Priya Enterprises Vs. Prestige Housewares (India) Ltd.: Effect of dynamic Effect on Trademark Cancellation
Introduction
The case Priya Enterprises vs. Prestige Housewares (India) Ltd. pertains to the rectification of a registered trademark and the territorial jurisdiction of the High Court in such matters. The petitioner, Priya Enterprises, sought the removal of the registered trademark "Prestige" from the register due to its alleged non-use by the respondent, Prestige Housewares (India) Ltd. A key legal issue was whether the Madras High Court had jurisdiction to entertain the rectification petition, given that the trademark was originally registered at the Calcutta Trade Marks Registry. This case explores the interpretation of Section 3 of the Trade and Merchandise Marks Act, 1958, which governs the jurisdiction of High Courts in trademark rectification matters.
Detailed Factual Background
Priya Enterprises, a sole proprietorship based in Saidapet, filed a petition seeking rectification of the register and removal of the trademark "Prestige" on grounds of non-use. The disputed trademark, bearing registration No. 141602 under Class 21, was initially registered in 1949 in the name of Plaster and Stampers Limited, Lancashire, England. It was later transferred to The Prestige Group Limited, England, in 1957. Subsequently, in 1989, the trademark was registered in the name of Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985.
Priya Enterprises was engaged in manufacturing rubber gaskets used in pressure cooker lids, which were compatible with multiple brands, including Prestige, Killicks, Videocon, and Usha. The petitioner used these brand names to indicate compatibility with corresponding pressure cooker models.
Prestige Housewares (India) Ltd. issued a cease-and-desist notice to Priya Enterprises, alleging unauthorized use of its registered trademark "Prestige." In response, Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the trademark from the register on the ground that the respondent had not used it for over five years. The respondent contested the jurisdiction of the Madras High Court, arguing that the trademark was originally registered at the Calcutta Trade Marks Registry, and hence, any rectification proceedings should be initiated before the Calcutta High Court.
Detailed Procedural Background
Priya Enterprises filed O.P. No. 474 of 1995 before the Madras High Court, challenging the validity of the respondent's trademark. The respondent subsequently filed an application (Application No. 3670 of 1997) seeking the dismissal of the petition on jurisdictional grounds, asserting that the rectification petition should have been filed in the Calcutta High Court.
The petitioner did not file a formal counter but contested the matter on the basis that the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry. The respondent argued that since the trademark was registered at the Calcutta Trade Marks Registry, rectification proceedings should be filed before the Calcutta High Court, as per Section 3 of the Trade and Merchandise Marks Act, 1958.
Issues Involved in the Case
Whether the Madras High Court had jurisdiction to entertain the rectification petition.
Whether the location of the registered office of the trademark proprietor (Bangalore) had any bearing on territorial jurisdiction.
Whether the rectification petition should be filed before the High Court having jurisdiction over the Trade Marks Registry where the trademark was originally registered.
Detailed Submission of Parties
The respondent argued that under Section 3 of the Trade and Merchandise Marks Act, 1958, jurisdiction for rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered. Since the "Prestige" trademark was registered at the Calcutta Trade Marks Registry, any rectification petition should be filed in the Calcutta High Court. The respondent relied on multiple precedents to support this argument.
The petitioner contended that since the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry, the Madras High Court had jurisdiction. The petitioner further argued that Section 3(e) of the Act was applicable since the original owner of the trademark was a foreign company with no place of business in India at the time of registration. Thus, the petitioner claimed that jurisdiction should be determined based on the respondent’s current business location.
Detailed Discussion on Judgments Cited by Parties
The respondent relied on the following judgments to support its contention that jurisdiction is determined by the location of the Trade Marks Registry where the trademark is registered:
Chunulal v. G.S. Muthiah & Bros., MANU/TN/0211/1959 : AIR 1959 Mad 359
Held that since the Registrar of Trade Marks is located in Bombay and the register is maintained there, the Bombay High Court has exclusive jurisdiction over rectification matters.
Vikas Manufacturing Co. v. Bharaj Manufacturing Co., 1980 (1) P.L.R. 16
The Punjab and Haryana High Court ruled that under Section 3, read with Section 5 of the Trade and Merchandise Marks Act, jurisdiction lies with the High Court within whose jurisdiction the Trade Marks Registry is located.
A recent decision in O.P. No. 803 of 1994 and Appln. No. 2495 in C.S. No. 5 of 1994
The Madras High Court held that an application under Section 56 of the Act can only be entertained by the High Court specified under Section 3 of the Act, meaning that jurisdiction is tied to the original registration location.
Detailed Reasoning and Analysis of Judge
Justice B. Akbar Basha Kadiri analyzed the provisions of Section 3 of the Trade and Merchandise Marks Act, 1958, and emphasized that jurisdiction for rectification proceedings is determined by the location of the Trade Marks Registry where the trademark was registered. The judge rejected the petitioner’s argument that the registered office of the respondent should influence jurisdiction, holding that the situs of the original trademark registration remains the determining factor.
The judge observed that prior to 1959, Calcutta was the sole Trade Marks Registry for all of India. After the establishment of regional registries, trademarks continued to be registered in their respective registries based on applications. Since the "Prestige" trademark was registered in Calcutta, rectification petitions could only be filed in the Calcutta High Court.
The judge further noted that even in cases where a foreign company initially registered a trademark, jurisdiction remains fixed at the location where the application was filed and the register is maintained. The address for service in India, as recorded in the Trade Marks Registry, was in Calcutta, further confirming the jurisdiction of the Calcutta High Court.
Final Decision
The Madras High Court ruled that it did not have jurisdiction to entertain the rectification petition. The petition was returned for presentation before the Calcutta High Court. The respondent’s application (A. No. 3670 of 1997) was allowed, and O.P. No. 474 of 1995 was directed to be filed before the proper court.
Law Settled in This Case
Jurisdiction for trademark rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered.
The situs of the original registration remains unchanged even if the trademark is later assigned to an entity in another jurisdiction.
The registered office of the trademark proprietor does not affect territorial jurisdiction for rectification proceedings.
Section 3 of the Trade and Merchandise Marks Act, 1958, is the governing provision for determining jurisdiction in trademark rectification cases.
Case Details
Case Title: Priya Enterprises Vs. Prestige Housewares (India) Ltd.
Date of Order: 03.04.1998
Case No.: O.P. No. 474 of 1995, Application No. 3670 of 1997
Neutral Citation: MANU/TN/1746/1998; 1998(Suppl.)ARBLR624(Madras); 1998(18)PTC539(Mad)
Court: Madras High Court
Judge: Justice B. Akbar Basha Kadiri
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
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