Woltop India Pvt. Ltd. Vs Union of India

Woltop India Pvt. Ltd. Vs Union of India: Rectification petitions under Sections 47 & 57 of the Trade Marks Act, 1999, must be filed before the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry

Introduction: The case revolves around a trademark rectification dispute in which the petitioner, M/S Woltop India Pvt. Ltd., sought the transfer of its pending rectification petitions from the Registrar of Trademarks, Ahmedabad, to the Intellectual Property Division (IPD) of the Madras High Court.The petitioner argued that since a trademark infringement and passing off suit was already pending before the Madras High Court, the rectification proceedings should also be transferred to avoid conflicting decisions and ensure expeditious disposal.

The respondent, M/S Ace Assets, contested this claim, arguing that the appropriate jurisdiction for rectification proceedings was the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry office, which in this case was the Gujarat High Court.

The court had to decide whether it had the authority to transfer the rectification petitions under Article 226 of the Constitution of India and whether it had jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999 to entertain rectification petitions for trademarks registered with the Ahmedabad Trade Marks Registry.

Detailed Factual Background:The petitioner, M/S Woltop India Pvt. Ltd., had filed a civil suit (C.S.(Comm.Div.) No. 199 of 2023) before the Madras High Court against several defendants, including the fifth respondent, M/S Ace Assets, alleging trademark infringement and passing off.In parallel, the petitioner had also filed two rectification petitions (Nos. 272370 & 272372) before the Registrar of Trademarks, Ahmedabad, seeking the cancellation of trademarks registered under Nos. 4376003 (Class 27) and 4545395 (Class 35).

On 30 May 2024, the petitioner formally requested the Registrar of Trademarks, Ahmedabad, to transfer the rectification petitions to the IPD of the Madras High Court under Section 125(2) of the Trade Marks Act, 1999, but received no response.

Detailed Procedural Background:Following the lack of response from the Registrar, the petitioner filed the present writ petitions before the Madras High Court, seeking a Writ of Mandamus directing the Registrar of Trademarks, Ahmedabad, to transfer the rectification petitions to the Madras High Court.The maintainability of the writ petitions was challenged, prompting the petitioner’s counsel to argue that:Consolidation of proceedings was necessary under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023 (MHC IPD Rules) to facilitate the expeditious disposal of both the rectification petitions and the suit.The Supreme Court could not be approached under Article 139A of the Constitution of India or Section 25 of the Code of Civil Procedure, 1908 (CPC) since neither provision applied to rectification petitions.The Madras High Court could exercise jurisdiction under Article 226 of the Constitution, as part of the cause of action arose within its jurisdiction.

Issues Involved in the Case: 1. Whether the Madras High Court had jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999 to entertain rectification petitions for trademarks registered with the Ahmedabad Trade Marks Registry.2. Whether the Madras High Court could transfer the rectification petitions pending before the Registrar of Trademarks, Ahmedabad, to itself.3. Whether Article 226 of the Constitution conferred jurisdiction over the Ahmedabad Registrar, even though the rectification petitions originated in Gujarat.4. Whether consolidation of proceedings was permissible under Rule 14(1) of the MHC IPD Rules, 2023.

Petitioner (M/S Woltop India Pvt. Ltd.) argued that:Since a civil suit was already pending before the Madras High Court, it was necessary to transfer the rectification proceedings for a comprehensive adjudication.Rule 14(1) of the MHC IPD Rules, 2023, allowed consolidation of proceedings before the same forum to avoid conflicting decisions.Since the Registrar of Trademarks had failed to act on their transfer request, the petitioner was justified in seeking judicial intervention.

Respondent (M/S Ace Assets) argued that:The rectification petitions were filed before the appropriate Trade Marks Registry (Ahmedabad) based on Rule 4 of the Trade Mark Rules, 2017, which determines jurisdiction based on the principal place of business of the trademark owner (in this case, Surat, Gujarat).Only the Gujarat High Court had appellate jurisdiction over the Ahmedabad Trade Marks Registry, meaning the Madras High Court could not exercise jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999.If the petitioner was aggrieved by the Registrar's inaction, it should have approached the Gujarat High Court instead of filing a writ petition in Madras.

Detailed Discussion on Judgments Cited by Parties:The court analyzed previous judgments on High Court jurisdiction over rectification petitions, including:

1. Adiuvo Diagnostics Private Limited v. University Health Network, 2024 SCC OnLine Mad 185 – Held that jurisdiction under Article 226 is not determined solely by the location of the Patent Office.

2. The Hershey Company v. Dilip Kumar Bacha, MANU/DE/0904/2024 – Confirmed that rectification petitions must be filed in the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry.

3. Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma, 2023 SCC OnLine Del 5409 – Suggested a broader interpretation of jurisdiction, but this approach was not followed by the Madras High Court.

Detailed Reasoning and Analysis of Judge: The court held that:Sections 47 & 57 of the Trade Marks Act, 1999, explicitly refer to "the High Court", meaning the High Court with appellate jurisdiction over the Trade Marks Registry that made the entry.Ahmedabad Trade Marks Registry had jurisdiction over the disputed trademarks, meaning the Gujarat High Court was the appropriate forum.Allowing any High Court to entertain rectification petitions would create jurisdictional chaos, with multiple courts passing conflicting orders.Rule 14(1) of the MHC IPD Rules, 2023, did not override the Trade Marks Act and could not be used to transfer proceedings.

Final Decision:The writ petitions were dismissed, and the court directed the petitioner to approach the Gujarat High Court for appropriate relief. No costs were imposed.

Law Settled in This Case:Rectification petitions under Sections 47 & 57 of the Trade Marks Act, 1999, must be filed before the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry.The use of "the High Court" in the Trade Marks Act signifies a specific High Court, not any High Court.Consolidation under Rule 14(1) of the MHC IPD Rules, 2023, cannot override statutory jurisdiction under the Trade Marks Act.Article 226 jurisdiction cannot be used to bypass territorial limits imposed by the Trade Marks Act.

Case Title: M/S Woltop India Pvt. Ltd. vs Union of India

Date of Order: 20 February 2025

Case No.: W.P.(IPD) Nos. 30 & 32 of 2024

Neutral Citation: 2025:MHC:485

Name of Court: High Court of Judicature at Madras

Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

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