Lakha Ram Sharma Vs. Balar Marketing Pvt. Ltd

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

Chunulal Seetaram vs. G.S. Muthiah and Brothers & Ors.

Trademark Rectification has to be filed before the High Court under which Trademark Registry, granting Trademark Registration is situated

Fact of the Case:

Chunulal Seetaram filed an appeal under Section 76 of the Trade Marks Act, 1940, against the decisions of the Registrar of Trade Marks regarding the rectification of the Trade Marks Register. 

The main issue in the case revolved around the determination of the High Court having jurisdiction over appeals related to trade mark rectification. 

The appellant approached the Madras High Court, challenging the decisions of the Registrar of Trade Marks regarding rectification matters. The respondents objected, arguing that the proper jurisdiction for such appeals was the Bombay High Court, as the office of the Registrar of Trade Marks was situated in Bombay, and the Trade Marks Register was maintained there.

Procedural Background in Brief:

The appellant filed appeals against the Registrar's decision on trade mark rectification before the Madras High Court under Section 76(1) of the Trade Marks Act, 1940. The respondents raised an objection, contending that since the Registrar’s Office and the Trade Marks Register were in Bombay, any appeal against the Registrar’s decisions should be filed before the Bombay High Court. The case was heard by Chief Justice P.V. Rajamannar and Justice Ganapatia Pillai of the Madras High Court. The court had to determine whether the Madras High Court had jurisdiction to hear these appeals or whether the proper forum was the Bombay High Court.

Reasoning of the Court:

The court ruled that under Section 76(1) of the Trade Marks Act, 1940, an appeal against the Registrar’s decision must be filed in the High Court having jurisdiction. Since the Registrar of Trade Marks’ office was located in Bombay and the rectification of the trade mark register was made there, the appropriate forum for appeals was the Bombay High Court. 

The court relied on previous judgments, including Abdul Ghani v. Registrar of Trade Marks, AIR 1947 Lah 171, Tapton Tea Co. v. Liptons Ltd., MANU/PH/0131/1954, and Satyadeo v. Amrit Dhara Pharmacy, AIR 1958 All 823, all of which held that appeals related to trade mark rectification must be filed before the High Court where the Registrar’s Office is located.

The Madras High Court concluded that accepting appeals in different High Courts based on the applicant’s location would lead to jurisdictional confusion and contradictory rulings, which was not the intention of the legislature.

Decision:

The Madras High Court held that the appeals were incompetent and directed the memoranda of appeals to be returned to the appellants for presentation before the proper court, i.e., the Bombay High Court, within two months. The appellants were also directed to pay half the costs of the appeal to the respondents.

Case Title: Chunulal Seetaram Vs. G.S. Muthiah and Brothers & Ors.

Date of Order: February 17, 1959

Case Number: A.A.O. Nos. 74 of 1955 and 363 of 1956

Neutral Citation: AIR 1959 Mad 359, (1959) ILR Madras 823, 1959-72 LW 298, (1959) IMLJ 304

Name of Court: Madras High Court

Name of Hon’ble Judges: Hon’ble Chief Justice P.V. Rajamannar and Hon’ble Justice Ganapatia Pillai

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

Alpha Foundation for Education and Research Vs. Akara Education Private Limited

Rule 45(2) of the Trade Marks Rules, 2017 is procedural and directory in nature

Fact of the Case:

Alpha Foundation for Education and Research, a charitable educational trust established in 1993, had been using the trademarks "AKARA," "AKARA STAR KIDS," and its associated logo for its educational institutions since 2011. The plaintiff was the registered proprietor of these trademarks under Classes 41 and 16. Akara Education Private Limited applied for the registration of the trademark "AKARA" in Classes 9, 37, and 41. The appellant opposed these applications, claiming that the impugned trademark was identical to or deceptively similar to its own, leading to confusion among the public.

The opposition notices were filed by the appellant on various dates in 2017, challenging the respondent's trademark applications. However, the Assistant Registrar of Trade Marks rejected the opposition, treating it as abandoned on procedural grounds due to a delay in filing evidence. The appellant challenged this order, arguing that it was not given a fair opportunity to present its case.

Procedural Background in Brief:

The appellant filed opposition notices in 2017, objecting to the respondent's trademark applications. The Assistant Registrar of Trade Marks fixed different hearing dates for the cases. The appellant submitted its evidence under Rule 45(1) of the Trade Marks Rules but filed it after the stipulated two-month period. The Assistant Registrar rejected the evidence for being belated and held that the opposition was abandoned.

The appellant challenged these orders before the Intellectual Property Appellate Board (IPAB), but due to the dissolution of IPAB, the cases were transferred to the Madras High Court. The matter was heard by Justice N. Seshasayee, who examined whether the rejection of the opposition on procedural grounds was justified.

Reasoning of the Court:

The court observed that the Assistant Registrar failed to comply with Section 21(3) read with Rule 44(1) of the Trade Marks Rules, 2017 and Rule 49(1) of the Trade Marks Rules, 2022, which require the Registrar to serve a copy of the counter-statement on the opponent. The court found that there was no proof that the counter-statement was duly served on the appellant, which was a crucial procedural requirement before evidence could be demanded from the opponent.

The court further held that Rule 45(2) of the Trade Marks Rules, 2017, was procedural and directory in nature and could not override the substantive right of the opponent to contest the registration of a trademark. The Registrar's decision to reject the opposition merely on the ground of delay in submitting evidence was found to be arbitrary and inconsistent with the purpose of maintaining the purity of the trademark register.

The court reasoned that the Registrar could not insist on the submission of evidence unless the counter-statement had been properly served on the opponent. Since the Registrar failed to prove that the counter-statement was duly served, the rejection of the opposition as abandoned was unsustainable. The benefit of doubt had to be given to the opponent, as what was at stake was the statutory right to oppose the registration of a potentially conflicting trademark.

Decision:

The Madras High Court set aside the impugned orders of the Assistant Registrar of Trade Marks. It directed the Registrar to restore the opposition along with the appellant’s evidence and pass a fresh order on merits within four months. The appeals were allowed with no order as to costs.

Case Title: Alpha Foundation for Education and Research Vs. Akara Education Private Limited & Anr.
Date of Order: March 13, 2024
Case Number: (T)CMA(TM) No.82 of 2023 and other connected appeals
Neutral Citation: Not specified
Name of Court: Madras High Court
Name of Hon’ble Judge: Hon’ble Justice N. Seshasayee

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

Abdul Ghani Ahmad Vs. Registrar of Trade Marks

The cause of action for filing appeal against Order passed by Registrar of Trademark arise in that High Court where the decision was made by the Registrar of Trademarks

Introduction: 

The case of Abdul Ghani Ahmad vs. Registrar of Trade Marks addressed a significant issue concerning the interpretation of “the High Court having jurisdiction” under Section 76(1) of the Trade Marks Act, 1940. The primary legal question was whether the Lahore High Court had jurisdiction to entertain appeals against the Registrar of Trade Marks, whose office was situated in Bombay. The decision settled the principle that appeals against orders of the Registrar must be filed in the High Court within whose territorial jurisdiction the Registrar's office is located unless an exception applies under the proviso to Section 76(1).

