The Delhi High Court was recently called upon to answer where a trademark rectification petition can be filed. Should it be filed within the jurisdiction of the trademark office that gave the registration, or can it be filed before any High Court? In Dr Reddy’s Labs Vs. Fast Cure Pharma, a Single Judge of the same Court had earlier held that rectification petitions can be filed before any High Court. This decision was based on statutory interpretation and the decision in the Giridharilal case where the Division Bench of the Delhi High Court had held that design revocation petitions can be filed before any High Court. The same rule was earlier held to be applicable to patent revocations as well.
In this case, the Single Judge disagreed with the earlier decision of her colleague and observed that Trademark Rectification petition filing must be limited to the jurisdiction of the High Court within which the trademark office that granted the registration was situated. While observing so, the Court differentiated the Patents and Designs Acts and stated that the Trademarks Act has to be treated differently. The Judge also observed that the jurisdiction of the Registrar with respect to rectification petitions and that of the High Courts to deal with the said petitions must stand on the same footing. Additionally, the Judge also stated that divergent jurisdiction based on the dynamic effect principle would result in inconvenience and difficulties for businesses and registrants. As per the dynamic effect principle, any High Court where the effect of the trademark is felt would have jurisdiction.
Citation: The Hershey Company Vs. Dilip Kumar Bacha, Trading As Shree Ganesh Namkeen and Ors. [C.O. (COMM.IPD-TM) 179/2023]
Disclaimer
The case notes in this blog post have been written by IP attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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