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No statutory mandate in Trade Mark Act that restricts trade mark infringement suite to specific HC: Delhi HC

Gireesh Babu, New Delhi
Wednesday, September 13, 2023, 08:00 Hrs  [IST]

Addressing a legal question on the jurisdiction of High Courts on certain sections of the Trade Marks Act, the Delhi High Court has observed that the sections under Trade Marks Act for rectification of the register of marks would also be maintainable before the High Courts within whose jurisdiction the dynamic effect of the registration under challenge is felt by the petitioner or applicant.

The decision comes in a couple of matters related to trade mark dispute, one of which is a petition filed by Hyderabad-based drug major, Dr Reddy's Laboratories Ltd against Fast Cure Pharma (FCP) and others.

The question of law regarding the appropriate High Court before which an application under Section 47, 57 or 124 of the Trade Marks Act, 1999 for rectification of the Register of Trade Marks by deleting, therefrom, the mark of the Fast Cure Pharma and others, was heard and decided by Justice C Hari Shankar.

In an order on September 5, the Judge after hearing both the sides, held that applications under Section 47 or Section 57 of the Trade Marks Act, 1999, as also under Section 124(1)(ii), would be maintainable not only before the High Courts within whose jurisdiction the offices of the Trade Mark Registry which granted the impugned registrations are situated, but also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt by the petitioner/applicant.

"The dynamic effect of the impugned registrations in these cases having been felt by the petitioners before this Court, these petitions are maintainable before it," said the Court. The petitions have been listed on October 12, now, for deciding on further course of action.

Section 47 of the Act deals with removal of trade mark from register and imposition of limitations on grounds of non-use, Section 57 includes the power to cancel or vary registration and to rectify the register, and Section 124 deals with the stay of proceedings where the validity of registration of the trade mark is questioned.

Dr Reddy's approached the legal system against FCP's alleged infringement of its mark Razo, with a mark Razofast, both used for the antacid pharmaceutical compound rabeprazole. The suite was decreed in favour of Dr Reddy's in a judgement on August 16, 2023.

However, in between the company also filed a petition in November, 2022 seeking rectification of the register of Trade Marks by removal of the mark Razofast of FCP. However, the counsel appeared for Dr Reddy's acknowledged that the Court would have to take a view on whether the rectification petition would lie before the Court, or before the High Court of Calcutta, which exercises territorial jurisdiction over the Kolkata office of the Trade Marks Registry, which granted the registration to Razofast mark on December 23, 2018.

Issuing the order, the Judge observed that there is no statutory mandate in the present Trade Marks Act that the petitioner can institute and prosecute a trade mark infringement suite only before the High Court within whose jurisdiction the offices of the Trade Mark Registry which granted the impugned registrations are situated.

"The legislature has consciously omitted, from the present Trade Marks Act, even while amending it in 2021, any provision analogous to Section 2(d), or Section 3, of the TMMA 1958. That being the statutory position, I see no reason why the petitioner, who can prefer and prosecute his infringement suit before this Court, should not be allowed to prefer and prosecute his removal/cancellation/rectification petition, likewise," said the Order.


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