Detailed Factual Background:

The appellants, including Messrs. Abdul Ghani, Haji Ahmad, and Mohammad Sidik, applied for the registration of the trademark “Bombay Cloth House” with the Registrar of Trade Marks in Bombay. Separately, another appellant, Gowardhan Das, proprietor of Punjab Pharmaceutical Works, applied for the registration of the trademarks “Chinol” and “Grippe Wassar.” The Registrar of Trade Marks rejected these applications on different dates, specifically March 31, 1945, January 11, 1945, and March 23, 1945.

Following these rejections, the applicants requested the Registrar to provide written reasons for the refusals, as per Section 14(2) of the Trade Marks Act. Upon receiving these reasons, they decided to challenge the Registrar's decisions by filing appeals before the Lahore High Court under Section 76(1) of the Trade Marks Act.

Detailed Procedural Background:

The appeals were filed before the Lahore High Court, raising a preliminary jurisdictional question: whether the Lahore High Court had the authority to entertain appeals against the decisions of the Registrar of Trade Marks, whose office was located in Bombay. The appellants contended that their applications for trademark registration had been sent from Lahore, and therefore, the Lahore High Court should have jurisdiction. The Registrar of Trade Marks opposed this claim, arguing that the appeals could only be filed in the High Court within whose jurisdiction the Registrar’s Office was situated, i.e., the Bombay High Court.

The Lahore High Court examined the statutory framework of the Trade Marks Act and considered the impact of territorial jurisdiction on appeals against the Registrar’s decisions. The matter was heard by Justice Abdur Rahman, who had to determine the proper forum for such appeals.

Issues Involved in the Case:

Whether the Lahore High Court had jurisdiction under Section 76(1) of the Trade Marks Act, 1940, to entertain appeals against the decisions of the Registrar of Trade Marks, whose office was located in Bombay?

Detailed Submission of Parties:

The appellants argued that the Trade Marks Act does not expressly exclude the jurisdiction of the High Court within whose territory the application was filed. Since the applications for trademark registration were sent from Lahore, the Lahore High Court should have jurisdiction over the appeals. Section 20 of the Civil Procedure Code (CPC), which governs territorial jurisdiction, should be applied by analogy to grant jurisdiction to the Lahore High Court. The appellants had no control over where the Registrar’s Office was located, and therefore, jurisdiction should be determined based on the applicants’ residence or place of business.

The respondent argued that jurisdiction under Section 76(1) of the Trade Marks Act was tied to the location of the Registrar’s Office, which was in Bombay. Allowing multiple High Courts to entertain appeals would lead to conflicting decisions and jurisdictional chaos. The Trade Marks Act was a special law, and general principles of civil jurisdiction under the CPC did not apply. The proviso to Section 76(1) of the Trade Marks Act explicitly provided for exceptions where jurisdiction could be determined based on pending litigation concerning the disputed trademark, but this proviso did not apply in the present case.

Detailed Discussion on Judgments Cited by the Parties:

The respondents relied on the legal principles and cases. In Rangoon Botatouing Co. Ltd. v. Collector of Rangoon (40 Cal 21 (27)), the case emphasized that in matters governed by special statutes, jurisdiction should be strictly interpreted based on the language of the statute. In Special Officer Salsette Building Sites v. Dorabhai Bezonji Motivalla (20 IC 763 (PC)), the Privy Council held that when a statute provides a specific appellate forum, appeals must be filed before the designated authority and not any other court. In Nur Mahomed v. S.M. Solaiman (49 CWN 10 (17)), the Calcutta High Court ruled that jurisdiction cannot be inferred from the plaintiff’s or petitioner’s place of residence unless expressly provided by statute.

Detailed Reasoning and Analysis of Judge:

Justice Abdur Rahman ruled that the Lahore High Court lacked jurisdiction to entertain the appeals for the following reasons. 

The phrase "High Court having jurisdiction" in Section 76(1) of the Trade Marks Act must be interpreted based on the location of the Registrar’s Office. 

Jurisdiction in such matters does not arise from where the application was sent or where the applicant resides. The cause of action for the appeal arose where the decision was made, i.e., in Bombay.

Applying general principles of civil jurisdiction under the CPC was inappropriate because the Trade Marks Act was a special statute with its own jurisdictional framework. The proviso to Section 76(1) allowed an appeal to be filed in a different High Court only if a trademark-related suit was already pending there. Since no such suit was pending in Lahore, this proviso was inapplicable. Allowing multiple High Courts to hear appeals against the Registrar’s decisions would create a risk of contradictory judgments, which would be against legislative intent.

Final Decision

The Lahore High Court dismissed the appeals on the ground of lack of jurisdiction and directed the appellants to file the appeals in the proper High Court, i.e., the Bombay High Court. However, since the issue was one of first impression, the court ordered that each party should bear its own costs.

Law Settled in This Case:

Appeals against decisions of the Registrar of Trade Marks under Section 76(1) of the Trade Marks Act, 1940, must be filed in the High Court within whose jurisdiction the Registrar’s Office is located. The place from which a trademark application was sent or the residence of the applicant is irrelevant in determining appellate jurisdiction. The Trade Marks Act is a special statute, and its appellate jurisdiction must be determined based on its own provisions, not by analogy to general civil procedure principles. The proviso to Section 76(1) applies only when a trademark-related suit is already pending in a High Court or District Court and does not otherwise alter the jurisdiction of appeals.

Case Title: Abdul Ghani Ahmad Vs. Registrar of Trade Marks

Date of Order: May 29, 1946

Case Number: First Appeal Nos. 170 to 172 of 1945

Citation: AIR 1947 Lah 171

Name of Court: Lahore High Court

Name of Judge: Hon’ble Justice Abdur Rahman

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

Nirav Nimmi Corporation Vs. Ashish Traders

Court can grant interim injunction pending rectification petition under Section 124(5) of Trademarks Act 1999

Facts of the Case:

Nirav Nimmi Corporation, a proprietary firm engaged in the spice business, has been using the trademark "ARJUN" since 1988. The plaintiff alleged that Ashish Traders, which was initially a distributor of the plaintiff’s products, started selling products under the "ARJUN" brand without authorization and falsely labeling them as “marketed” by the defendant. The plaintiff claimed trademark infringement, passing off, and copyright violation and sought an injunction to restrain the defendant from using the trademark.

