Fact of the Case:
Lakha Ram Sharma filed an application under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, seeking rectification of Trade Mark No. 507445, which was registered on March 23, 1989, under Class 9 for electrical accessories and fittings, including switches, fuse units, wires, and electrical irons. The registered owner of the trade mark was Balar Marketing Pvt. Ltd., the first respondent in the case. The petitioner claimed prior use of the trade mark "KUNDAN/KUNDAN CAB/KUNDAN CABLES INDIA" since 1980 and filed a suit for permanent injunction before the District Court, Delhi, upon discovering the respondent’s trade mark registration.
During the proceedings in the District Court, the respondent disclosed that it held a registered trade mark, prompting the petitioner to file the rectification application, seeking the cancellation of the mark from the Trade Marks Register. The primary issue was territorial jurisdiction, as the trade mark was registered at the Trade Marks Registry in Chennai, but the petitioner had filed the rectification application before the Delhi High Court.
Procedural Background in Brief:
The petitioner initially filed a suit for permanent injunction before the District Judge, Delhi. Upon learning that the trade mark "KUNDAN/KUNDAN CAB" was already registered in favor of the respondent, the petitioner sought rectification before the Delhi High Court. The respondent objected, arguing that under Section 3 of the Trade and Merchandise Marks Act, the rectification application could only be filed in the Madras High Court, as the trade mark was registered at the Trade Marks Registry in Chennai.
The petitioner contended that since Balar Marketing Pvt. Ltd. was based in Delhi, the Delhi High Court had jurisdiction under Section 3(a) of the Act. However, the respondents relied on Section 3(b) of the Act, arguing that jurisdiction lay with the High Court within whose territorial limits the Trade Marks Registry was located—in this case, Chennai. The matter was heard before Justice A.K. Sikri of the Delhi High Court.
Reasoning of the Court:
The court analyzed Section 3 of the Trade and Merchandise Marks Act, 1958, which governs the jurisdiction of High Courts in trade mark matters. It found that the relevant provision for determining jurisdiction in rectification applications was Section 3(b), which states that the appropriate High Court for trade mark matters is the one within whose jurisdiction the Trade Marks Registry where the mark is registered is located. Since the trade mark "KUNDAN/KUNDAN CAB" was registered at the Trade Marks Registry in Chennai, the appropriate forum for appeals was the Madras High Court.
The court rejected the petitioner’s reliance on Section 3(a), which applies only to trade marks that were already on the register at the time of the Act’s commencement. In this case, the trade mark was registered after the Act came into force. The court also clarified that subsequent assignment of the trade mark to a party located in Delhi did not change the jurisdiction, as jurisdiction is determined based on where the original application for trade mark registration was filed and registered.
The court relied on previous judgments, including Priya Enterprises v. Prestige Housewares (India) Ltd., 1998 PTC (18) 539, Satya Narayan Khub Chand v. Rama Chandra Laxmi Narayan, AIR 1977 AP 360, and Vikas Manufacturing Company v. Maharaj Manufacturing Company, 1981 PTC 87. These cases reaffirmed that the jurisdiction for rectification applications remains with the High Court where the trade mark is registered, regardless of subsequent assignments or changes in business location.
Decision:
The Delhi High Court dismissed the petition for lack of jurisdiction and directed that the rectification application be returned to the petitioner for presentation before the appropriate court, i.e., the Madras High Court. The court emphasized that confining rectification proceedings to a single jurisdiction ensures uniformity and prevents forum shopping.
Case Title: Lakha Ram Sharma Vs. Balar Marketing Pvt. Ltd. & Ors.
Date of Order: October 10, 2001
Case Number: C.O. No. 19 of 1995
Neutral Citation: 2001 SCC OnLine Del 1142, (2002) 97 DLT 342, PLR 2002 131 Del 36, (2002) 24 PTC 115, (2001) 4 RAJ 276
Name of Court: Delhi High Court
Name of Hon’ble Judge: Hon’ble Justice A.K. Sikri
