Trademark Rectification Petition can be filed in any High Court within whose jurisdiction the dynamic effect of the trademark registration is felt.
The Delhi High Court decided to hear 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, together, as similar question of law was raised in both the petitions. Both 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 Trade Mark Registry where the mark was registered or the same can be filed in any High Court having jurisdiction to hear the same?
In the first case, the Petitioner, Dr. Reddy Laboratories filed a trademark infringement suit in Delhi High Court, against Fast Cure Pharma for mark “RAZO” which was registered at Trade-Mark Registry, Kolkata. The said suit was decreed in favor of the Petitioner. However, during the pendency of the said suit, Petitioner sought an adjournment to file the present rectification petition seeking removal of the Respondent’s trademark “RAZOFAST’’ from the Trademark Register.
The issue before the Hon’ble Delhi Court was whether the petition will lie before it or before the Calcutta High Court which exercises territorial jurisdiction over the Trade-Mark office, where the trademark is registered.
In the second case, the Petitioner, Centre Consortium, filed the present petition for cancellation of the Defendants’ trademark “USDC”, as the same had not been in use for five-years. The trademark was registered in the Trade-Mark Registry, Ahmedabad.
The Hon’ble Court took cognizance of sections 47, 57 and 124 of the said Act, and has referred to and relied upon several relevant judgments, in the present case.
Under section 57 of the said Act, a rectification petition can be filed either in the High Court or in Trademark office where the mark is registered. However, under section 124, a rectification petition can be filed only in the High Court. The difference between section 57 and section 124 of the said Act has been discussed at length. The Hon’ble Court has elaborated the provisions of Section 124 (1) (ii), where it is said that the courts should determine if any plea of invalidity regarding registration of trademark, is tenable or not. In the event it is tenable, the court shall adjourn the infringement proceedings for 3 months in order to allow the aggrieved party to file a rectification petition.
The Hon’ble Court further 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 said Court analyzed the above judgment and elaborated on principle of “Dynamic effect” where the actions of the one party affect another. ‘Dynamic effect’ states that only the registered proprietor can use the trademark. The Court opined that due to rapid growth of internet and online markets, there is awareness regarding well known and popular brands of goods and services in the market and trade. Consequently, it has become easier to copy and infringe popular trademarks to pass off goods.
In order to establish the dynamic effect of the said trademark, the aggrieved party has to prove he has suffered due to the infringement of his trademark in that jurisdiction and therefore rectification petition would be maintainable before the High Court of that jurisdiction.
In the light of the above, the Hon’ble High Court held that in both the petitions, the Petitioners experienced the dynamic effect of the impugned trademarks within the jurisdiction of this Court and therefore the present Court has the jurisdiction for hearing the said petitions. The matters are now pending for final hearing and judgement.
Comments