Procedural Background:

The plaintiff filed a trademark suit in 2024 before the 4th Additional District Judge, Mehsana at Visnagar, seeking an injunction. The Trial Court granted an ex parte ad interim injunction on October 28, 2024, restraining the defendant from using the "ARJUN" mark. The defendant contested the suit, arguing that it had permission from Subhashbhai Shah, the brother of the plaintiff, who claimed prior rights over the "ARJUN" mark. The Trial Court eventually rejected the plaintiff’s injunction application on December 30, 2024, holding that no prima facie case was made out. The plaintiff then filed an Appeal from Order (AO) No. 9 of 2025 before the Gujarat High Court, challenging the rejection of the injunction.

Reasoning of the Court:

The Gujarat High Court found that the Trial Court erred in rejecting the injunction application. The plaintiff held trademark registration for "ARJUN" since 1993 and a copyright registration since 2006, which established prima facie statutory rights. The court held that the SMV firm, originally owned by the plaintiff’s father and later by his brother Subhashbhai Shah, was dissolved in 1994. As per Clause 18 of the partnership deed, no goodwill was transferred. Subhashbhai ceased business operations in 2013, making his claims of prior rights untenable. The defendant had no valid license or written authorization to use the "ARJUN" mark, violating Sections 28, 29, and 34 of the Trade Marks Act, 1999. The Trial Court wrongly relied on the pending rectification petition filed by Subhashbhai Shah in 2022, ignoring that Section 124(5) of the Trade Marks Act allows for interim relief even during rectification proceedings. The defendant’s use of identical trade dress and packaging clearly indicated an intent to mislead consumers, amounting to passing off and trademark infringement.

Decision:

The Gujarat High Court set aside the Trial Court’s order and granted an interim injunction in favor of the plaintiff, restraining the defendant from using the "ARJUN" mark. The appeal was allowed, reinforcing the plaintiff’s exclusive trademark rights.

Case Title: Nirav Nimmi Corporation Vs. Ashish Traders

Date of Order: March 7, 2025

Case Number: R/AO/9/2025

Neutral Citation: 2025:GUJHC:14665

Name of Court: Gujarat High Court

Name of Hon’ble Judge: Hon'ble Mr. Justice Maulik J. Shelat

Eureka Forbes Limited Vs. Om Sai Enterprises

Non denial of admission denial affidavit does amount to be admission of documents

Facts of the Case:

Eureka Forbes Limited, a leading company engaged in manufacturing and selling home appliances, including water purifiers under the well-known trademark AQUAGUARD, discovered that Om Sai Enterprises and its associates were selling counterfeit spare parts and consumables under identical or deceptively similar marks. The defendants’ products bore trademarks such as AQUAGUARD, AQUASFILTER, and ACTIVE COPPER MAXX, misleading consumers and infringing upon the plaintiff’s intellectual property rights. The plaintiff alleged trademark and copyright infringement and sought a permanent injunction along with damages and costs.

Procedural Background:

The suit was filed on August 17, 2023, seeking to restrain the defendants from infringing the plaintiff’s trademarks. On August 21, 2023, the Delhi High Court granted an ex parte ad interim injunction, restraining the defendants from using the disputed trademarks. Local Commissioners were appointed, who seized counterfeit products from the defendants' premises on August 28, 2023.

Defendant No. 1 settled the case on November 27, 2024, and the suit was decreed against them. Defendant No. 3 stopped appearing after May 2, 2024, and was proceeded against ex parte. The plaintiff then sought a decree against Defendant No. 3 under Order VIII Rule 10 of the CPC.

Reasoning of the Court:

The court found that Defendant No. 3 had failed to file a written statement, and as per Rule 3 of the Delhi High Court (Original Side) Rules, 2018, all averments in the plaint were deemed admitted. The plaintiff had submitted extensive evidence, including trademark registrations, sales invoices, and an investigation report proving that the defendants were selling counterfeit products. The Local Commissioner’s report also revealed that Defendant No. 3 obstructed legal proceedings and attempted to disrupt the evidence collection process.

The court held that the plaintiff had established a clear case of trademark and copyright infringement. The defendants had taken unfair advantage of the plaintiff’s goodwill, deceived consumers, and dishonestly adopted its trademarks and artistic works without any valid explanation.

Decision:

The Delhi High Court granted a permanent injunction against Defendant No. 3, restraining them from selling counterfeit goods using the plaintiff’s trademarks. The court also awarded ₹2,00,000 in damages and costs in favor of the plaintiff. The suit was disposed of accordingly, with directions to draw up a decree.

Case Title: Eureka Forbes Limited Vs. Om Sai Enterprises

Date of Order: March 4, 2025

Case Number: CS(COMM) 567/2023

Neutral Citation: 2025:DHC:1535

Name of Court: Delhi High Court

Name of Hon’ble Judge: Hon'ble Mr. Justice Amit Bansal

Jansen Pharmaceutica NV Vs. Deputy Controller of Patents and Designs

Order rejecting Patent Application must be reasoned order

Facts of the Case:

Jansen Pharmaceutica NV filed an Indian patent application (No. 1337/KOLNP/2008) for a dry formulation of tipifarnib, a composition designed for intravenous administration. The formulation aimed to benefit patients with impaired oral intake. The Patent Office rejected the application under Section 3(e) of the Patents Act, 1970, stating that the invention lacked technical advancement, was merely a mixture of known substances, and did not demonstrate an inventive step.

Procedural Background:

The First Examination Report was issued on August 12, 2014, and the applicant submitted objections on August 11, 2015. A hearing notice was issued on April 2, 2018, and ultimately, the Deputy Controller of Patents rejected the application on July 31, 2018. The applicant challenged this rejection before the Calcutta High Court, arguing that the order lacked reasoning, did not properly analyze prior art, and failed to apply settled legal principles regarding inventive step.

Reasoning of the Court:

The court found that the Patent Office failed to provide detailed reasoning for rejecting the patent, particularly regarding the lack of inventive step, without proper analysis of prior art documents (D1, D2, D3). The conclusion that the composition was a mere admixture was made without evaluating whether it had synergistic properties under Section 3(e). The rejection also failed to apply the principles laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2016 (65) PTC 1 (DB)) and Agriboard International LLC v. Deputy Controller of Patents (2022 Delhi HC), which require a structured assessment of inventive step.

Decision:

The Calcutta High Court set aside the rejection and remanded the matter to the Controller of Patents for reconsideration. The court directed the Controller to decide the case afresh within three months after granting a right of hearing to the applicant. It clarified that it had not adjudicated on the merits, leaving all questions open for reassessment.

