Lakha Ram Vs Balar Marketing: Effect of dynamic Effect on Trademark Cancellation-Para ii
Introduction
The case of Lakha Ram Sharma vs. Balar Marketing Pvt. Ltd. and Ors. primarily revolves around the issue of territorial jurisdiction in rectification proceedings concerning a registered trademark. The petitioner, Lakha Ram Sharma, sought the rectification of the trademark "KUNDAN/KUNDAN CAB" registered in favor of Balar Marketing Pvt. Ltd. The dispute centered on whether the High Court of Delhi had the jurisdiction to entertain the rectification petition or if it should have been filed in the Madras High Court, given that the trademark was originally registered at the Trade Marks Registry in Chennai. The case provides an insightful analysis of the interplay between Section 3 of the Trade and Merchandise Marks Act, 1958, and procedural rules governing trademark rectification proceedings.
Detailed Factual Background
Lakha Ram Sharma, the petitioner, claimed that he had been using the trademark "KUNDAN/KUNDAN CAB/KUNDAN CABLES INDIA" since 1980 for electrical accessories, including switches, fuse units, and cables. However, he later discovered that respondent No. 1, Balar Marketing Pvt. Ltd., had obtained registration of the trademark "KUNDAN/KUNDAN CAB" under Class 9. This registration had been originally applied for by respondent No. 2, a firm based in Chennai. Before the application was granted, respondent No. 2 assigned the trademark to respondent No. 1, which is based in Delhi.
The petitioner had earlier filed a suit for a permanent injunction in the District Court of Delhi against the respondent's use of the trademark. In response, the respondent filed a counterclaim asserting its registered ownership of the mark. This prompted the petitioner to file a rectification petition, seeking the cancellation of trademark registration No. 507445 from the Trade Marks Register. The primary legal question that arose was whether the High Court of Delhi had jurisdiction to entertain the rectification petition, given that the trademark had been registered at the Chennai Trade Marks Registry.
Detailed Procedural Background
The petitioner filed the rectification petition under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The respondents contested the jurisdiction of the Delhi High Court, arguing that as per the territorial jurisdiction rules in the Act, the petition should have been filed before the Madras High Court. The respondents relied on Section 3(b) of the Act, which states that jurisdiction lies with the High Court within whose appellate jurisdiction the Trade Marks Registry is situated. Since the application for registration had been made at the Chennai Trade Marks Registry, they argued that only the Madras High Court had jurisdiction.
The petitioner, on the other hand, contended that after the assignment of the trademark to respondent No. 1, which was based in Delhi, the jurisdiction should shift to Delhi under Section 3(a) of the Act. The petitioner also argued that rectification proceedings should be treated as a suit under Section 107 of the Act, and since respondent No. 1 had its office in Delhi, the Delhi High Court had jurisdiction.
Issues Involved in the Case
Whether the High Court of Delhi had territorial jurisdiction to entertain the rectification petition.
Whether the assignment of a trademark during the pendency of a registration application altered the jurisdiction of rectification proceedings.
Whether Section 3(a) or Section 3(b) of the Trade and Merchandise Marks Act, 1958, was applicable to determine the proper forum for rectification.
Detailed Submission of Parties
The respondents argued that since the application for the registration of the trademark was originally filed at the Chennai Trade Marks Registry, the rectification petition could only be filed in the Madras High Court. They relied on the definitions provided under Section 2(1)(h) and the territorial jurisdiction provisions under Section 3(b) of the Act. The respondents also emphasized that under Rule 4 of the Trade and Merchandise Marks Rules, 1959, the appropriate office for rectification applications was the Trade Marks Registry where the trademark was registered. They cited judgments supporting the view that jurisdiction remains fixed with the original Trade Marks Registry, irrespective of any subsequent assignment.
The petitioner, however, contended that since the registered owner (respondent No. 1) was based in Delhi, the rectification petition should be maintainable in Delhi. The petitioner relied on Section 3(a) of the Act, which allows jurisdiction to be determined based on the proprietor’s principal place of business. He further argued that rectification proceedings should be treated akin to a civil suit, which should be heard where the affected party resides.
Detailed Discussion on Judgments Cited by Parties
The respondents relied on the following judgments to support their argument that the rectification petition should be filed in the Madras High Court:
Priya Enterprises v. Prestige Housewares (India) Ltd., 1998 (18) PTC 539
Held that rectification applications must be filed in the High Court that has jurisdiction over the Trade Marks Registry where the mark is registered.
Satya Narayan Khub Chand and Ors. v. Rama Chandra Laxmi Narayan, MANU/AP/0105/1977 : AIR 1977 AP 360
Reaffirmed the principle that the situs of the Trade Marks Registry determines jurisdiction for rectification petitions.
Vikas Manufacturing Company v. Maharaj Manufacturing Company, 1981 PTC 87
Ruled that subsequent assignment of a trademark does not change the jurisdiction of rectification proceedings.
The petitioner cited the following judgments:
Amrutanjan Ltd. v. Ashwin Fine Chemicals and Pharmaceuticals, 1991(2) Arb.L.R. 384 (Mad)
Argued that civil suits could be filed where the registered proprietor carries on business.
K.B. Venkatachala Mudaliar v. Vanaja Match Works, 1990 PTC 259
Addressed the relevance of principal place of business in determining jurisdiction.
Ramu Hosiery Rep. by M. Murugeshan v. Ramu Hosiery Rep. by Pandela Ramu and Anr., 1999 PTC 183
Discussed the implications of assignment on jurisdiction.
Detailed Reasoning and Analysis of Judge
Justice A.K. Sikri analyzed Section 3 of the Trade and Merchandise Marks Act, 1958, and ruled that Section 3(a) did not apply since it covered trademarks already on the register at the commencement of the Act. Instead, Section 3(b) applied to trademarks registered after the Act came into force, in which case the jurisdiction is based on the location of the Trade Marks Registry where the application was filed.
The judge emphasized that even though the trademark had been assigned to a Delhi-based entity, the situs of the trademark’s original registration determined jurisdiction. The judge noted that allowing jurisdiction to change upon assignment would create uncertainty and inconvenience. Thus, the appropriate forum for rectification remained the Madras High Court.
Final Decision
The Delhi High Court ruled that it lacked jurisdiction to hear the rectification petition. The petition was returned for presentation before the appropriate court, i.e., the Madras High Court.
Law Settled in This Case
The territorial jurisdiction for rectification petitions is determined by the location of the Trade Marks Registry where the original application was filed, not by the location of the assignee.
Subsequent assignment of a trademark does not alter the jurisdiction for rectification proceedings.
Section 3(b) of the Trade and Merchandise Marks Act, 1958, is the relevant provision for determining jurisdiction in cases of trademark rectification.
Case Details
Case Title: Lakha Ram Sharma vs. Balar Marketing Pvt. Ltd. and Ors.
Date of Order: 10.10.2001
Case No.: CO No. 19 of 1995
Neutral Citation: MANU/DE/1900/2001; 97(2002)DLT342; 2002(24)PTC115(Del); 2002(3)RCR(Civil)246
Court: Delhi High Court
Judge: Justice A.K. Sikri
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
