The Delhi High Court on Monday directed the Trade Marks Registry to transfer to the High Court, the complete files of five trademark rectification matters pending before it..These rectification matters will be consolidated with the connected and ongoing infringement, passing off and rectification proceedings pending before the High Court.In an unprecedented step, the High Court has suo motu transferred these rectification matters to itself..The ongoing dispute is between Jumeirah Beach Resort’s registered trademark ‘Burj Al Arab’ and Designarch Consultants’ registered trademarks ‘BURJ NOIDA’ and the device (as shown in the image above). Jumeirah had instituted trademark infringement and passing off proceedings before the Delhi High Court against Designarch and the said matter is currently pending adjudication. Jumeirah had also filed trademark rectification petitions for Designarch’s trademarks before the erstwhile Intellectual Property Appellate Board (IPAB), which were subsequently transferred to the High Court, in light of the Tribunal Reforms Act, 2021, by which the IPAB was abolished..Before the institution of both the above proceedings by Jumeirah, Designarch had already instituted five trademark rectification proceedings before the Trade Marks Registry against Jumeirah’s ‘Burj Al Arab’ trademark, which were also pending before the Trade Marks Registry..The Court, while directing a transfer of the rectification proceedings instated by Designarch, observed that in light of the Tribunal Reforms Act, 2021 and the Delhi High Court Intellectual Property Rights Division Rules, 2022 (IPD Rules), the High Court is the successor of the IPAB and has effectively stepped into the shoes of the erstwhile IPAB with respect to the appeals filed against the decisions of the Registrar of Trade Marks. Thus, all the proceedings that were earlier to be adjudicated by the IPAB, are now before the High Court..It also observed that Section 125(2) of the Trade Marks Act, 1999 empowered the Registrar of Trade Marks, at any stage, to refer the matter to the IPAB, whose powers, authority and jurisdiction now stand transferred to the High Court. The Court further noted that if the Registrar has the power to transfer a matter to the High Court, surely the High Court also has the power to direct the transfer of such matters to itself, especially where all other connected petitions - including petitions for passing off and rectification petitions instituted by Jumeirah against Designarch - which are pending before the IPAB, already stood transferred to the High Court..The Court also interpreted Rule 26 of the IPD Rules to observe that the first sentence of the provision permits consolidation of “proceedings”, “where there are multiple proceedings relating to the same or related IPR subject matter”. It was noted that the restrictive wording of the second statement which limits consolidation within the “commercial court” cannot restrict the ambit of the first sentence. It observed that the intent and purpose of Rule 26, howsoever it may be worded, is obviously to ensure that proceedings relating to the same or related IPR subject matters are heard together and that if any such proceedings are pending before the IPD of this Court, all connected and related proceedings should also be taken up by it..Moreover, in all commercial matters, an expeditious and meaningful disposal is imperative, which is particularly the case where the proceedings relate to intellectual property rights. The Court said that confusion is bound to ensue if the infringement and rectification proceedings initiated by Jumeirah are taken up by the High Court and the counter proceedings for rectification initiated by Designarch pending before the Registrar of Trade Marks are allowed to continue there..The Court has, accordingly, directed the Trade Marks Registry to transfer complete records of the five rectification proceedings before it within eight weeks from the date of the order so that the matters can be consolidated and heard together..Diva Arora is a Partner & Rohan Krishna Seth is a Senior Associate at Fidus Law Chambers.
The Delhi High Court on Monday directed the Trade Marks Registry to transfer to the High Court, the complete files of five trademark rectification matters pending before it..These rectification matters will be consolidated with the connected and ongoing infringement, passing off and rectification proceedings pending before the High Court.In an unprecedented step, the High Court has suo motu transferred these rectification matters to itself..The ongoing dispute is between Jumeirah Beach Resort’s registered trademark ‘Burj Al Arab’ and Designarch Consultants’ registered trademarks ‘BURJ NOIDA’ and the device (as shown in the image above). Jumeirah had instituted trademark infringement and passing off proceedings before the Delhi High Court against Designarch and the said matter is currently pending adjudication. Jumeirah had also filed trademark rectification petitions for Designarch’s trademarks before the erstwhile Intellectual Property Appellate Board (IPAB), which were subsequently transferred to the High Court, in light of the Tribunal Reforms Act, 2021, by which the IPAB was abolished..Before the institution of both the above proceedings by Jumeirah, Designarch had already instituted five trademark rectification proceedings before the Trade Marks Registry against Jumeirah’s ‘Burj Al Arab’ trademark, which were also pending before the Trade Marks Registry..The Court, while directing a transfer of the rectification proceedings instated by Designarch, observed that in light of the Tribunal Reforms Act, 2021 and the Delhi High Court Intellectual Property Rights Division Rules, 2022 (IPD Rules), the High Court is the successor of the IPAB and has effectively stepped into the shoes of the erstwhile IPAB with respect to the appeals filed against the decisions of the Registrar of Trade Marks. Thus, all the proceedings that were earlier to be adjudicated by the IPAB, are now before the High Court..It also observed that Section 125(2) of the Trade Marks Act, 1999 empowered the Registrar of Trade Marks, at any stage, to refer the matter to the IPAB, whose powers, authority and jurisdiction now stand transferred to the High Court. The Court further noted that if the Registrar has the power to transfer a matter to the High Court, surely the High Court also has the power to direct the transfer of such matters to itself, especially where all other connected petitions - including petitions for passing off and rectification petitions instituted by Jumeirah against Designarch - which are pending before the IPAB, already stood transferred to the High Court..The Court also interpreted Rule 26 of the IPD Rules to observe that the first sentence of the provision permits consolidation of “proceedings”, “where there are multiple proceedings relating to the same or related IPR subject matter”. It was noted that the restrictive wording of the second statement which limits consolidation within the “commercial court” cannot restrict the ambit of the first sentence. It observed that the intent and purpose of Rule 26, howsoever it may be worded, is obviously to ensure that proceedings relating to the same or related IPR subject matters are heard together and that if any such proceedings are pending before the IPD of this Court, all connected and related proceedings should also be taken up by it..Moreover, in all commercial matters, an expeditious and meaningful disposal is imperative, which is particularly the case where the proceedings relate to intellectual property rights. The Court said that confusion is bound to ensue if the infringement and rectification proceedings initiated by Jumeirah are taken up by the High Court and the counter proceedings for rectification initiated by Designarch pending before the Registrar of Trade Marks are allowed to continue there..The Court has, accordingly, directed the Trade Marks Registry to transfer complete records of the five rectification proceedings before it within eight weeks from the date of the order so that the matters can be consolidated and heard together..Diva Arora is a Partner & Rohan Krishna Seth is a Senior Associate at Fidus Law Chambers.
