Pas Agro Foods, Represented By Its Managing Partner Sri. Asharaf K.V. vs KRBL LIMITED, REPRESENTED BY ITS MANAGING DIRECTOR and CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS (CGPDTM)

2025:KER:79840

IN THE HIGH COURT OF KERALA AT ERNAKULAM

PRESENT

THE HONOURABLE MR. JUSTICE M.A.ABDUL HAKHIM

MONDAY, THE 27TH DAY OF OCTOBER 2025 / 5TH KARTHIKA, 1947

SP.JC NO. 2 OF 2025

PETITIONERS:

PAS AGRO FOODS, REPRESENTED BY ITS MANAGING PARTNER SRI. ASHARAF K.V. AGED 55 YEARS 7/755, MELE ARIYOR, KOTTOPADAM, MANNARKKAD, PALAKKAD-678583, KERALA, INDIA

BY ADV SMT.M.UMA DEVI

RESPONDENTS:

1 KRBL LIMITED, REPRESENTED BY ITS MANAGING DIRECTOR 5190, LAHORI GATE, DELHI-110006

2 CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS (CGPDTM) IN INDIA BHOUDHIK SAMPADA BHAVAN, FIRST FLOOR, S. M. ROAD, ANTOP HILL, MUMBAI-400037

3 DEPUTY REGISTRAR OF COPYRIGHTS COPYRIGHT OFFICE DEPARTMENT FOR PROMOTION OF INDUSTRY AND INTERNAL TRADE MINISTRY OF COMMERCE AND INDUSTRY BOUDHIK SAMPADA BHAWAN, PLOT NO. 32, SECTOR 14, DWARKA, NEW DELHI-110078

BY ADVS. SHRI.PRAVEEN K. JOY SRI.R.MURALEEKRISHNAN (MALAKKARA) SRI.T.ANUP JOACHIM SRI.M.J.XAVIER THOMAS SRI.N.ABHILASH SHRI.ALBIN VARGHESE I.A No.2/2025 & SPJC 2/2025 2

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SRI.M.P.UNNIKRISHNAN SRI.E.S.SANEEJ SMT.ABISHA.E.R SMT.MEGHA G. SMT.FATHIMA SHALU S.

THIS SPECIAL JURISDICTION CASES HAVING BEEN FINALLY HEARD ON 27.10.2025, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING: I.A No.2/2025 & SPJC 2/2025 3

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CR

JUDGMENT

Dated this the 27th October 2025

I.A.No.2/2025

1. This Special Jurisdiction Case is filed under Section 57 read with

Sections 124 and 125 of the Trade Marks Act, 1999 (hereinafter

referred to as 'the Act') and Section 50 of the Copyright Act, 1957,

by a firm formed and having business operations in Kerala to

cancel the trade mark registration 'INDIA GATE' owned by the

Respondent No.1, a limited company incorporated in New Delhi.

The Respondent No.1 acquired the statutory rights of the trade

mark 'INDIA GATE' through a Deed of Assignment dated

06.08.2019, assigned by one Mr. Ram Pratap, who obtained the

trade mark registration for 'INDIA GATE' from the Trade Marks

Registry, New Delhi, on 18.06.1993.

I.A No.2/2025 & SPJC 2/2025 4

2025:KER:79840

2. The Respondent No.1 challenged the maintainability of the case by

filing I.A. No.2 of 2025, and accordingly, the maintainability of the

case was heard by me as a preliminary issue.

3. The Respondent No.1 raised two grounds in support of its

challenge against the maintainability of the case:-

I. Lack of territorial jurisdiction.

II. The case is premature.

4. I heard the learned Counsel for Petitioner, Smt. Uma Devi M., and

the learned Counsel for the Respondent No.1, Sri. Praveen K. Joy

with Sri. Shravan Kumar Bansal on the maintainability issue.

5. I may narrate brief facts of the case for better understanding of the

contentions of the parties: The Respondent No.1 filed C.S.(Comm)

No.78/2025 under Section 134 of the Act against the petitioner and

another for infringement of registered trade mark before the District

Court (Commercial) at Tis Hazari Courts (Central), New Delhi, on

14.01.2025. The District Court, as per the Order dated 21.01.2025, I.A No.2/2025 & SPJC 2/2025 5

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granted temporary injunction against the use of the trade mark by

the defendants therein and appointed an Advocate Commissioner

to take into custody the infringing goods and other incriminating

materials like stationery, packing materials, etc., with police

assistance. The Advocate Commissioner visited the business

premises of the Petitioner with police assistance on 27.01.2025

and took into custody all the materials connected with the name

'INDIA GATE' from there. The Petitioner filed this Case on

07.02.2025. Thereafter, the Petitioner filed an Application in

C.S.(Comm) No.78/2025 seeking stay of the said suit pending final

disposal of this case in this Court, and the said Application is

pending consideration before the District Court, New Delhi.

