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, filed CS (COMM) 436/2021 against Fast Cure Pharma (FCP), alleging that FCP’s mark "RAZOFAST" infringed its registered trademark "RAZO", used for Rabeprazole.
• The Delhi High Court, on 16 August 2023, 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 "RAZOFAST".
  • On 15 November 2022, the rectification petition was filed to remove "RAZOFAST" from the Trade Marks Register.
• The mark was granted by the Kolkata Office of the Trade Marks Registry, raising jurisdictional concerns for the Delhi High Court.

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 since the mark was registered in Kolkata.
  • Sections 47 and 57 of the Trade Marks Act do not explicitly allow filing rectification petitions outside the jurisdiction of the Trade Marks Registry.
  • The Tribunal Reforms Act, 2021, which abolished IPAB, did not expand the jurisdiction of High Courts.
  • Cited the Ayyangar Committee Report, which recommended that rectification petitions be filed in the High Court covering the Trade Marks Registry where the mark was registered.

Issues Involved:

• Whether the Delhi High Court had jurisdiction to entertain a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, when the mark was registered at the Kolkata Trade Marks Registry?
• Whether the concept of “dynamic effect” could be applied to determine jurisdiction based on the impact of the trademark?
• 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 because:
  • The trademark's dynamic effect was felt in Delhi.
  • The petitioner’s business was adversely affected in Delhi due to the respondent’s trademark in the Register.
  • Under Section 57, a rectification petition can be filed before “the High Court” without restriction to the Trade Marks Registry's jurisdiction.
  • Cited Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146, which recognized jurisdiction based on the dynamic effect of registration.

Submissions of the Respondent (Fast Cure Pharma & Anr.):

• Delhi High Court lacked jurisdiction because:
  • The correct jurisdiction was the Calcutta High Court covering the Kolkata Trade Marks Registry.
  • Sections 47 and 57 of the Trade Marks Act do not allow rectification petitions outside the territorial jurisdiction of the Trade Marks Registry.
  • The Tribunal Reforms Act, 2021, did not change the jurisdictional scope of High Courts.
  • Cited the Ayyangar Committee Report supporting rectification petitions within the Trade Marks Registry's jurisdiction.

Discussion on Judgments and Citations:

• Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146:
  • Held that rectification jurisdiction extends to where business impact is felt, not just where the mark was registered.
  • Introduced the concept of dynamic effect.
• Kusum Ingots & Alloys Ltd. Vs. Union of India (2004) 6 SCC 254:
  • Jurisdiction is determined not only by where an order is passed but where its legal consequences are felt.
  • Applied to trademarks, if a business suffers 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:
  • Jurisdiction is determined by where an order affects employees.
  • Applied to trademarks, this means impact on business determines jurisdiction.

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

• The court analyzed:
  • Static effect: Registration of the mark at the Trade Marks Registry.
  • Dynamic effect: The impact of the registration on businesses beyond the place of registration.
• Findings:
  • Trademarks impact businesses beyond the place of registration.
  • If a trademark's presence in the Register affects a business in Delhi, Delhi High Court can hear rectification petitions.
  • Section 57 does not restrict jurisdiction to the High Court covering the Trade Marks Registry.
  • The Tribunal Reforms Act, 2021, did not alter jurisdiction principles.

Final Decision:

• The Delhi High Court held that:
  • The rectification petition was maintainable before the Delhi High Court.
  • The dynamic effect of the trademark was felt in Delhi.
  • Jurisdiction is not confined to the place of grant but includes locations where the trademark affects businesses.

Law Settled in this Case:

• Dynamic effect applies to trademark rectification petitions.
• Businesses can file rectification petitions in High Courts where they suffer commercial injury.
• Jurisdiction is not restricted to the Trade Marks Registry's location.
• The abolition of IPAB did not limit jurisdiction but allowed businesses to seek relief where affected.

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
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539