High Court and Jurisdictional Conundrum Vis-à-vis the Trademarks Act

High Court and Jurisdictional Conundrum Vis-à-vis the Trademarks Act

This piece has been authored by Prabhu Gupta (III year Student, Hidayatullah National Law University)

In this article, the author examines recent conundrums caused in the Trademarks Act post the enactment of the Tribunal Reforms Act passed by the Parliament in 2021 which amended various statutes and inter alia, abolished the Intellectual Property Appellate Board and substituting the same with ‘high court’ in the Act without defining the term or determining the jurisdiction of the same. The author suggests ways to rectify this lapse in the law and urges the hon’ble bench to fill the lacunae at the earliest.

Keywords: Trademarks, IPAB, High Court.


Trademarks Act, 1999 (‘1999 Act’) provides for the Rectification and Correction of the Register. A register is a record kept at the head office of the Trade Marks Registry, wherein all registered trademarks with the names, addresses and descriptions of the proprietors, notifications of assignment and transmissions, the names, addresses and descriptions of registered users, conditions, limitations and such other matter relating to registered trademarks, are entered.

Section 57(2) of the 1999 Act further provides that any person aggrieved by the absence or omission from the register, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, can apply in the for making, expunging or varying the entry. The 1999 Act stands amended vide the Tribunals Reforms Act of 2021 (‘TR Act’) which abolished the Intellectual Property Appellate Board (‘IPAB’) and substituted the same with High Courts.

The principal act governing trademarks in the country has been repealed and re-enacted multiple times. Prior to the 1999 Act, the law relating to trademarks was governed by the Trade and Merchandise Act, 1958 (‘1958 Act’) which was brought to amend the prior Trade Marks Act, 1940 (‘1940 Act’). IPAB was incorporated under the Trade Marks Act, 1999 (‘1999 Unamended Act’) pursuant to Article 41 of the Trade Related Aspects of Intellectual Property Rights (‘TRIPS’). Both the 1940 and 1958 acts defined High Courts; the former defined it as “in relation to any State, the High Court for that State…” while the latter defined High courts as those “…within the limit of whose territorial jurisdiction the office of the Trade Marks Registry is situated”.

Subsequently, as the 1999 Unamended Act came into effect which provided for the setup of IPAB, the powers to preside over trademark cancellation petition was transferred to IPAB and ‘High Court’ was deleted from the statutes. Later, as the TR Act reinstated the powers to hear cancellation petitions to the High Courts, it lacked a clause defining ‘High Court’ for the purpose of the Act. The abovementioned lacunae in the amendment bring us to a conundrum under the 1999 Act begging the question as to the jurisdictional limits of the high court to hear cancellation and rectification petitions under the 1999 Act.

Issues and the prevailing law

Prior to the 1999 Act, cancellation petitions lay before the high court having appellate jurisdictional limits over the trademarks registry in question. Currently, the trademarks registry has its head office at Mumbai and branch offices in Ahmedabad, Chennai, Delhi and Kolkata. Therefore, if we were to go back to the old status quo, only the Maharashtra, Gujrat, Tamil Nadu, West Bengal and Delhi High Courts would have the jurisdiction to decide over cancellation petitions.

Jurisdiction in itself includes two facets: Territory and Subject matter. Subject matter is relevant so long as the cause of action lies in the territory over which a particular court has power, for outside that, some other courts’ jurisdiction vests.  The test of the territorial jurisdiction of a court is, therefore, “whether the case relates to the general category of subject-matter assigned by law to the Tribunal (or the court)”.[1]

The subject matter for an application u/s 57 is the cancellation of a trademark registered under the Act. In the prior acts as well, high courts were not listed and were defined with respect to their jurisdiction and as such, the fact that the trademark registries lie only in the aforementioned cities must not bar the remedy to infringement of one’s right in some other jurisdiction. This goes to the very heart of ‘static’ and ‘dynamic’ effect as discussed by the Hon’ble Delhi High Court in the cases of “Girdhari Lal Gupta vs K. Gian Chand Jain & Co.,” (Girdhari Lal Case’) and “Dr Reddys Laboratories v. Controller of Patents & Ors.” (‘Dr. Reddy’s Case). The above cases delved into similar questions regarding the Patents Act and the Designs Act respectively. Static effect signifies that only the high court under the jurisdiction of which the trademark registry lies must hear cancellation applications, however dynamic effect of a trademark goes a step further and takes into consideration the fact that granting of a trademark gives the holder a monopoly over the mark throughout the territory of India and a such if there is an infringement of one’s trademark in some jurisdiction apart from the states where the registry lies, those high courts must have the jurisdiction to hear applications too. Essentially, high within whose jurisdiction the interests of any trademark holder are negatively impacted must have the jurisdiction to hear applications to cancel the same.

In the Girdhari Lal case, a full bench of the Delhi High Court has observed with respect to applications under Designs Act that “…such an application can always be made to the High Court within the local limits of which the registration of the design is made, the jurisdiction is not confined to that High Court, but would extend to any other High Court within the local limits of which a part of the cause of action and/or subject-matter of the application may arise.”. The same was relied upon by the bench in the Dr. Reddy case with respect to applications under the Patents Act.  Given the similarity in the field of law and the essence of the statute, the same may also be relied upon in order to adjudicate the same question in the trademark regime.

Analysis & COnclusion

Prior to the enactment of the TR Act, cancellation applications were maintainable before both the IPAB and the High Courts as original proceedings before the former and as infringement petition before the latter. The question here however is that before which high court would cancellation applications originally lie? Section 57provides that applications for cancellation may be filed by “…any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register”. The effect of infringement of one’s intellectual property may be felt by a person easily in any state where he holds commercial interests.

Hypothetically, if a person has registered his trademark under the Mumbai registry has his business interests in Rajasthan, and there was infringement of trademark in the latter state, there is ample cause of action as the effect of the registration would be felt there as well (as per the Girdhari Lal and Dr. Reddy’s Case) and as such, the Rajasthan High Court must be an appropriate forum to be approached as both territorial and subject matter jurisdiction are present in this scenario.

The TR Act has opened quite a can of worms for litigants in cases under trademark law, pointing to a lack of articulate and well-structured laws in the country. Recently, a division bench of the Delhi High Court delivered a landmark judgment regarding the maintainability of Letters Patent Appeal in Trademark cancellation matters which was a conundrum created vide the TR Act by the non-inclusion of any provision in the 1999 Act regarding the intra-court appeal. The issue regarding the appropriate registry and high court as the court of first instance is also a predicament of a similar sort that must be addressed by the courts at the earliest.

[1] Amnon Rubinstein, Jurisdiction and Illegality: A Study in Public Law (Clarendon Press, 1965). See also, Girdhari Lal Gupta v. M/s K. Gian Chand Jain & Co., 1977 SCC OnLine Del 146.

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