Woltop India Pvt. Ltd. Vs. Union of India

Territorial Jurisdiction in Trademark Rectification

Introduction: The petition sought a writ of mandamus directing the respondents to transfer rectification petitions pending before the Registrar of Trade Marks, Ahmedabad, to the Intellectual Property Division of the Madras High Court for consolidation and expeditious disposal alongside an existing civil suit.

Facts: The facts reveal that the petitioner had instituted civil suit C.S.(Comm.Div.) No. 199 of 2023 for alleged trademark infringement and passing off. Pending before the Ahmedabad Registrar were rectification petitions numbered 272370 and 272372 concerning trade mark registrations in classes 27 and 35. The petitioner requested transfer of these rectification petitions to the IPD of the Madras High Court for consolidation with the civil suit, contending that this was necessary to avoid multiplicity, delays, and conflicting judgments. Despite the petitioner’s letter dated 30.05.2024 invoking Section 125(2) of the Trade Marks Act, 1999, requesting transfer, no action was taken. Subsequently, these writ petitions were filed under Article 226 of the Constitution of India.

Procedure: Procedurally, the maintainability of the writ petitions was questioned. The petitioner argued that consolidation was fair and necessary under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023, and that neither Article 139A of the Constitution nor Section 25 of the Code of Civil Procedure applied to prevent this remedy. Counsel emphasized that the High Court’s power under Article 226 to issue writs extends where a cause of action arises within jurisdiction, regardless of the physical location of the authority to be directed.

In opposition, the respondents, particularly the fifth party, contended that jurisdiction rested with the High Court having appellate jurisdiction over the relevant Registrar’s office per Rule 4 of the Trade Marks Rules, 2017. They submitted that the writ petitions could have been filed in the Gujarat High Court where the Registrar of Trade Marks, Ahmedabad exercises authority. They denied any stay application in the civil suit and stated no impediment existed to its continued prosecution. The respondents invoked statutory provisions and procedural rules, emphasizing that only the High Court geographically competent over the Registry office can entertain rectification matters. They cautioned against judicial overreach under Article 226 when a statutory tribunal with specified jurisdiction exists.

Examination by Court: The Court examined applicable provisions from the Trade Marks Act, particularly Sections 47 and 57 relating to rectification powers, which had been amended by the Tribunals Reforms Act, 2021, replacing the erstwhile Appellate Board with the High Court. The Court noted the deliberate use of the definite article ‘the’ before ‘High Court’ in these Sections, signaling Parliament’s intent to confer jurisdiction on a specific High Court exercising appellate jurisdiction over a defined Registrar’s office. The Court contrasted this with the use of the indefinite article ‘a’ in other contexts.

The Court underscored Rule 4 of the Trade Marks Rules, 2017, designating the territorial jurisdiction of trademark registry offices, and confirmed that since the registered proprietor’s principal place of business was in Surat, Gujarat, the appropriate Registry was Ahmedabad. Hence, statutory jurisdiction over rectification petitions necessarily lay with the Gujarat High Court and itsTrademark Registry.

The Court reviewed jurisprudence including Adiuvo Diagnostics Private Limited v University Health Network (2024 SCC OnLine Mad 185), which held the appropriate Patent Office does not restrict writ jurisdiction, but distinguished this from statutory jurisdiction conferred in the TM Act for rectification matters. The Court clarified that jurisdiction under Sections 47 and 57 cannot be assumed by any High Court besides the one with territorial appellate jurisdiction, to avoid jurisdictional chaos and conflicting decisions, as multiple petitions for the same rectification could arise everywhere.

Further, the Court rejected the petitioner’s reliance on Rule 14(1) of the Madras High Court IPD Rules as conferring power to consolidate these proceedings beyond supervisory jurisdiction. It noted that commercial courts including district courts have jurisdiction for suits concerning trademarks, and consolidation across district and high court proceedings is not envisaged. The Court pointed out Section 124 of the TM Act prescribes stays of suits pending resolution of rectification petitions, thereby preventing conflict without needing transfer or consolidation in different fora.

The Court cited a contrary view held by a single judge in Nippon Paint Holdings Co. Ltd. v Suraj Sharma (MANU/TN/1388/2024) and the Delhi High Court in Dr. Reddy’s Laboratories Ltd v Fast Cure Pharma, but as this order was stayed by the Supreme Court, the Court declined to endorse it, reaffirming the territorial nexus principle for High Court jurisdiction.

Decision: The Court held that the Madras High Court did not have jurisdiction under Sections 47 and 57 of the TM Act to entertain the rectification petitions pending before the Ahmedabad Registrar. It stated that the writ petitions were discretionary remedies not suited to override statutory jurisdiction and procedural availability of remedies before the Gujarat High Court. The Court declined to grant the requested transfer or consolidation but left open the option to approach the Gujarat High Court for expeditious disposal of the rectification petitions. The writ petitions were thus dismissed without costs.

This judgment clarifies territorial jurisdiction and separation of powers under the TM Act and underscores the delicate balance between constitutional writ powers and statutory administrative adjudication. It emphasizes the need to respect jurisdictional boundaries based on territorial connections of trademark registrations to reduce litigation confusion, preserve orderly administration of justice, and avoid conflicting rulings.

Case Title: Woltop India Pvt. Ltd. Vs. Union of India and Others  

Order Date: 20th February 2025  

Case Number: W.P.(IPD) Nos. 30 & 32 of 2024  

Neutral Citation: 2025:MHC:485  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: The Honourable Mr. Justice Senthilkumar Ramamoorthy  

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi