Vide its order dated 4th September 2023, the Delhi High Court passed its orders in the matters of [1] Dr Reddy’s Laboratories Limited v/s Fast Cure Pharma and Anr and [2] Centre Consortium, LLC v/s Krunal Harjibhai Sardhara and Anr, [2023 SCC OnLine Del 5409] together as similar question of law was raised in both the petitions.
The petitions questioned whether the petition for removal or rectification of Trademark under the provisions of the Trademark Act, 1999, [hereinafter referred to as the said Act] can be filed only before the High Court who has the jurisdiction over the office of Trademark Registry where the mark was registered or before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt? In the said matter, the Court took cognizance of sections 47, 57 and 124 of the said Act and highlighted the difference in detail between section 57 and section 124 of Trademark Act.
The Hon’ble Court laid heavy emphasis on Girdhari Lal Gupta v. K. Gian Chand & Co., [1977 SCC OnLine Del 146] where it was held that rectification can not only be filed before the High Court having jurisdiction over the office of trademarks Registry but also in any High Court where a dynamic effect of the trademark is felt. The Court took the view that applications under Section 47 or Section 57 of the 1999 Act, as also under Section 124(1)(ii) of the 1999 Act, 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.
When the similar question was raised in another group of matters listed before the Delhi High Court, the court vide order dated 9th February 2024, took a conflicting view vis a vis the judgement of its coordinate bench.
Considering the large scale impact of the interpretation adopted, the court sought assistance from 2 Counsels as amici curiae.
In its order, the court discussed the order dated 4th September 2023, [the said order] passed by its coordinate Court in [1] Dr Reddy’s Laboratories Limited v/s Fast Cure Pharma and Anr and [2] Centre Consortium, LLC v/s Krunal Harjibhai Sardhara and Anr, [2023 SCC OnLine Del 5409] in depth.
The Court also heard the parties and the amici curiae at length.
While analysing the submissions and the arguments of the said order, the Court interpreted the history and the intent of the legislature while drafting the Trademark Act, 1999 and establishing the Tribunals and the Appellate Tribunals as also the enactment of the Tribunals Reforms Act [TRA] and the abolishment of the IPAB.
The Court observed that most of the issues which it framed had been considered by the ld. Single Judge in in Dr. Reddy Laboratories Ltd. (supra), which in turn had placed reliance on Girdhari Lal Gupta (supra), rendered under the Designs Act, 1999.
The Court noted that the said decision in Girdhari Lal Gupta (supra) has also been followed by this Court in Dr. Reddys Laboratories v. Controller of Patents (supra) when the Court noted that the term ‘High Court’ has been defined in both the Patents Act, 1970 and the Designs Act, 2000, unlike in the Trademark Act 1999 Act.
“The omission of a definition for 'High Court' within the 1999 Act, unlike its counterparts in the Patents Act, 1970 and the Designs Act, 2000 raises questions about the legislative intent and the jurisdictional scope of this Court to entertain rectification petitions under the 1999 Act. The inconsistency in defining 'High Court' across different IP statutes laws introduces a significant challenge in harmonizing the jurisdictional approach for rectification petitions under the 1999 Act.”
The Court expressed a prima facie opinion that the appropriate High Court for the rectification petition under Section 57 of the 1999 Act would be one within whose jurisdiction the Appropriate office of the Trademarks Registry office is located.
The Court differed with the ld. Single Judge in Dr. Reddy Laboratories Ltd. (supra), inter alia on the following points:
The ld. Single judge while passing the order, has relied upon the position laid down in Girdhari Lal Gupta (supra). However Girdhari Lal Gupta (supra) pertains to the interpretation of the Designs Act, 1911. The schemes envisaged under the Patents Act, 1970, Designs Act, 1911 and from Trademarks Act 1999 are different due to the nature of rights and remedies provided for. The Court reiterated the well-settled principles of statutory interpretation:
“the provisions in one statute are not to be interpreted by reference to the provisions in another statute.”
Therefore, according to the Court, the decision of Girdhari Lal Gupta (supra) was inapplicable to the present context of interpreting jurisdiction under the Trademark Act, 1999.
The Court was of the opinion that the Tribunal Reforms Act [TRA] did not intend to disturb or add to the existing rights and remedies under the Trademark Act, 1999 but merely to abolish certain tribunals and revert the authority to the Commercial Court or the High Court.
The court did not accept that the ‘dynamic effect’, as interpreted by the ld. Full Bench in Girdhari Lal Gupta (supra), which presumes casus omissus and opined that the application of the dynamic effect concept would contradict the principle of expressio unius est exclusio alterius (meaning: the express mention of one thing excludes all others), which could not have been the intention of the Legislature.
The Court, inert alia, opined that the Trademark Act, 1999 did not provide any guidance on whether the jurisdiction applicable to the High Court should diverge from that of the Registrar, which left room for interpretation about the basis for such a differentiated approach.
The Court disagreed inter alia, with the approach recommended by the ld. Single Judge, allowing different High Courts to exercise original jurisdiction over rectification petitions as it would confer different High Courts with original jurisdiction. Though the Court lauded the spread of trade mark disputes across the country to all High Courts as a positive move, but acknowledged that the basis for such a course of action should exist in the legislation.
The Court questioned as to whether Girdhari Lal Gupta (supra) would be applicable in the context of the Trademark Act, 1999, as amended by the TRA and directed that the issues raised deserve to be considered by a larger Bench and placed the matters before Hon’ble the Acting Chief Justice for constitution of a larger Bench for deciding the following questions and any other questions that may be arise:
i) Whether the decision of the ld. Full Bench in Girdhari Lal Gupta (supra), rendered under the Designs Act, 1911, would be applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining 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?
The quandary created by these opposing views will be solved when the questions raised are answered by a larger bench. Meanwhile, the fate of the trademark infringement matters already filed before different High Courts could be in a limbo, if these high Courts decide to stay the proceedings pending the hearing and final orders of the bench.