Jurisdiction for Trademark cancellation petitions: Aftermath of the Tribunal Reforms Act 2021 [Part II]

In March 2023, we had covered the issue of jurisdiction of High Courts in relation to trademark cancellation petitions pursuant to the enactment of the Tribunals Reforms Act, 2021 (TRA) (see: here).

Recently Sujata Chaudhri IP Attorneys handled a matter at the Delhi High Court, the result of which extends the applicability of the dynamic effect test for the determination of the jurisdiction of a High Court to hear a trademark cancellation petition.  

The decisions of the Delhi High Court in Centre Consortium, LLC v. Krunal Harjibhai Sardhara & Anr. (handled by Sujata Chaudhri IP Attorneys) and Dr. Reddys Laboratories Limited v. Fast Cure Pharma & Anr., solidified the position relating to the jurisdiction of a High Court in a matter where a cancellation petition is filed against a registration issued by an office of the Trade Marks Registry (“Registry”) situated outside the territorial limit of such a court.

In both cases, the Delhi High Court extended the test of the dynamic effect of a registration laid down by the full bench of the Delhi High Court in the case of Girdhari Lal Gupta v. K. Gian Chand & Co.

The Court held that a cancellation petition against a registration could be filed before any High Court if it could be shown that the dynamic effect of the registration is felt within the jurisdiction of the said High Court, notwithstanding that a registration was issued by a Registry office located within or beyond the jurisdiction of a different High Court.

As per the Court, the dynamic effect of a registration would be felt within the jurisdiction of the a High Court in the following situations:

Where a civil suit could be filed before the Court: The Court noted that for an infringement suit to be maintainable, the validity of a registration on which the action is based is essential. Therefore, the inter-related questions of validity and infringement should be decided by one court. Further, applying the dynamic effect to a case where a court would have jurisdiction to adjudicate a civil suit, it would follow that court would also have jurisdiction to adjudicate a trademark cancellation petition.

Where the petitioner’s trademark application is obstructed by the registration sought to be cancelled: The Court noted that if the registration of the petitioner’s trademark application is being obstructed owing to the registration sought to be cancelled, the dynamic effect of the registration is felt within the jurisdiction where the petitioner had sought registration of its mark.

However, the Court reiterated the note of caution enunciated in Girdhari Lal Gupta in the context of trademark cancellation/rectification. The Court observed that the territorial jurisdiction of a court cannot be extended beyond a court where the dynamic effect of a registration is felt or is likely to be felt. The Court also noted that the law cannot arm a litigant with a means of harassing his opponent, and that the aim of litigation should be to secure justice

This judgement has opened the gates of Indian High Courts, even those without specialized IP Divisions, to hear and decide trademark cancellation petitions against registrations which are located beyond their traditional territorial jurisdictions and has tilted the scale of convenience in the favour of petitioners.

Since the Trade Marks Registry has shifted beyond the tangible boundaries of the five Trade Marks Offices, and its records as well as the Trade Marks Register are accessible across the country, this decision comes as a welcome step.

Perhaps, it is now time to move beyond the traditional methods of determining jurisdiction and expanding it to the exigencies of the digital age. It will be interesting to see if this judgment may prompt a revision of the Trade Marks Act, 1999, or if the principle of dynamic effect will stand the test of time. 

About the authors: Urfee Roomi is a Partner, Janaki Arun is a Senior Associate and Ayush Dixit is an Associate at Sujata Chaudhri IP Attorneys.