6. Let me consider the grounds raised by the Respondent No.1 in

support of its challenge against the maintainability of the case. I.A No.2/2025 & SPJC 2/2025 6

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I. LACK OF TERRITORIAL JURISDICTION:

7. The contention of the learned Counsel for the Respondent No.1 is

that the Rectification Petition under Section 57 of the Act is to be

filed before the High Court, which is exercising appellate

jurisdiction over the Trade Marks Registry where the trade mark

was originally registered. Since the registration of the trade mark

'INDIA GATE' of the Respondent No.1 is granted by the Trade

Marks Registry, New Delhi, the Delhi High Court alone has the

jurisdiction to entertain the Petition for rectification or cancellation

of the registered trade mark. The Learned Counsel relied on the

decision of the Delhi High Court in The Hershey Company v. Dilip Kumar

Bacha [MANU/DE/0904/2024] and the decision of the Madras High

Court in M/s. Woltop India Pvt. Ltd. v. Union of India and Others [W.P.(IPD)

Nos.30 & 32 of 2024] in support of his contention.

8. The contention of the learned Counsel for the Petitioner is that a

Rectification Petition under Section 57 of the Act can be filed in this I.A No.2/2025 & SPJC 2/2025 7

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Court, as part of the cause of action has arisen within the

jurisdiction of this Court. The Petitioner is prevented from doing its

legal business within the jurisdiction of this Court on account of the

registration of the trade mark in favour of the Respondent No.1.

The goods belonging to the Petitioner were seized by the Advocate

Commissioner from the business premises of the Petitioner within

the jurisdiction of this Court. Section 57 of the Act refers only to the

High Court and does not specify the High Court which is exercising

appellate jurisdiction. Hence, the Petitioner has every right to

maintain the Petition for Rectification in this Court. The Learned

Counsel relied on the decision of the Delhi High Court in Dr. Reddys

Laboratories Ltd. v. Fast Cure Pharma and Another [C.O. (Comm.IPD-TM)

8/2023] in support of her contention.

9. Under Section 20 of the Code of Civil Procedure, 1908, a suit is to

be filed in the Court at the place of the defendant or where part of

the cause of action wholly or in part arises. Section 134(2) of the I.A No.2/2025 & SPJC 2/2025 8

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Act is an exception to this general rule. It permits the plaintiff to

institute the infringement suit at his place. Sections 47 and 57 of

the Act provide for the filing of a Rectification Petition to the High

Court or the Registrar. Section 91 of the Act provides for an appeal

from the order of the Registrar to the High Court. Originally

jurisdiction of the High Court was with the Appellate Board formed

under Section 83 of the Act, which was known as the 'Intellectual

Property Appellate Board (IPAB)'. By the Tribunals Reforms Act,

2021, the IPAB was substituted with the High Court. Section 125 of

the Act provides that where the defendant questions the validity of

the registration of the plaintiff's trade mark in suit for infringement

of trade mark, the Application for Rectification has to be made to

the High Court and not the Registrar. Under Section 124(1)(ii) of

the Act, if no Rectification proceedings are pending when a suit for

infringement is instituted and the court is satisfied that the plea

regarding the invalidity of the registration of the plaintiff's or I.A No.2/2025 & SPJC 2/2025 9

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defendant's trade mark is prima facie tenable, raise an issue

regarding the same and adjourn the case for a period of three

months from the date of the framing of the issue in order to enable

the party concerned to apply to the High Court for rectification of

the register. Thus, the High Court is the proper forum to file an

Application for rectification when a suit for infringement is pending.

The question is which High Court is having jurisdiction to entertain

the Rectification Petition. Is it only the High Court having territorial

jurisdiction over the office of the Trade Marks Registry where the

trade mark was registered?

10. In Dr. Reddys Laboratories Ltd. (supra), the Delhi High Court

considered the question whether a Rectification Petition under

Sections 47 or 57 of the Act would lie only before the High Court

having territorial jurisdiction over the office of the Trade Marks

Registry where the impugned mark was registered, or could it be

filed in another High Court. Following the Full Bench decision in I.A No.2/2025 & SPJC 2/2025 10

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Girdhari Lal Gupta v. M/s. K. Gian Chand Jain & Co. [AIR 1978 Del 146]

rendered under the Designs Act, 1911, the Delhi High Court 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 Court within whose jurisdiction the offices

of the Trade Marks 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 applicant.

11. In a subsequent decision in The Hershey Company (supra), another

learned Single Judge of the Delhi High Court doubted the

correctness of the decision in Dr. Reddys Laboratories Ltd. (supra) and

placed the matter before the Chief Justice for the constitution of a

larger bench, raising the following questions.

i) Whether the decision of the ld. Full Bench in Girdhari Lal Gupta

(supra), rendered under the Designs Act, 1911, would be I.A No.2/2025 & SPJC 2/2025 11

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applicable in the context of the Trade Marks Act, 1999, as amended

by the Tribunals Reforms Act, 2021, for determining jurisdiction of

a High Court under Section 57 of the 1999 Act?

ii) Whether the jurisdiction of the High Court under Section 57 of

the 1999 Act would be determined on the basis of the Appropriate

office of the Trade Marks Registry, which granted the impugned

trade mark registration?

iii) Whether the expression 'the High Court' can be differently

construed in Sections 47, 57 and 91 of the 1999 Act?

