The Madras High Court has held that the particular High Court referred to in Sections 47 and 57 of the Trade Marks Act, 1999 (relating to rectification of a trademark) is the High Court exercising appellate jurisdiction over the Registrar of Trade Marks, who made the entry, rectification of which is being sought.
According to the Court, the use of the definite article ‘the’ both in Sections 47 and 57 underscores the Parliament's intention to confer such jurisdiction on a particular High Court. Section 2(1)(s) defining expression ‘prescribed means’, was also considered for the purpose. The Court also noted that Rule 4 of the Trade Marks Rules, 2017 also pointed in the same direction as regards the particular Registrar of Trade Marks.
It was held that since the offices of the Trade Marks Registries are currently located in Mumbai, New Delhi, Calcutta, Chennai, and Ahmedabad, it could be the High Court exercising appellate jurisdiction over each of these offices.
According to the Court, any other interpretation, whether on the basis of the dynamic effect of the registration or otherwise, would result in jurisdictional chaos. Rejecting the contention that such petitions can be filed before any High Court, the Court observed that multiple rectification petitions to rectify a particular entry could then be filed by different aggrieved persons before different High Courts, thus leading to the possibility of conflicting decisions and uncertainty.
Transfer of rectification petition for consolidation with infringement suit in different High Court is not permissible
It may be noted that the High Court in Woltop India Pvt. Ltd. v. Union of India was also of the view that the transfer of rectification petitions only for the limited purpose of consolidation with a pending infringement/passing off suit in a different High Court is also not in consonance with the scheme of the Trade Marks Act. Rule 14(1) on the Madras High Court Intellectual Property Division Rules, 2023, as relied upon by the petitioner, was distinguished.
The High Court however held that the consolidation is appropriate when the rectification petition is pending before the same High Court or where the rectification petition is pending before the Registrar of Trade Marks over whom the High Court exercises appellate jurisdiction and the suit is before that High Court.