The Delhi High Court has noted that the omission of a definition for 'High Court' in the Trade Marks Act, 1999, raises questions about the legislative intent and the jurisdictional scope of the Court to entertain rectification petitions.

The matters were placed for adjudication before a larger Bench, while the Bench of Justice Prathiba M Singh observed that, "both in the Patents Act, 1970 and in the Designs Act, 2000, the term ‘High Court’ has been defined. However, under the 1999 Act, the term ‘High Court’ has not been defined. The omission of a definition for 'High Court' within the 1999 Act, unlike its counterparts in the Patents Act, 1970 and the Designs Act, 2000 raises questions about the legislative intent and the jurisdictional scope of this Court to entertain rectification petitions under the 1999 Act. The inconsistency in defining 'High Court' across different IP statutes laws introduces a significant challenge in harmonizing the jurisdictional approach for rectification petitions under the 1999 Act. Thus, the applicability of Girdhari Lal Gupta (supra) in the context of the 1999 Act, as amended by the TRA, falls for consideration.

Notably, in the case of Girdhari Lal Gupta v. K. Gian Chand Jain, rendered under the Designs Act, it was held that the Court's jurisdiction is fixed based on the connection between the subject-matter or cause of action and the territory within the local jurisdiction of that particular High Court.

Counsel Urfee Roomi, along with others, appeared for the petitioner, while CGSC Harish Vaidyanathan, Senior Counsel Rajshekhar Rao, along with others, appeared for the respondents.

In this case, the batch of petitions highlighted a significant issue concerning the High Court's jurisdiction to consider rectification/cancellation petitions under Section 57 of the Trade Marks Act, 1999, following the enactment of the Tribunal Reforms Act, 2021.

Subsequently, it was said that, "In view of the significance of the issues raised in these cases, including the question as to whether Girdhari Lal Gupta (supra) would be applicable in the context of the 1999 Act, as amended by the TRA, this Court is of the opinion that the issues deserve to be considered by a larger Bench, as the said decision was rendered by a Full Bench of this Court."

In light of the same, the matters were placed before the Acting Chief Justice for the constitution of a larger Bench for deciding the following questions:

i) Whether the decision of the Full Bench in Girdhari Lal Gupta, rendered under the Designs Act, 1911, would be applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining jurisdiction of a High Court under Section 57 of the 1999 Act?

ii) Whether the jurisdiction of the High Court under Section 57 of the 1999 Act would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the impugned trade mark registration?

iii) Whether the expression ‘the High Court’ can be differently construed in Sections 47, 57 and 91 of the 1999 Act?

It was clarified that the matters shall not be treated as part-heard.

Appearances:

Petitioner: Counsels Urfee Roomi, Apoorva Bharati, Anuja Chaudhury, Ritesh Kumar, Anubhav Chhabra, Radhika Arora

Respondents: CGSC Harish Vaidyanathan, Senior Counsel Rajshekhar Rao, Counsels Srish Kumar Mishra, Sagar Mehlawat, Alexander Mathai Paikaday, Kapil Wadhwa, RV Yogesh, Sindoora VNL, Vishakha Gupta, Twinkle Rathi, KV Pawan Kumar, Tejasvini Puri, Vasanthi Hariharan

Cause Title: The Hershey Company vs Dilip Kumar Bacha, Trading As Shree Ganesh Namkeen & Anr.

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Delhi High CourtJustice Prathiba M SinghTrademarks Act

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