Case Details:

Case Title: Jansen Pharmaceutica NV Vs. Deputy Controller of Patents and Designs

Date of Order: March 4, 2025

Case Number: IPDPTA/30/2023

Name of Court: Calcutta High Court 

Name of Hon’ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur

Kiranakart Technologies Pvt. Ltd. Vs. Mohammad Arshad

Allegation of non use deemed admitted as registered proprietor did not file reply. Trademark Rectified on the ground of non use

Facts of the Case: Kiranakart Technologies Pvt. Ltd., a well-known startup operating under the brand name ZEPTO, provides quick commerce services across India. The company discovered that Mohammad Arshad had registered the trademark "ZEPTO" under Class 35 in 2014 but had not used it for the claimed services. Kiranakart filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the respondent's mark due to non-use.

Procedural Background:The Delhi High Court issued notice to the respondents on May 17, 2024. Respondent No. 2 appeared, but Respondent No. 1, Mohammad Arshad, initially appeared on September 25, 2024 and later stopped attending hearings. Despite multiple opportunities, he neither filed a reply nor contested the case. The petitioner provided evidence of its widespread use and promotion of the ZEPTO mark, while also demonstrating that the respondent had not used the mark for over eight years.

Reasoning of the Court:The court noted that since Respondent No. 1 failed to contest the case, the allegations of non-use were deemed admitted. Relying on precedents such as DORCO Co. Ltd. v. Durga Enterprises (2023 SCC OnLine Del 1484), the court emphasized that a trademark must be genuinely used for the registered services. In this case, the respondent’s mark ZEPTO had not been used in Class 35 for a continuous period exceeding five years, making it liable for cancellation under Section 47(1)(b) of the Trade Marks Act.

Decision:The court ordered the removal of the trademark ZEPTO (Reg. No. 2773519) in Class 35 from the Trade Marks Register. It directed the Trade Marks Registry to cancel the registration and dispose of all pending applications.

Case Details

Case Title: Kiranakart Technologies Pvt. Ltd. Vs. Mohammad Arshad 

Date of Order: March 3, 2025

Case Number: C.O. (COMM.IPD-TM) 62/2024

Neutral Citation: 2025:DHC:1500

Name of Court: Delhi High Court

Name of Hon’ble Judge: Hon'ble Mr. Justice Amit Bansal

Aishwarya Agriprocessors Vs. Sri Aishwarya Food Industries

Unseasoned Order is liable to be set aside

Facts of the Case:Sri Aishwarya Food Industries Pvt. Ltd. filed a suit against Aishwarya Agriprocessors Pvt. Ltd. for trademark infringement, alleging unauthorized use of the mark "Aishwarya/Aiswarya" in selling, marketing, and advertising their products. The plaintiff obtained an ex parte ad interim injunction restraining the defendants from using the disputed mark. The defendants challenged this injunction, arguing that they had an independent right to use the mark and sought its vacation.

Procedural Background:The District Judge (Commercial Court) at Tis Hazari Courts, Delhi, granted an ex parte ad interim injunction on September 20, 2024, restraining the appellants from using the mark. The appellants filed an application under Order XXXIX Rule 4 CPC, seeking the vacation of this injunction, but it was dismissed by the Trial Court on December 13, 2024. The appellants then approached the Delhi High Court, challenging the orders.

Reasoning of the Court:The Delhi High Court observed that the order of December 13, 2024, passed by the Trial Court was un reasoned. The respondents fairly conceded that the matter should be reconsidered by the Trial Court. The High Court found it appropriate to set aside the impugned order and remand the matter to another Commercial Court within the same District for fresh consideration. It directed that the case be reassigned by the Principal District and Sessions Judge (Central) and listed before the new court on December 24, 2024. The transferee Judge was instructed to decide the pending applications afresh within three weeks without being influenced by previous observations.

Decision:The Delhi High Court set aside the Trial Court’s order dated December 13, 2024, and directed the case to be transferred to another Commercial Court for fresh consideration. Additionally, the costs imposed on the appellants for the late filing of their written statement were waived. The appeal and pending applications were disposed of accordingly.

Case Title: Aishwarya Agriprocessors  Vs. Sri Aishwarya Food Industries

Date of Order: December 20, 2024

Case Number: FAO (COMM) 246/2024

Neutral Citation: 2025:DHC:9855:DB

Name of Court: Delhi High Court

Name of Hon’ble Judges: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

Eureka Forbes Limited vs. Mr. Vinod K

Facts of the Case:Eureka Forbes Limited, engaged in manufacturing and selling home appliances such as water purifiers under the trademark ‘AQUAGUARD,’ discovered that the defendant, Mr. Vinod K., was selling counterfeit spare parts under similar trademarks and labels. The defendant's products closely resembled those of the plaintiff, misleading consumers. Eureka Forbes claimed trademark and copyright infringement and sought an injunction.

Procedural Background :The suit was filed on May 19, 2023, seeking an injunction against the defendants. On May 23, 2023, the Delhi High Court granted an ex parte ad interim injunction, restricting the defendants from using the disputed trademarks. Local Commissioners were appointed, who seized infringing products from the defendants' premises. Defendant No. 1 failed to appear in court, and Defendant No. 2 settled the case on December 11, 2024. Defendant No. 1 was proceeded against ex parte, and the plaintiff sought a decree under Order VIII Rule 10 CPC.

Reasoning of the Court:The plaintiff's trademark ‘AQUAGUARD’ was well-known, registered since 1992, and had acquired goodwill. The defendant's products were nearly identical, using similar names, labels, and packaging, causing consumer deception. As no written statement was filed by Defendant No. 1, the court presumed all averments in the plaint to be true. The defendant’s actions constituted trademark infringement, copyright violation, and passing off. The conduct of Defendant No. 1, including threatening the court-appointed commissioners, warranted punitive damages.

Decision:The court granted a permanent injunction against Defendant No. 1, restraining further infringement. Damages and costs of ₹3,00,000 were awarded to the plaintiff. The suit was decreed under Order VIII Rule 10 CPC due to Defendant No. 1’s failure to file a defense.

Case Title: Eureka Forbes Limited vs. Mr. Vinod K. & Anr.

Date of Order: March 4, 2025

Case Number: CS(COMM) 335/2023

Neutral Citation: 2025:DHC:1534

Name of Court: Delhi High Court

Name of Hon’ble Judge: Hon'ble Mr. Justice Amit Bansal

Priya Enterprises Vs. Prestige Housewares (India) Ltd.

