JUDICIAL SCRUTINY AND DIVERGENT INTERPRETATIONS

In the absence of a statutory definition, the issue of High Court jurisdiction became a subject of judicial scrutiny and the first judgment on this position of law was delivered by Justice C. Hari Shankar whilst presiding over the Intellectual Property Division of the Delhi High Court. The factual matrix of the two matters before Justice C. Hari Shankar was as follows:

• The first was that of Dr. Reddys Laboratories Limited vs. Fast Cure Pharma1 wherein, while the impugned mark was registered by the Kolkata office of the Trade Marks Registry, the Petitioner had filed a cancellation action before the High Court of Delhi on the basis that the Defendants products, featuring the impugned trade mark, being available within the jurisdiction of the said High Court; and
• The other matter was Centre Consortium LLC vs. Krunal Harjibhai Sardhara2 , wherein the impugned mark was registered by the Ahmedabad office of the Trade Marks Registry. Though there was no use of the same within the jurisdiction of the Delhi High Court, the Petitioner had approached the said High Court on the ground that the Petitioner’s attempt to register its trade mark before the Delhi office of the Trade Marks Registry was obstructed by the existing mark of the Respondent.

Justice Hari Shankar opined that cancellation actions could be filed either before the High Court having jurisdiction over the office of the Trade Marks Registry where the mark was registered or where the ‘dynamic effect’ of the registration was felt. The principle of ‘dynamic effect’ is what prevents any person other than the registered proprietor of an intellectual property from using the same in any territory where the respective Acts are applicable, thus extending the jurisdiction of the High Court to where the statutory rights subsisting in an intellectual property are impinged upon. Two prominent factors at play in the reasoning offered by Justice Hari Shankar’s decision were, first, the decision of the Delhi High Court in the case of Girdhari Lal Gupta vs. K. Gian Chand Jain & Co.3 wherein a full bench had applied the principle of ‘dynamic effect’ of a registration in the context of a design registration. The second reason was the legislative intent behind the Tribunal Reforms Act, 2021 – according to Justice Hari Shankar the legislature had consciously chosen to omit the definition of ‘High Court’ so as not to limit the jurisdiction as previously envisaged in the 1958 Act.

Concurrently, another judgement on this very issue was passed by Justice Pratibha Singh, who was the other judge presiding over the Intellectual Property Division of the Delhi High Court. Justice Pratibha Singh presented a contrasting viewpoint in the case of Hershey Company vs. Dilip Kumar Bacha & Anr.4 , advocating for adherence to the procedure as laid down in the 1958 Act. The appropriate High Court, in her opinion, to be approached for cancellation was the one with jurisdiction over the office of the Trade Marks Registry where the mark was registered. Although Justice Pratibha Singh acknowledged the potential benefits of spread of trade mark disputes across the country to all High Courts, according to her, the decision regarding the jurisdiction of High Courts must be in accordance with the law as envisaged in the statute.