Jurisdiction for Trademark Cancellation Petitions: Aftermath of The Tribunal Reforms Act, 2021
Recently, the Delhi High Court in the case of Dr Reddys Laboratories v. Controller of Patents & Ors., extensively delved into the scope of territorial jurisdiction of a High Court to hear patent revocation petitions, and concluded that a petition for revocation of a patent under Section 64 of the Patents Act, 1970 could be filed at any High Court within whose jurisdiction its exclusionary effect would be felt. While this decision has clarified the position for patents, the question remains open ended for trade marks, in the aftermath of the abolition of the Intellectual Property Appellate Board (“IPAB”).
The obvious answer as to which court would have jurisdiction to adjudicate upon a trade mark cancellation petition, is the court within whose jurisdiction the Trade Marks Registry (“Registry”) that has granted the registration is situated. However, it remains untested whether the principles applied by the Delhi High Court in the Dr. Reddys case would apply to trade mark cancellations, i.e., can cancellation petitions against trade mark registrations also be filed in any High Court within whose jurisdiction its exclusionary effect would be felt.
To arrive at an answer, it is important to first analyze the evolution of the trade mark statutes in India. The first codified statute that governed trade marks law in India, namely, the Trade Marks Act, 1940, defined “High Court” as “in relation to any State, the High Court for that State…”. This definition failed to provide clarity on which High Court would have jurisdiction to hear cancellation petitions. Given this, the ambiguity in the definition was done away with by Section 3 of the Trade and Merchandise Act, 1958, which defined a “High Court” having jurisdiction as the High Court within the local limits of whose appellate jurisdiction the office of the Registry is situated. Thereafter, in 2003, the IPAB was established pursuant to Article 41 of the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the powers to try and entertain trade mark cancellation petitions were transferred from High Courts to the IPAB, which was incorporated under the Trade Marks Act, 1999 (“TM Act”). This resulted in the definition of “High Court” being removed from the statute. In 2021, with the enactment of the Tribunal Reforms Act (“TRA”), the IPAB, among other tribunals, was abolished and the powers to hear cancellation petitions were once again transferred to High Courts, however, the definition of a “High Court” was not re-inserted.
Under the TM Act, as amended by the TRA, any person aggrieved by a trade mark registration, may apply for its cancellation either to the Registrar of Trade Marks or the High Court, without specifying which Registry or High Court. Rule 4 of the Trade Marks Rules, 2017 (“TM Rules”) defines the appropriate office of the Registry for the purposes of filing applications, Notices of Opposition and cancellation petitions under Sections 47 and 57 of the TM Act, as the Registry within whose territorial limits the principal place of business in India of the applicant/opponent is situated. However, neither the TM Act nor the TM Rules provide a definition for the appropriate High Court for filing cancellation petitions. As such, it would appear that in the absence of an interpretation to the contrary, there is no bar as to the High Court where a cancellation petition could be filed.
Given that the statutes are silent on the definition of “High Court”, it becomes imperative to turn to synonymous statutes, which have also been affected by the abolition of the IPAB. Patent rectifications, prior to the TRA, could also have been filed at the IPAB, this question was addressed in detail by the Delhi High Court in the Dr. Reddys case.
In Dr. Reddys, the Delhi High Court, relying on the decision of the full judge bench of the Delhi High Court in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., observed that the static and dynamic effects of patent registrations have to be considered while addressing the issue of jurisdiction. The static effect would imply that the High Court under whose territorial jurisdiction the Patent Office granting the registration is located would have jurisdiction to entertain the cancellation petition. On the other hand, when the dynamic effect of the registration is considered, i.e., the fact that the exclusive right to the patent applies to the entire length and breadth of the country, even the High Court within whose jurisdiction the interested party’s commercial interest is affected, would also have necessary nexus with the subject matter and thus jurisdiction to entertain the revocation petition. Given that trade mark registrations also apply to the entirety of the country, it would have the same dynamic effects as a patent registration. Therefore, applying the principles elaborated upon in Dr. Reddys, any High Court within whose jurisdiction a subsisting trade mark registration is effecting the commercial interests of a person would have jurisdiction to entertain a petition to cancel such a registration.
In sum and substance, it would appear that the actual test for determining the territorial jurisdiction of a High Court in relation to trade mark cancellation petitions is whether the effect of registration of a trade mark would be felt within the jurisdiction of the said High Court. Therefore, where any person’s commercial interests are being affected within the jurisdiction of a High Court, the said High Court shall also have territorial jurisdiction to entertain a trademark cancellation petition. However, the TRA is fairly new, and it is yet to be seen how courts interpret the law in relation to trademark cancellation petitions preferred before High Courts that do not have jurisdiction by virtue of the static effect of trade mark registration. In the absence of an amendment to the statute, this question begs to be answered by judicial interpretation.
Urfee Roomi is a Partner, Janaki Arun is a Senior Associate and Ayush Dixit is an Associate at Sujata Chaudhri IP Attorneys.