Priya Enterprises Vs. Prestige Housewares (India) Ltd.: Effect of dynamic Effect on Trademark Cancellation

Introduction

The case Priya Enterprises vs. Prestige Housewares (India) Ltd. pertains to the rectification of a registered trademark and the territorial jurisdiction of the High Court in such matters. The petitioner, Priya Enterprises, sought the removal of the registered trademark "Prestige" from the register due to its alleged non-use by the respondent, Prestige Housewares (India) Ltd. A key legal issue was whether the Madras High Court had jurisdiction to entertain the rectification petition, given that the trademark was originally registered at the Calcutta Trade Marks Registry. This case explores the interpretation of Section 3 of the Trade and Merchandise Marks Act, 1958, which governs the jurisdiction of High Courts in trademark rectification matters.

Detailed Factual Background

Priya Enterprises, a sole proprietorship based in Saidapet, filed a petition seeking rectification of the register and removal of the trademark "Prestige" on grounds of non-use. The disputed trademark, bearing registration No. 141602 under Class 21, was initially registered in 1949 in the name of Plaster and Stampers Limited, Lancashire, England. It was later transferred to The Prestige Group Limited, England, in 1957. Subsequently, in 1989, the trademark was registered in the name of Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985.

Priya Enterprises was engaged in manufacturing rubber gaskets used in pressure cooker lids, which were compatible with multiple brands, including Prestige, Killicks, Videocon, and Usha. The petitioner used these brand names to indicate compatibility with corresponding pressure cooker models.

Prestige Housewares (India) Ltd. issued a cease-and-desist notice to Priya Enterprises, alleging unauthorized use of its registered trademark "Prestige." In response, Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the trademark from the register on the ground that the respondent had not used it for over five years. The respondent contested the jurisdiction of the Madras High Court, arguing that the trademark was originally registered at the Calcutta Trade Marks Registry, and hence, any rectification proceedings should be initiated before the Calcutta High Court.

Detailed Procedural Background

Priya Enterprises filed O.P. No. 474 of 1995 before the Madras High Court, challenging the validity of the respondent's trademark. The respondent subsequently filed an application (Application No. 3670 of 1997) seeking the dismissal of the petition on jurisdictional grounds, asserting that the rectification petition should have been filed in the Calcutta High Court.

The petitioner did not file a formal counter but contested the matter on the basis that the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry. The respondent argued that since the trademark was registered at the Calcutta Trade Marks Registry, rectification proceedings should be filed before the Calcutta High Court, as per Section 3 of the Trade and Merchandise Marks Act, 1958.

Issues Involved in the Case

Whether the Madras High Court had jurisdiction to entertain the rectification petition.

Whether the location of the registered office of the trademark proprietor (Bangalore) had any bearing on territorial jurisdiction.

Whether the rectification petition should be filed before the High Court having jurisdiction over the Trade Marks Registry where the trademark was originally registered.

Detailed Submission of Parties

The respondent argued that under Section 3 of the Trade and Merchandise Marks Act, 1958, jurisdiction for rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered. Since the "Prestige" trademark was registered at the Calcutta Trade Marks Registry, any rectification petition should be filed in the Calcutta High Court. The respondent relied on multiple precedents to support this argument.

The petitioner contended that since the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry, the Madras High Court had jurisdiction. The petitioner further argued that Section 3(e) of the Act was applicable since the original owner of the trademark was a foreign company with no place of business in India at the time of registration. Thus, the petitioner claimed that jurisdiction should be determined based on the respondent’s current business location.

Detailed Discussion on Judgments Cited by Parties

The respondent relied on the following judgments to support its contention that jurisdiction is determined by the location of the Trade Marks Registry where the trademark is registered:

Chunulal v. G.S. Muthiah & Bros., MANU/TN/0211/1959 : AIR 1959 Mad 359

Held that since the Registrar of Trade Marks is located in Bombay and the register is maintained there, the Bombay High Court has exclusive jurisdiction over rectification matters.

Vikas Manufacturing Co. v. Bharaj Manufacturing Co., 1980 (1) P.L.R. 16

The Punjab and Haryana High Court ruled that under Section 3, read with Section 5 of the Trade and Merchandise Marks Act, jurisdiction lies with the High Court within whose jurisdiction the Trade Marks Registry is located.

A recent decision in O.P. No. 803 of 1994 and Appln. No. 2495 in C.S. No. 5 of 1994

The Madras High Court held that an application under Section 56 of the Act can only be entertained by the High Court specified under Section 3 of the Act, meaning that jurisdiction is tied to the original registration location.

Detailed Reasoning and Analysis of Judge

Justice B. Akbar Basha Kadiri analyzed the provisions of Section 3 of the Trade and Merchandise Marks Act, 1958, and emphasized that jurisdiction for rectification proceedings is determined by the location of the Trade Marks Registry where the trademark was registered. The judge rejected the petitioner’s argument that the registered office of the respondent should influence jurisdiction, holding that the situs of the original trademark registration remains the determining factor.

The judge observed that prior to 1959, Calcutta was the sole Trade Marks Registry for all of India. After the establishment of regional registries, trademarks continued to be registered in their respective registries based on applications. Since the "Prestige" trademark was registered in Calcutta, rectification petitions could only be filed in the Calcutta High Court.

The judge further noted that even in cases where a foreign company initially registered a trademark, jurisdiction remains fixed at the location where the application was filed and the register is maintained. The address for service in India, as recorded in the Trade Marks Registry, was in Calcutta, further confirming the jurisdiction of the Calcutta High Court.

Final Decision

The Madras High Court ruled that it did not have jurisdiction to entertain the rectification petition. The petition was returned for presentation before the Calcutta High Court. The respondent’s application (A. No. 3670 of 1997) was allowed, and O.P. No. 474 of 1995 was directed to be filed before the proper court.

Law Settled in This Case

Jurisdiction for trademark rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered.

The situs of the original registration remains unchanged even if the trademark is later assigned to an entity in another jurisdiction.

The registered office of the trademark proprietor does not affect territorial jurisdiction for rectification proceedings.

Section 3 of the Trade and Merchandise Marks Act, 1958, is the governing provision for determining jurisdiction in trademark rectification cases.

Case Details

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

Date of Order: 03.04.1998

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

Neutral Citation: MANU/TN/1746/1998; 1998(Suppl.)ARBLR624(Madras); 1998(18)PTC539(Mad)

Court: Madras High Court

Judge: Justice B. Akbar Basha Kadiri

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

Lakha Ram Vs Balar Marketing

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

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

Effect of dynamic effect in Trademark, Design and Patent Revocation Petition

Effect of dynamic effect: Part:5 [Trademark, Design and Patent Revocation Petitions]

Introduction:The concept of dynamic effect has played a crucial role in determining the jurisdiction of High Courts in intellectual property disputes, particularly in trademark rectification, design cancellation, and patent revocation petitions. Courts have examined whether the impact of an intellectual property right beyond its place of registration can justify jurisdiction in a different High Court. While this principle has been recognized in design and patent revocation cases, its applicability to trademark rectification petitions has been rejected in recent rulings, particularly in The Hershey Company v. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr. (2024).

