This is an archive article published on March 14, 2024

5-judge bench to examine HC jurisdiction to hear cancellation pleas under Trade Marks Act

The Delhi High Court appointed senior advocate Gaurav Pachnanda as an amicus curiae to assist the court in a matter related to its jurisdiction to consider rectification/cancellation petitions under the Trade Marks Act.

The batch of pleas was referred to a larger bench by Justice Prathiba Singh in her February 9 judgment. (File)

3 min readMar 14, 2024 10:41 AM IST First published on: Mar 14, 2024 at 10:40 AM IST

A five-judge bench of the Delhi High Court on Wednesday appointed senior advocate Gaurav Pachnanda as an amicus curiae to assist the court in a matter “concerning its jurisdiction to consider rectification/cancellation petitions” under Trade Marks Act following the enactment of the Tribunal Reforms Act, 2021.

The bench of acting Chief Justice Manmohan, Justice Vibhu Bakhru, Justice Sanjeev Narula, Justice Tara Vitasta Ganju and Justice Manmeet Pritam Singh Arora appointed the senior counsel as an amicus curiae after noting that the matter involves “questions of wider public importance”.

The bench also permitted the parties concerned to file their written submissions and listed the matter for hearing on May 10.

The bench is set to consider the issue of whether cancellation petitions under the Trade Marks Act can be filed only before a high court within whose jurisdiction the offices of the Trade Mark Registry that granted the registrations are situated, or whether such applications should also be filed before the high courts within whose jurisdiction “the dynamic effect” of the registration is felt by such a petitioner.

The batch of pleas was referred to a larger bench by Justice Prathiba Singh in her February 9 judgment. Justice Singh had disagreed with a September 2023 decision of a co-ordinate single judge bench of the high court (in a separate matter). The coordinate bench had said that such petitions would be maintainable not only before the high courts within whose jurisdiction the offices of the Trade Mark Registry which granted the registrations are situated, but also before the high courts within whose jurisdiction the “dynamic effect” of the registration is felt by the petitioner.

Justice Singh thereafter framed three questions for consideration before a five-judge bench:

* Whether the decision of the full bench in Girdhari Lal Gupta v K Gian Chand Jain & Co (1997) rendered under the Designs Act would be applicable in the context of the Trade Marks Act as amended by the Tribunal Reforms Act for determining jurisdiction of a high court under Section 57 (power to cancel or vary registration and to rectify the register) of Trade Marks Act?

* Whether the jurisdiction of the high court under Section 57 of the Trade Marks Act would be determined on the basis of the appropriate office of the Trade Mark Registry which granted the impugned trade mark registration?

* Whether the expression ‘the High Court’ can be differently construed in Sections 47 (removal of trademark from register and imposition of limitations on ground of non-use), 57 and 91 (appeal against order of trademark registrar before appellate board) of the Trade Marks Act?

The decision of a full bench of the high court in the Girdhari Lal case that pertains to the Designs Act states that only those high courts where the legal injury occurs, and which have a territorial nexus to the dispute or where the cause of action arises, can entertain rectification/cancellation petitions.