M/S.Woltop India Pvt. Ltd vs Union Of India

W.P(IPD)Nos.30 & 32 of 2024

IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 20.02.2025 CORAM THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

W.P.(IPD)Nos.30 & 32 of 2024

M/s.Woltop India Pvt. Ltd., Rep. by its Director Mr.Suresh Talbot Ashish, 696/1b1, 697/2, 698, 699, Villangadupakkam Village, New Madhavaram T.K., Thiruvallur, Chennai, Tamil Nadu-600 060. ... Petitioner

-vs-

1.Union of India Through its Secretary, Ministry of Commerce and Industry, Department for Promotion of Industry and Internal Trade Udyog Bhawan, New Delhi-110 011.

2.Controller General of Patents, Designs and Trademarks, Office of the Controller General of Patents, Designs & Trademarks, Registry, Boudhik Sampada Bhawan, S.M. Road, Antop Hill, Mumbai- 400 037.

3.The Registrar of Trademarks, Trademarks Registry Mumbai, Boudhik Sampada Bhawan, S.M. Road, Antop Hill, Mumbai- 400 037. 4.The Registrar of Trademarks,

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Trademarks Registry, Ahmedabad, Boudhik Sampada Bhawan, Near Chanakyapuri Overbridge, Besides AMC City Civic Centre, Ghatlodia, Ahmedabad- 380061.

5.Mr.Sandeep Kagalwala Sole Proprietor of M/s.Ace Assets, K-201, 2nd Floor, 'K' Wing, Western City Apartment, Nr.L.P. Savani School, Pal-Adajan, Surat -395009, Gujarat. Also At A-11, Suryapur Soc Opp Jain Derasar, Rander Road, Surat- 395 009 Gujarat. .. Respondents

Common Prayer: Writ Petitions (IPD) filed under Article 226 of the

Constitution of India for issuance of Writ of Mandamus directing

respondents 1 to 4 to transfer the rectification petitions bearing Nos.272370

& 272372 initiated against Trademark Registration bearing Nos.4376003 in

class 27 & 4545395 in class 35 filed by the petitioner before the 4th

respondent to the files of the Intellectual Property Division of this Hon'ble

Court.

In both WPs. For petitioner : Mr.Navod Prasannan for Mr.M.S.Bharath For R1 to R4 : No appearance For R5 : Mr.R.Sathish Kumar

COMMON ORDER

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The writ petitioner filed C.S.(Comm.Div.)No.199 of 2023 against

several parties, including the 5th respondent in these writ petitions. In the

civil suit, the petitioner herein has sought remedies in respect of alleged

infringement of trade mark and passing off.

2.On the ground that the said civil suit is pending before this Court,

by these two writ petitions, the petitioner seeks a direction to respondents 1

to 4 to transfer rectification petition Nos.272370 & 272372, which are

pending before the 4th respondent, the Registrar of Trade Marks,

Ahmedabad, to this Court (the IPD).

3.These writ petitions were filed after requesting the 4th respondent, by

letter dated 30.05.2024, to exercise powers under Section 125(2) of the

Trade Marks Act, 1999 (the TM Act) and transfer the pending rectification

petitions to the IPD of this Court.

4.Since the maintainability of these writ petitions was questioned,

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learned counsel for the petitioner addressed arguments thereon. His first

contention was that it is just and necessary to consolidate proceedings, as

provided in Rule 14 (1) of the Madras High Court Intellectual Property

Division Rules, 2023 (the MHC IPD Rules) so as to enable the expeditious

disposal of both the rectification petitions and the suit. In spite of making a

request to the Registrar of Trademarks, he submits that no action has been

taken thereon. His next contention is that the Hon'ble Supreme Court could

not have been approached seeking such transfer because neither Article

139A of the Constitution of India nor Section 25 of the Code of Civil

Procedure, 1908 (the CPC) applies in the facts and circumstances.

5. As regards the power of this Court, by referring to Article 226 of

the Constitution of India, learned counsel submits that power may be

exercised by this Court provided cause of action arises within the

jurisdiction of this Court irrespective of the place of office of the authority to

whom the writ is to be issued. He also relies upon the parliamentary debate

preceding the amendment to Article 226 to substantiate the contention that

the amendment was effected with the object of enabling High Courts across

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the country to exercise jurisdiction over authorities, subject to the cause of

action arising within jurisdiction, irrespective of the place from which the

authority functions.

6. After pointing out that the rectification petitions were filed prior to

the suit and that these petitions have not been disposed of in spite of the

lapse of several years, learned counsel submits, in conclusion, that the

interest of justice warrants that power be exercised under Article 226 to

enable the consolidation and expeditious disposal of all the proceedings.

