Priya Enterprises vs. Prestige Housewares (India) Ltd.

Fact of the Case:

Priya Enterprises, a sole proprietorship engaged in manufacturing rubber gaskets for pressure cookers, filed a petition for rectification of the trade mark "Prestige," registered under Trade Mark No. 141602 in Class 21. The trade mark was originally registered in 1949 in the name of an English company, later transferred to Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985. Priya Enterprises claimed that Prestige Housewares had not used the trade mark for over five years and sought its removal for non-use.

The respondent, Prestige Housewares (India) Ltd., issued a cease-and-desist notice to Priya Enterprises, restraining it from using the word "Prestige" in relation to its products. Fearing legal consequences, Priya Enterprises filed a petition for rectification, arguing that the respondent’s trade mark should be removed from the register. The respondent challenged the jurisdiction of the Madras High Court, asserting that the trade mark was registered at the Trade Marks Registry in Calcutta, and therefore, any rectification proceedings should be filed before the Calcutta High Court.

Procedural Background in Brief:

Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the respondent’s trade mark for non-use. Prestige Housewares (India) Ltd. filed an application challenging the jurisdiction of the Madras High Court, arguing that, under Section 3 of the Trade and Merchandise Marks Act, 1958, only the High Court within whose jurisdiction the Trade Marks Registry was located had authority over rectification matters. Since the trade mark was registered in Calcutta, the respondent contended that only the Calcutta High Court had jurisdiction.

The petitioner countered this argument by stating that the respondent’s principal place of business was in Bangalore, which fell under the jurisdiction of the Trade Marks Registry in Madras. The petitioner relied on Section 3(e) of the Act, which applies where the registered proprietor had no place of business in India at the time of registration. The matter was heard before Justice B. Akbar Basha Kadiri of the Madras High Court.

Reasoning of the Court:

The court examined Section 3 of the Trade and Merchandise Marks Act, 1958, which determines the jurisdiction of High Courts in trade mark matters. It found that the appropriate forum for rectification applications is the High Court within whose jurisdiction the Trade Marks Registry where the mark was registered is located. Since the trade mark "Prestige" was registered in the Calcutta Trade Marks Registry, only the Calcutta High Court had jurisdiction over rectification proceedings.

The court rejected the petitioner’s argument under Section 3(e), which applies when the registered proprietor had no place of business in India at the time of registration. The respondent’s trade mark registration explicitly mentioned an address for service in India at the time of registration, which was in Calcutta. The court held that this fact conferred jurisdiction on the Calcutta High Court and not the Madras High Court.

The court relied on previous judgments, including Chunulal Seetaram vs. G.S. Muthiah & Bros. (AIR 1959 Mad 359), Vikas Manufacturing Co. vs. Bharaj Manufacturing Co. (1980 (1) PLR 16), and a decision in O.P. No. 803 of 1994, which established that trade mark rectification proceedings must be filed before the High Court with jurisdiction over the Trade Marks Registry where the mark is registered.

Decision:

The Madras High Court held that it lacked jurisdiction to entertain the rectification petition. It directed that the petition be returned to the petitioner for presentation before the Calcutta High Court. The application challenging jurisdiction was allowed, and the main petition for rectification was ordered to be filed in the proper court.

Case Title: Priya Enterprises vs. Prestige Housewares (India) Ltd.

Date of Order: April 3, 1998

Case Number: O.P. No. 474 of 1995, Application No. 3670 of 1997

Neutral Citation: 1998(Suppl.) ARBLR 624 (Madras), 1998(18) PTC 539 (Mad)

Name of Court: Madras High Court

Name of Hon’ble Judge: Hon’ble Justice B. Akbar Basha Kadiri