench in Girdhari Lal Gupta v. K Gian Chand Jain, rendered under the Designs Act, 2000, would be applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining the jurisdiction of a High Court under Section 57 of the 1999 Act?
ii) Whether the jurisdiction of the High Court under Section 57 of the 1999 Act would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the impugned trade mark registration?
iii) Whether the expression ‘The High Court’ can be differently construed in Sections 47, 57, and 91 of the 1999 Act?
In a batch of petitions, the Delhi High Court addressed concerns about the jurisdiction for handling rectification/cancellation petitions under Section 57 of the Trade Marks Act, 1999, in light of the Tribunal Reforms Act, 2021. The court acknowledged the importance of a larger Bench to discuss and decide on these crucial issues.
Justice Prathiba M Singh disagreed with the conclusions drawn in the case of Dr. Reddys Laboratories Ltd v Fast Cure Pharma, asserting that Girdhari Lal Gupta is inapplicable in the context of the Trade Marks Act. The court raised concerns about the interpretation and application of the Trade Marks Act, noting that allowing different High Courts to exercise original jurisdiction over rectification petitions raises questions regarding the legislative intent.
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The court underlined that the method proposed in Dr. Reddys, permitting various High Courts to handle rectification petitions, lacks explicit support from the structure of the 1999 Act. It emphasized that, unlike the Patents Act, 1970, the Trade Marks Act, 1999, and the Tribunal Reforms Act, 2021, do not clearly endorse the idea of multiple High Courts exercising original jurisdiction over rectification petitions.
The order was issued in the context of a series of rectification petitions filed by companies such as The Hershey Company, Kohinoor Seeds, and Liberty Footwear. During the proceedings, the court listened to representations from various advocates, including Urfee Roomi, Apoorva Bharati, Anuja Chaudhury, Ritesh Kumar, Anubhav Chhabra, Radhika Arora, Adarsh Ramanujan, Sulekha Agarwal, Soumya Singh, Saurav Agarwal, Shantanu Agarwal, Skanda Shekhar, Rajshekhar Rao, Kapil Wadhwa, RV Yogesh, Sindoora VNL, Vishakha Gupta, Twinkle Rathi, KV Pawan Kumar, Tejasvini Puri, Vasanthi Hariharan, and Gautam Wadhwa.
The Central Government Standing Counsel (CGSC) Harish Vaidyanathan Shankar, along with advocates Srish Kumar Mishra, Sagar Mehlawat, and Alexander Mathai Paikaday, appeared for the Union of India in the proceedings.