7. In response, learned counsel for the 5th respondent submits that it is

incorrect to contend that only this Court is in a position to exercise

jurisdiction. By pointing out that the immediate trigger for filing the writ

petitions is the alleged failure of the Registrar of Trade Marks, Ahmedabad,

to act on letter of the petitioner requesting transfer, learned counsel submits

that a writ petition could have been lodged before the Gujarat High Court

seeking early consideration and disposal of the letter requesting transfer. He

further submits that neither party has applied for a stay of the suit pending

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before this Court and that, therefore, there is no impediment for the

continued prosecution of the suit. The last contention of learned counsel is

that the appropriate office of the Trademarks Registry is defined in Rule 4 of

the Trade Mark Rules, 2017 (the TM Rules). Therefore, he submits that the

High Court with jurisdiction over the appropriate office wherein the relevant

trade mark was registered is the jurisdictional High Court for the purposes of

exercising powers of rectification under Sections 47 & 57 of the TM Act.

8. Upon consideration of the rival contentions, the first aspect to be

recognised is that the petitioner seeks a discretionary public law remedy,

albeit by invoking the constitutional power under Article 226 of wide

amplitude.

9. Given the nature of relief claimed in these petitions, two issues are

required to be examined. The first relates to the power of this Court to direct

the Registrar of Trademarks, Ahmedabad, to transfer the pending

rectification petitions to the file of this Court. The second - probably more

important - relates to the jurisdiction of this Court to exercise power under

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Sections 47 & 57 of the TM Act in relation to trade marks that were

registered by the Registrar of Trademarks, Ahmedabad. I propose to deal

with the second issue first.

10. Sections 47 & 57 of the TM Act deal with the power of

rectification. After the said provisions were amended pursuant to the

Tribunals Reforms Act, 2021 (the Tribunals Reforms Act), the expression

“Appellate Board” was replaced with the expression “High Court” in both

these provisions. Significantly, in both provisions, the definite article “the”

qualifies the words “High Court”. Section 91, the provision dealing with

appeals to the High Court from a decision of the Registrar, and other

provisions (such as Sections 124 and 125) dealing with the High Court in the

TM Act also use the definite article “the” to qualify the words “High Court”.

In my view, the use of the definite article “the” both in Sections 47 & 57

underscores Parliament's intention to confer such jurisdiction on a particular

High Court. In Section 2(1)(s), the TM Act defines the expression

“prescribed means” “in relation to proceedings before a High Court

prescribed by Rules made by the High Court.” (emphasis added).

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11. From the above, it is clear that the indefinite article 'a' is used in

the TM Act when the reference is generic, i.e. not to a particular High Court,

whereas the definite article “the” is used when Parliament intends to refer to

a particular High Court. The rationale for using the indefinite article “a” in

the first limb of Section 2(1)(s) is not far to seek. The identity of the

particular High Court vested with inter alia the power of rectification or

appellate power would vary depending upon the location of the office of the

Trade Marks Registry, which made the entry or decision relating to the

relevant trademark. Since the offices of the Trade Marks Registries are

currently located in Mumbai, New Delhi, Calcutta, Chennai, and

Ahmedabad, it could be the High Court exercising appellate jurisdiction

over each of these offices. Consequently, proceedings under the TM Act

could lie before any of these High Courts, and rules may be framed by any

of these High Courts in respect thereof. In fact, such rules have been framed

by the Delhi High Court, Calcutta High Court and this Court.

12. The TM Act confers the power of rectification not only on the

High Court, but also on the Registrar of Trade Marks. If the TM Rules are

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examined, as pointed out by learned counsel for the 5th respondent, the

appropriate office of the Trade Marks Registry is defined in Rule 4. When

Sections 47 and 57 are read with Rule 4, it is beyond doubt that an

application for rectification either under Sections 47 or 57 would only lie

before the office of the Trade Marks Registry within whose territorial limits

the principal place of business, as entered in the register, of the registered

proprietor is situated. The principal place of business of the registered

proprietor of the impugned marks, in these cases, is Surat, Gujarat, and the

appropriate office is the office of the Trade Marks Registry, Ahmedabad.

Therefore, the rectification petitions were filed by the petitioner before the

Registrar of Trade Marks, Ahmedabad.

13. In Adiuvo Diagnostics Private Limited v University Health

Network, Order dated 27.09.2023 in W.M.P(IPD) No.5 & 7 of 2023 in

W.P(IPD) No.23 of 2023, which was upheld in University Health Network v.

Adiuvo Diagnostics Private Limited, 2024 SCC OnLine Mad 185, this Court

concluded that the appropriate Patent Office, as defined in Rule 4 of the

Patent Rules, does not control the exercise of writ jurisdiction by this Court.

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In these cases, however, the larger issue that arises is whether statutory

jurisdiction, as opposed to jurisdiction under Article 226 of the Constitution,

under Sections 47 & 57 can be exercised by this Court even if it were to be

assumed that the power of transfer can be exercised under Article 226.

