The jurisdictional boundaries of legal proceedings under the Trade Marks Act,
1999 in India have been a subject of legal debate. In a recent judgment, the
court held that applications under Section 47 or Section 57 of the Trade Marks
Act, 1999, as well as under Section 124(1)(ii), are maintainable not only before
the High Courts within whose jurisdiction the offices of the Trade Mark Registry
granting the impugned registrations are situated but also before the High Courts
within whose jurisdiction the dynamic effect of the impugned registration is
felt by the petitioner/applicant. This article aims to analyze this significant
decision and its implications on the Trade Marks Act, 1999.
The Trade Marks Act, 1999 governs the registration and protection of trademarks
in India. It provides for various provisions to safeguard the rights of
trademark owners and regulate the use of trademarks. Sections 47 and 57 of the
Act pertain to the cancellation and rectification of trademarks, while Section
124(1)(ii) deals with infringement cases.
The Jurisdictional Issue:
The key issue at hand is the determination of the appropriate High Court before
which an application under the Trade Marks Act can be filed. Traditionally, the
jurisdiction was linked to the location of the Trade Mark Registry that granted
the impugned trademark registration. However, this recent judgment has expanded
the scope of jurisdiction to include High Courts within whose jurisdiction the
dynamic effect of the impugned registration is felt.
Analysis of the Judgment:
Expanding Jurisdiction: The judgment's most significant aspect is the expansion
of jurisdiction beyond the physical location of the Trade Mark Registry. By
considering the dynamic effect of the registration, the court has acknowledged
the evolving nature of commerce and the impact of trademarks that extend beyond
Impact on Rights Holders: This decision offers greater protection to trademark
holders. It allows them to file applications in High Courts where the effects of
trademark infringement or cancellation are felt. This ensures that rights
holders can seek redress in a more convenient and effective manner.
Complexities and Challenges: While this decision broadens access to justice, it
also raises complexities. Determining the jurisdiction where the dynamic effect
is felt can be challenging, especially in cases involving online commerce or
nationwide brands. This may lead to disputes over the appropriate forum for
Uniform Application: The judgment calls for a more uniform application of the
Trade Marks Act across different High Courts. This can contribute to consistency
in trademark litigation outcomes and reduce forum shopping by litigants.
Need for Clarity: To avoid ambiguity and potential jurisdictional disputes,
there is a need for further clarification on what constitutes the "dynamic
effect" of a trademark registration. Clear guidelines and precedents should be
established to guide future cases.
The Concluding Note:
The recent judgment expanding the jurisdiction of High Courts in trademark
matters is a significant development in Indian trademark law. It reflects a
recognition of the changing landscape of commerce and the need to adapt legal
procedures accordingly. While it provides trademark holders with more options
for seeking redress, it also introduces challenges in determining the dynamic
effect of registrations. Clarity and guidance from the courts will be essential
to ensure the consistent application of this ruling and to strike a balance
between protecting trademark rights and preventing jurisdictional disputes.
Case Law Discussed:
Case Title: Dr.Reddy Laboratories Vs Fast Cure Pharma
Date of Judgement:04.09.2023
Case No. C.O. (COMM.IPD-TM) 8/2023
Neutral Citation No: 2023:DHC:6324
Name of Hon'ble Judge: C Hari Shankar, H.J.
Name of Court: Delhi High Court
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539