However, the Hershey judgment appears to have overlooked Section 29(4) of the Trade Marks Act, 1999, which extends trademark rights even to different classes of goods and services where the mark has a reputation in India. The court failed to appreciate that, like patents and designs, trademark rights also extend nationwide, thereby warranting a broader interpretation of jurisdiction under the dynamic effect doctrine. This article critically examines the evolution of the dynamic effect doctrine, its judicial interpretations, and how the Hershey judgment deviates from established IP principles.

The Concept of Dynamic Effect in IP Disputes:The static effect of an intellectual property right refers to its formal registration at a particular registry, while the dynamic effect refers to the wider commercial impact of that right beyond the registry location. In disputes involving patents and designs, courts have acknowledged that such rights operate nationwide, restricting competitors across multiple jurisdictions. This has led to an expanded interpretation of jurisdiction in patent revocation and design cancellation cases.

However, in trademark rectification matters, the Hershey judgment limited jurisdiction to the High Court governing the Trade Marks Registry where the mark was granted, disregarding the nationwide impact of well-known trademarks under Section 29(4) of the Trade Marks Act, 1999.

Dynamic Effect in Design Cancellation Petitions:Girdhari Lal Gupta Vs. K. Gian Chand Jain & Co., AIR 1978 Delhi 146

Factual Background:The Petitioner, Girdhari Lal Gupta, obtained registration for two designs (Nos. 131357 and 131364) under the Designs Act, 1911, for laces. The Respondents, K. Gian Chand Jain & Co., were also engaged in the lace business in Delhi. They contested the validity of these registered designs, claiming that the designs had been published in India before registration, which restricted their business unfairly.

Procedural Background:The Respondents filed applications under Section 51-A of the Designs Act, 1911, before the Delhi High Court, seeking cancellation of the registrations. The Petitioner challenged the jurisdiction, arguing that only the Calcutta High Court had authority since the Register of Designs was maintained in Calcutta.

The Delhi High Court ruled that the impact of a design registration extends beyond the place of registration. Since the Respondents’ business in Delhi was affected, they had a legitimate right to seek cancellation in Delhi. The court held that the dynamic effect of the design’s monopoly was directly felt in Delhi, thereby establishing jurisdiction for the Delhi High Court.

Law Settled

The case established that applications for design cancellation can be filed not only in the Calcutta High Court but also in High Courts where the business impact is felt.

Dynamic Effect in Patent Revocation Petitions:Dr. Reddy’s Laboratories Ltd. & Anr. Vs The Controller of Patents & Ors. (2022/DHC/004746)

Factual Background:The Petitioner, Dr. Reddy’s Laboratories Ltd., filed a patent revocation petition against Patent No. IN 268846, granted to Boehringer Ingelheim for Benzenol derivatives and their medicinal applications. The Petitioners argued that the patent was invalid and filed the revocation petition before the Delhi High Court.

Procedural Background:The Respondent challenged the maintainability of the petition, arguing that since infringement suits were already pending before the Himachal Pradesh High Court, the revocation should be filed as a counterclaim instead of an independent petition.

Decision and Law Settled:The Delhi High Court held that patent revocation is an independent right under Section 64 and can be filed irrespective of pending infringement suits. The court recognized the dynamic effect doctrine, stating that patents impact businesses beyond their place of registration.

Dynamic Effect in Trademark Revocation Petitions:Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma & Anr. (2023/DHC/004746):

Factual Background:Dr. Reddy’s Laboratories filed CS (COMM) 436/2021 against Fast Cure Pharma (FCP), alleging that FCP’s "RAZOFAST" mark infringed its registered trademark "RAZO" for Rabeprazole. On 16 August 2023, the Delhi High Court ruled in favor of Dr. Reddy’s.During the suit, on 23 August 2022, the petitioner sought time to file a rectification petition to cancel "RAZOFAST." The petition was filed on 15 November 2022. However, since "RAZOFAST" was registered with the Kolkata Trade Marks Registry, the key issue was whether the Delhi High Court had jurisdiction over the petition.

This case further reaffirmed the dynamic effect doctrine in Trademark matters. The Delhi High Court upheld jurisdiction, ruling that:Trademark rights impact businesses beyond their place of registration.The Delhi High Court had jurisdiction since the Trademark affected the petitioner’s ability to operate freely in Delhi.These cases confirm that jurisdiction in Trademark revocation is determined by the market impact of the patent, rather than where it was granted.

Rejection of Dynamic Effect in Trademark Rectification Cases: The Hershey Company v. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr. (2024/DHC/004746)

Factual Background:

The Petitioner, The Hershey Company, is a multinational corporation and the registered proprietor of the well-known trademark "HERSHEY". The Respondent, Dilip Kumar Bacha, obtained registration for the trademark "HARSHY" under Application No. 3897902 on July 25, 2018, at the Mumbai Trade Marks Registry.

The Petitioner contended that the Respondent’s mark was phonetically, structurally, and visually similar to "HERSHEY", thereby likely to cause consumer confusion. A rectification petition was filed before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the mark.

Procedural Background:July 25, 2018 – The Respondent’s mark "HARSHY" was registered at the Mumbai Trade Marks Registry.August 2023 – The Petitioner filed the rectification petition before the Delhi High Court.The Respondent objected to jurisdiction, arguing that the correct forum was the Bombay High Court, as per Rule 4 of the Trade Marks Rules, 2017, which links rectification petitions to the Trade Marks Registry where the mark was registered.

Decision and Criticism:The Delhi High Court ruled that trademark rectification petitions must be filed only in the High Court governing the Trade Marks Registry where the mark was granted. The court rejected the dynamic effect doctrine, stating that it applies to patents and designs but not trademarks. Accordingly the matter was referred to larger Bench to evaluate the effect of dynamic effect in Trademark Cancellation Proceeding.

While the court attempted to distinguish trademark rectification from patent and design revocation, it failed to consider Section 29(4) of the Trade Marks Act, 1999, which expands trademark protection beyond its class of goods and services where the mark has a reputation in India.

Section 29(4) states that a trademark may be infringed even if used on completely different goods or services, provided the mark has a reputation in India and its use takes unfair advantage of or is detrimental to the distinctive character or reputation of the mark. This means that trademark rights extend across India, affecting businesses in multiple jurisdictions, much like patents and designs. A well-known mark like "HERSHEY" would be impacted by an infringing mark anywhere in India, justifying jurisdiction in any High Court where the commercial effect of the infringement is felt. The court’s reasoning in rejecting dynamic effect contradicts the expanded protection granted to trademarks under Section 29(4).