14. Since the object of a rectification petition is to examine whether

rectification of an entry relating to a registered trade mark is warranted, it

stands to reason that the particular High Court referred to in Sections 47 and

57 is the High Court exercising appellate jurisdiction over the Registrar of

Trade Marks, who made the impugned entry. Rule 4 also points in the same

direction as regards the particular Registrar of Trade Marks. Any other

interpretation, whether on the basis of the dynamic effect of the registration

or otherwise, would result in jurisdictional chaos because “any person

aggrieved” is entitled to petition to rectify the register. Therefore, if it were

to be concluded that such petitions may be filed before any High Court,

multiple rectification petitions to rectify a particular entry of registration of a

trade mark could be filed by different aggrieved persons before different

High Courts leading to the possibility of conflicting decisions and great

uncertainty.

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15. Justifying such transfer only for the limited purpose of

consolidation with a pending suit is also not in consonance with the scheme

of the TM Act for reasons set out below. Learned counsel for the petitioner

placed reliance on Rule 14(1) on the MHC IPD Rules to contend that it

confers the power of consolidation on this Court. The said Rule is evidently

intended to enable the consolidation of proceedings pending before courts or

authorities over whom this Court exercises supervisory jurisdiction.

Therefore, the request of the petitioner cannot be countenanced by referring

to and relying upon Rule 14. In addition, the statute confers jurisdiction to

receive suits relating to trade marks on all jurisdictional civil (commercial

courts and commercial divisions after the enactment of the Commercial

Courts Act, 2015) courts not inferior to a District Court. Except for five

High Courts, no other High Court exercises original jurisdiction. Hence,

outside the territorial limits of the original jurisdiction of these five High

Courts, suits are filed before the jurisdictional District Court. Even if there is

a connected rectification petition, it cannot be consolidated with the suit in

that situation.

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16. The TM Act deals with this scenario in Section 124 by providing

that the suit be stayed until the rectification petition is decided. Once the

validity of registration of the trade mark is decided in the rectification

petition, the statute provides for the suit to be proceeded with on that basis

thereafter, and conflict is thereby obviated. The only exceptions are where

the rectification petition is also pending before the same High Court or

where the rectification petition is pending before the Registrar of Trade

Marks over whom the High Court exercises appellate jurisdiction and the

suit is before that High Court. In both the above situations, consolidation is

appropriate.

17. Therefore, I conclude that the power of rectification is exercisable

only by the High Court exercising appellate jurisdiction over the appropriate

office of the Trade Marks Registry, wherein the entry relating to the

impugned mark was made. A learned single Judge of this Court had taken a

contrary view in Nippon Paint Holdings Co. Ltd. and another v. Suraj

Sharma, MANU/TN/1388/2024, (Nippon Paint Holdings) inter alia by

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agreeing with the view of the Delhi High Court in Dr.Reddy's Laboratories

Ltd. v. Fast Cure Pharma and others, 2023 SCC OnLine Del 5409, and by

not endorsing the view in The Hershey Company v. Dilip Kumar Bacha and

others, MANU/DE/0904/2024. The order in Nippon Paint Holdings was

stayed by the Hon'ble Supreme Court in Suraj Sharma and another v.

Nippon Paint Holdings Co. Ltd. and another, order dated 10.05.2024 in

Special Leave to Appeal (C) No.10454 of 2024, and the stay operates as on

date. Nippon Paint Holdings was not cited before me perhaps because of the

stay. For reasons aforesaid, I am unable to endorse the view in Nippon Paint

Holdings.

18. In view of the above conclusion, it is unnecessary to examine

whether this Court can exercise power under Article 226 over the Registrar

of Trade Marks, Ahmedabad. Even otherwise, as stated at the outset, the

petitioner seeks a discretionary public law remedy. From the facts on record,

it follows that the immediate trigger for filing these writ petitions was the

alleged failure of the Registrar of Trademarks to act on the request by the

petitioner to transfer the pending rectification petitions to the file of this

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Court. The petitioner has more than one alternative remedy, including by

seeking the expeditious disposal of the pending rectification petitions by

filing appropriate petitions before the Gujarat High Court.

19. For reasons aforesaid, these writ petitions are disposed of by

declining to grant the remedy prayed for, but by leaving it open to the

petitioner to file petitions before the Gujarat High Court for the expeditious

disposal of the pending rectification petitions or for any other appropriate

relief. No costs.

20.02.2025

(1/2) Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No

kj

To

1.Union of India Through its Secretary, Ministry of Commerce and Industry, Department for Promotion of Industry and Internal Trade Udyog Bhawan,

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New Delhi-110 011.

2.Controller General of Patents, Designs and Trademarks, Office of the Controller General of Patents, Designs & Trademarks, Registry, Boudhik Sampada Bhawan, S.M. Road, Antop Hill, Mumbai- 400 037.

3.The Registrar of Trademarks, Trademarks Registry Mumbai, Boudhik Sampada Bhawan, S.M. Road, Antop Hill, Mumbai- 400 037.

4.The Registrar of Trademarks, Trademarks Registry, Ahmedabad, Boudhik Sampada Bhawan, Near Chanakyapuri Overbridge, Besides AMC City Civic Centre, Ghatlodia, Ahmedabad- 380061.

SENTHILKUMAR RAMAMOORTHY,J

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W.P.(IPD)Nos.30 & 32 of 2024

20.02.2025 (1/2)

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