Can civil courts hear trademark suits? Supreme Court refers issue to larger bench

A larger bench of the Supreme Court will decide whether trademark infringement suits can be heard by commercial courts below the level of a district court despite the Trade Marks Act expressly barring such suits before courts inferior to a district court [ISDS Vs Khemka]..A Bench of Justices JB Pardiwala and K Vinod Chandran said there appeared to be a conflict between earlier Supreme Court rulings on how special statutes such as the Trade Marks Act and Arbitration Act interact with the Commercial Courts Act.“In our humble view the legislative imprimatur cannot be diluted by the notifications issued by the High Courts,” the Court said.The Court consequently directed that the matter be placed before the Chief Justice of India for constitution of an appropriate larger Bench so that the law could be settled uniformly across States..The issue arose in an appeal filed by ISDS Private Limited against Khemka Food Products Private Limited.Section 134 of the Trade Marks Act provides that suits relating to trademark infringement and certain other reliefs cannot be instituted before a court inferior to a district court.However, under the Commercial Courts Act, High Courts in some States have notified civil judges (senior division) as commercial courts. In Jharkhand, such courts have been given jurisdiction over commercial disputes valued between ₹3 lakh and ₹1 crore.The appellants argued that allowing trademark suits to be instituted before civil judges (Senior Division) would dilute the specific mandate of the Trade Marks Act.They also pointed out that an appeal from such a commercial court would lie to the district court rather than the High Court. Consequently, a litigant would not have a regular appellate remedy before the High Court and would largely be confined to revisional or supervisory jurisdiction.The respondents argued that intellectual property disputes are expressly recognised as commercial disputes under the Commercial Courts Act.They contended that the Commercial Courts Act was a later special legislation intended to ensure speedy adjudication of commercial disputes and that its overriding provision would prevail over inconsistent provisions in earlier laws..The Supreme Court examined its earlier decisions in Kandla Export Corporation v OCI Corporation and Jaycee Housing Private Limited v Registrar (General), Orissa High Court.In Kandla Export, the Court had treated the Arbitration Act as a self-contained special legislation which prevailed over the more general provisions of the Commercial Courts Act in relation to appeals.However, in Jaycee Housing, the Supreme Court held that provisions concerning jurisdiction under the Arbitration Act would have to yield to the Commercial Courts Act, which was enacted later and contained an overriding clause..The Bench observed that intellectual property rights, including trademarks, are only one category within the broader genus of “commercial disputes” dealt with by the Commercial Courts Act.At the same time, it noted that the Trade Marks Act specifically confers jurisdiction on District Courts and expressly prohibits institution of specified suits before inferior courts.The conflict, the Court said, arises where a High Court notification designates civil judges as commercial courts..The Supreme Court said a larger bench should resolve the conflict and ensure that jurisdiction does not depend upon differing notifications issued in individual States..The petitioners were represented by advocates Singh Nishant Sajay Kumar and Vishal Arun Mishra..The respondents were represented by advocates Indrajit Sinha, Prerna Jhunjhunwala, Neeharika Mazumdar, Ankit Rajgarhia, Aakash Nandolia, Sachin Dubey, Vinita Sejwal and Naman Sondhi..[Read Judgment]