By overlooking Section 29(4), the Hershey judgment wrongly confined trademark rectification to the Trade Marks Registry's location, disregarding the nationwide impact of a trademark's reputation and infringement.

Design registrations are specific to particular products as per Section 6 of the Designs Act. Hence, the court wrongly distinguished design and trade mark rights on the ground that trademark rights are in relation to particular products, while design and patent rights are not. Even patent rights are subject to specific products for which patents are granted. Thus, trademarks, patents, and design rights stand on the same footing.

The term "High Court" as defined in Sections 47, 57, and 125 of the Trade Marks Act, 1999, should not derive its interpretation from Rule 3 of the Trade Marks Rules, 2017. Rules are subordinate legislation made under the Act and cannot override the primary statutory provisions.

If the dynamic effect doctrine is valid for patents and designs, where rights extend beyond registration, it should logically apply to trademarks as well, especially in cases involving well-known marks. By restricting jurisdiction to the Trade Marks Registry location, the Hershey judgment creates an artificial and unjustified distinction between different forms of intellectual property rights, weakening trademark enforcement.

Thus, the ruling in Hershey v. Dilip Kumar Bacha should be reconsidered to align trademark jurisprudence with patent and design laws, ensuring a consistent and effective approach to intellectual property protection.

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

The Hershey Company vs. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr.

Effect of Dynamic Effect:Part-4 [Trade Mark Cancellation]

Introduction:

The case concerns a rectification petition filed under Section 57 of the Trade Marks Act, 1999, challenging the registration of the trademark "HARSHY", which was alleged to be deceptively similar to "HERSHEY", a well-known trademark of The Hershey Company. The key issue before the Delhi High Court was whether it had jurisdiction to entertain the rectification petition when the trademark was registered at the Mumbai Trade Marks Registry. The case raised critical questions about territorial jurisdiction, the concept of dynamic effect in trademark law, and the applicability of earlier precedents on this issue. Ultimately the Court referred this question to be decided to Larger Bench.

Factual Background:

The Petitioner, The Hershey Company, is a multinational corporation and the proprietor of the trademark "HERSHEY", registered in multiple jurisdictions, including India. The Respondent, Dilip Kumar Bacha, trading as Shree Ganesh Namkeen, had obtained registration for the trademark "HARSHY", which the petitioner claimed was phonetically, structurally, and visually similar to its well-known mark.

The impugned trademark "HARSHY" was registered under Application No. 3897902 on July 25, 2018, at the Mumbai Trade Marks Registry. The petitioner contended that the respondent’s mark was deceptively similar and likely to cause confusion among consumers. The rectification petition was filed before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the mark.

The Respondent challenged the jurisdiction of the Delhi High Court, arguing that the appropriate High Court for a rectification petition should be the Bombay High Court, as the registration was granted at the Mumbai Trade Marks Registry. This led to the primary legal question—whether the Delhi High Court could assume jurisdiction based on the “dynamic effect” of the trademark registration.

Procedural Background:

July 25, 2018 – The respondent's mark "HARSHY" was registered under Application No. 3897902 at the Mumbai Trade Marks Registry.

August 2023 – The petitioner filed the rectification petition before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the respondent’s mark.

The respondent objected to the jurisdiction of the Delhi High Court, arguing that the case should have been filed before the Bombay High Court, as per Rule 4 of the Trade Marks Rules, 2017, which links rectification petitions to the Trade Marks Registry where the mark was registered.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain a rectification petition under Section 57 of the Trade Marks Act, 1999, when the impugned trademark was registered at the Mumbai Trade Marks Registry?

Whether the dynamic effect of a trademark registration—which impacts business interests beyond the place of registration—could be a valid basis for jurisdiction?

Whether the term “the High Court” in Section 57 of the Trade Marks Act should be interpreted to mean only the High Court that has territorial jurisdiction over the Trade Marks Registry where the mark was registered?

Submissions of the Petitioner (The Hershey Company):

The Delhi High Court had jurisdiction because the impact of the respondent’s mark was felt in Delhi due to the wide commercial presence of the petitioner’s brand. The concept of dynamic effect, recognized in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., AIR 1978 Delhi 146, should apply, allowing rectification petitions to be filed where the trademark affects business.  Section 57 of the Trade Marks Act, 1999, does not define "High Court," meaning there is no statutory restriction confining jurisdiction to the High Court governing the Trade Marks Registry where the mark was granted.The Tribunal Reforms Act, 2021, transferred jurisdiction to High Courts without limiting jurisdiction to the Registry location.

Submissions of the Respondent (Dilip Kumar Bacha):The Delhi High Court lacked jurisdiction, as the correct forum was the Bombay High Court, which had territorial juris

diction over the Mumbai Trade Marks Registry.Rule 4 of the Trade Marks Rules, 2017, explicitly links jurisdiction for rectification petitions to the Trade Marks Registry where the mark was registered.The earlier judgment in Girdhari Lal Gupta should not apply to the present case because it dealt with designs, not trademarks, and trademark laws follow different principles.

How and Why the Court Differed from Earlier Judgments on Dynamic Effect:

The Delhi High Court differed from earlier judgments such as Girdhari Lal Gupta by holding that dynamic effect does not apply to rectification petitions under Section 57 of the Trade Marks Act.

The court distinguished trademark law from patent and design law, stating that dynamic effect may apply in patent cases, but trademark rectification has a specific jurisdictional rule under Rule 4 of the Trade Marks Rules, 2017.

Patents and designs confer monopolistic rights, meaning their impact is nationwide and justifies broader jurisdictional principles like dynamic effect.

Trademarks function differently because they are tied to specific goods and services, and their rectification process is linked to the place of registration, as per statutory rules.

The earlier judgments did not consider Rule 4, which explicitly links rectification jurisdiction to the Registry where the mark was granted.

The court held that allowing rectification petitions in any High Court would lead to forum shopping, creating uncertainty for trademark owners.

Final Decision:

The Delhi High Court differed from earlier judgments such as Girdhari Lal Gupta by holding that dynamic effect does not apply to rectification petitions under Section 57 of the Trade Marks Act and referred the matter to larger Bench for adjudication.

Case Title: The Hershey Company Vs. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr.

