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 (IPD) of the Madras High Court. The aim was to consolidate and ensure speedy disposal alongside an existing civil suit.
Facts
The petitioner filed civil suit C.S.(Comm.Div.) No. 199 of 2023 alleging trademark infringement and passing off. Two rectification petitions, numbered 272370 and 272372, were pending before the Ahmedabad Registrar concerning trademark 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, citing risks of multiplicity, delay, and conflicting judgments. Despite a letter dated 30.05.2024 invoking Section 125(2) of the Trade Marks Act, 1999, no action was taken, leading to the filing of writ petitions under Article 226 of the Constitution.
Procedure
The maintainability of the writ petitions was questioned. The petitioner argued that consolidation was justified under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023. They maintained that neither Article 139A of the Constitution nor Section 25 of the Code of Civil Procedure barred this remedy. It was further argued that the High Court’s power under Article 226 extends where a cause of action arises, irrespective of the authority’s location.
In opposition, the respondents contended that jurisdiction rested with the High Court having appellate jurisdiction over the Registrar’s office under Rule 4 of the Trade Marks Rules, 2017. They argued that the petitions should have been filed in the Gujarat High Court. They denied the existence of any stay application in the civil suit and emphasized that only the territorially competent High Court could handle rectification petitions, cautioning against judicial overreach under Article 226.
Examination by Court
The Court examined the Trade Marks Act, particularly Sections 47 and 57, amended by the Tribunals Reforms Act, 2021. It highlighted the deliberate use of the definite article “the” before “High Court,” showing Parliament’s intent to assign jurisdiction to a specific High Court tied to a Registrar’s office. This was contrasted with the use of the indefinite article “a” in other contexts.
The Court reaffirmed Rule 4 of the Trade Marks Rules, 2017, which sets territorial jurisdiction of registry offices. Since the registered proprietor’s main business was in Surat, Gujarat, the appropriate Registry was Ahmedabad, placing jurisdiction with the Gujarat High Court.
Citing Adiuvo Diagnostics Pvt. Ltd. v. University Health Network (2024 SCC OnLine Mad 185), the Court clarified that while writ jurisdiction may not be restricted by Patent Office location, rectification under the TM Act involves statutory jurisdiction tied to territorial nexus. Allowing otherwise would create chaos and conflicting rulings.
The Court rejected reliance on Rule 14(1) of the Madras High Court IPD Rules, holding that it does not permit cross-fora consolidation. It emphasized Section 124 of the TM Act, which provides for stay of suits pending rectification, thereby avoiding conflict without requiring transfers.
The Court noted contrary views in Nippon Paint Holdings Co. Ltd. v. Suraj Sharma and Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma, but since those orders were stayed by the Supreme Court, the Court declined to follow them.
Decision
The Court ruled that the Madras High Court lacked jurisdiction under Sections 47 and 57 of the TM Act over rectification petitions before the Ahmedabad Registrar. It held that writ petitions are discretionary and cannot override statutory jurisdiction. The Court dismissed the petitions but left open the option to approach the Gujarat High Court for speedy disposal of rectification petitions. No costs were awarded.
This judgment clarifies territorial jurisdiction and highlights the balance between constitutional writ powers and statutory remedies. It underscores respecting jurisdictional boundaries to prevent conflicting rulings and maintain orderly administration of justice.
Case Details
- 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
- Court: High Court of Judicature at Madras
- Judge: The Honourable Mr. Justice Senthilkumar Ramamoorthy
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