Date of Order: 9 February 2024

Case No.: C.O. (COMM.IPD-TM) 179/2023

Court: Delhi High Court

Judge: Hon'ble Justice Mrs. Prathiba M. Singh

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

Dr. Reddy’s Laboratories Ltd. Vs. Fast Cure Pharma

Effect of Dynamic Effect: Part-3 [Trademark Cancellation]

Introduction:

This case primarily deals with whether a High Court other than the one having jurisdiction over the Trade Marks Registry that granted the trademark can entertain rectification petitions under Section 47 and Section 57 of the Trade Marks Act, 1999. The key issue is whether the dynamic effect of trademark registration—which impacts business interests beyond the place of registration—can be a factor in determining jurisdiction?

Factual Background:

Dr. Reddy’s Laboratories Limited, the petitioner, had filed CS (COMM) 436/2021 against Fast Cure Pharma (FCP), alleging that FCP’s mark "RAZOFAST" infringed its registered trademark "RAZO", which is used for Rabeprazole, a pharmaceutical compound. The Delhi High Court, on 16 August 2023, had already decreed the infringement suit in favor of Dr. Reddy’s Laboratories.

During the pendency of the infringement suit, on 23 August 2022, the petitioner sought adjournment to file a rectification petition for cancellation of the respondent’s "RAZOFAST" mark. The present rectification petition was filed on 15 November 2022, seeking to remove "RAZOFAST" from the Register of Trade Marks. However, the registered mark "RAZOFAST" was granted by the Kolkata Office of the Trade Marks Registry, leading to the issue of whether the Delhi High Court had jurisdiction to hear the rectification petition.

Procedural Background:

16 August 2023 – Delhi High Court decreed the infringement suit in favor of Dr. Reddy’s Laboratories.

23 August 2022 – The petitioner sought adjournment to file a rectification petition.

15 November 2022 – The petitioner filed the rectification petition under Section 57 of the Trade Marks Act before the Delhi High Court.

Respondent’s Argument:Fast Cure Pharma challenged the jurisdiction of the Delhi High Court, arguing that the rectification petition should have been filed before the Calcutta High Court, as the registration was granted by the Kolkata Trade Marks Registry.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain a rectification petition under Section 47 and Section 57 of the Trade Marks Act, 1999, when the impugned mark was registered at the Kolkata Trade Marks Registry?

Whether the concept of “dynamic effect” could be applied to determine jurisdiction, allowing the rectification petition to be filed where the trademark’s impact was felt?

Whether jurisdiction in rectification matters should be limited to the High Court having territorial jurisdiction over the Trade Marks Registry that granted the mark?

Submissions of the Parties

Submissions of the Petitioner (Dr. Reddy’s Laboratories Limited):

The Delhi High Court had jurisdiction as the dynamic effect of the trademark was felt in Delhi.The petitioner’s business was adversely affected in Delhi due to the presence of the respondent’s trademark in the Register.Under Section 57 of the Trade Marks Act, a rectification petition can be filed before “the High Court”, and the law does not limit this to the High Court covering the Trade Marks Registry.The petitioner relied on Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146, where the Delhi High Court’s Full Bench recognized that jurisdiction could be based on the dynamic effect of registration.

Submissions of the Respondent (Fast Cure Pharma & Anr.):The Delhi High Court lacked jurisdiction as the correct jurisdiction was the Calcutta High Court, which covered the Kolkata Trade Marks Registry.Section 47 and Section 57 of the Trade Marks Act do not expressly state that rectification petitions can be filed outside the territorial jurisdiction of the Trade Marks Registry where the mark was granted.The Tribunal Reforms Act, 2021, abolished the Intellectual Property Appellate Board (IPAB) and transferred jurisdiction to High Courts. The respondent argued that this did not expand the scope of jurisdiction beyond what existed under IPAB rules.Cited Ayyangar Committee Report, which recommended that rectification petitions should be filed in the High Court covering the Trade Marks Registry where the mark was registered.

Discussion on Judgments and Citations:

The court extensively analyzed judicial precedents to determine the correct interpretation of jurisdiction under the Trade Marks Act:Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146:The Full Bench of the Delhi High Court held that jurisdiction in rectification matters is not confined to the place of registration but also extends to the place where the business impact is felt.This introduced the concept of dynamic effect, recognizing that intellectual property rights impact businesses beyond their place of registration. Kusum Ingots & Alloys Ltd. Vs. Union of India (2004) 6 SCC 254:The Supreme Court ruled that jurisdiction is determined not only by where an order is passed but also by where its legal consequences are felt.Applied to trademarks, this meant that if a business suffers due to a registered mark in Delhi, the Delhi High Court could have jurisdiction.Workmen of Shri Rangavilas Motors (P) Ltd. v. Shri Rangavilas Motors (P) Ltd. (1967) 2 SCR 528: Held that the place where an order affects employees determines jurisdiction. This reasoning was applied to trademarks, concluding that the impact of a trademark in a jurisdiction can be a factor in determining High Court jurisdiction.

Detailed Reasoning and Interpretation of the Court on the Issue of Dynamic Effect:

The court analyzed the static effect and dynamic effect of trademark registration. The static effect refers to the registration of the mark in the Trade Marks Registry, while the dynamic effect refers to the impact of the registration on businesses beyond the place of registration. 

The court held that:The dynamic effect of a trademark is not confined to the place of its registration but extends to all locations where it restricts competitors’ business activities.If a trademark’s presence in the Register adversely impacts a business in Delhi, Delhi High Court can exercise jurisdiction over a rectification petition.Section 57 of the Trade Marks Act does not restrict jurisdiction to the High Court covering the Trade Marks Registry, unlike the Patent Act, which specifies jurisdiction.The Tribunal Reforms Act, 2021, did not change the principle that High Courts could hear rectification petitions based on their impact on businesses.

Final Decision:

The Delhi High Court held that:The rectification petition was maintainable before the Delhi High Court, as the dynamic effect of the registered mark was felt in Delhi.The concept of dynamic effect is applicable to trademark cases, meaning businesses affected by a mark’s presence in the Register can file rectification petitions in their jurisdiction. Jurisdiction for rectification petitions is not confined to the place of grant but includes locations where the trademark has a restrictive impact on businesses.

Law Settled in this Case:

Dynamic effect applies to trademark rectification petitions, allowing businesses to file cases in High Courts where they suffer commercial injury.

Rectification petitions are not limited to the jurisdiction of the Trade Marks Registry that granted the mark.

The abolition of IPAB did not restrict jurisdiction but instead allowed businesses to seek relief where they feel the impact of a registered mark.

Case Title: Dr. Reddy’s Laboratories Ltd. vs. Fast Cure Pharma & Anr.

Date of Order: 4 September 2023

Case No.: C.O. (COMM.IPD-TM) 8/2023

Court: Delhi High Court

Judge: Hon'ble Justice Shri C. Hari Shankar

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