12. In Nippon Paint Holdings Co. Ltd. and Another v. Suraj Sharma [A.No.556

of 2024 in C.S.(Comm.Div) No.7 of 2024], the Madras High Court

considered the question whether it is having the territorial

jurisdiction to transfer to itself by way of consolidation the

Rectification Petition filed by the applicants/plaintiffs under Section

57 of the Trade Marks Act, pending before the Trade Marks

Registry at New Delhi, since the Infringement Suit is pending I.A No.2/2025 & SPJC 2/2025 12

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before it. The Madras High Court considered the decisions of the

Delhi High Court in Dr. Reddys Laboratories Ltd. & The Hershey Company

(supra). The Madras High Court allowed the Application seeking for

transfer of the rectification proceedings from the file of the Trade

Marks Registry, New Delhi to it. The following two findings of the

Madras High Court are relevant in this case.

"c) The forum conveniens for deciding the rectification application

seeking for rectification of the registered trademark of the

defendants is only before this Court, as only through a consolidated

hearing of the infringement suit and the rectification application, an

effective adjudication of the dispute can be rendered as the forum

conveniens is only the Madras High Court;

d) The dynamic effect of registration of the identical trademark at

New Delhi has an effect at Chennai within the jurisdiction of this

Court, where the plaintiffs categorically pleaded that the infringed

products are advertised and sold by the defendants. Hence, this I.A No.2/2025 & SPJC 2/2025 13

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Court by applying the 'dynamic effect' principle is empowered to

transfer the rectification proceeding pending on the file of the

Trademarks Registry, New Delhi to the file of this Court;"

13. The order in Nippon Paint Holdings Co. Ltd. (supra) is stayed by the

Hon'ble Supreme Court in the Order dated 10.05.2024 in Special

Leave to Appeal (C) No.10454 of 2024.

14. Another learned Single Judge of the Madras High Court dismissed

a Writ Petition seeking transfer of Rectification petitions from

Ahmedabad Trade Marks Registry to it in M/s. Woltop India Pvt. Ltd.

(supra). The Madras High Court held that in Sections 47, 57, 91, 124

and 125 of the Act, the definite article "the" qualifies the words

"High Court"; that 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; that in Section 2(1)(s), the

Trade Marks Act defines the expression "prescribed means" "in

relation to proceedings before a High Court prescribed by Rules I.A No.2/2025 & SPJC 2/2025 14

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made by the High Court; that 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; that 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; and that 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. It is further held that when Sections 47 and 57 are

read with Rule 4 of the Trade Marks Rules, 2017, 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 I.A No.2/2025 & SPJC 2/2025 15

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in the register, of the registered proprietor is situated; that Rule 4

also points in the same direction as regards the particular Registrar

of Trade Marks; that 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; that 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. The Madras High Court concluded

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.

I.A No.2/2025 & SPJC 2/2025 16

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15. I am in respectful agreement with the aforesaid view taken by the

learned Single Judge of the Madras High Court in M/s Woltop India

Pvt. Ltd. (supra). As rightly held, any other interpretation would invite

the filing of multiple Rectification Petitions with respect to the same

trade mark before several High Courts, and there is every chance

of different High Courts passing conflicting orders. If Rectification

Petitions are filed by the different defendants as enabled by the

Court under Section 124(1)(ii) of the Act before different High

Courts, the Court dealing with the infringement suit will have to wait

for the decisions of different High Courts staying the proceedings

in the suit. If different High Courts pass conflicting orders, the

situation will become worse. Rule 4 of the Trade Mark Rules, 2017,

provides that the appropriate office of the Trade Marks Registry for

Rectification Petition is the Trade Marks Registry within whose

territorial limits the principal place of the registered proprietor is

situated. Rule 5 provides that the jurisdiction of the appropriate I.A No.2/2025 & SPJC 2/2025 17

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office of the Trade Marks Registry will not be altered by the change

of principal place of business of the proprietor. The scheme of the

Act is to consolidate all the Rectification Petitions in one Forum,

whether it be the Registrar or the High Court. The conferment of

jurisdiction on a High Court on the basis of the 'dynamic effect' of

registration within its jurisdiction is against the scheme of the Act,

and it would lead to utter chaos in the matter of adjudication. It is

the High Court that exercises appellate jurisdiction over the Trade

Marks Registry where the trade mark is registered, alone is having

jurisdiction to entertain the Rectification Petitions with respect to

such trade mark under Sections 47 of 57 of the Act.

16. In the case on hand, since the subject trade mark is registered at

the Delhi Trade Marks Registry, the Delhi High Court alone is

having jurisdiction to entertain the Rectification Petition.

Consequently, I hold that the above Special Jurisdiction Case is not

maintainable in this Court for want of jurisdiction. I.A No.2/2025 & SPJC 2/2025 18

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II. THE CASE IS PREMATURE:

17. The learned Counsel for the Respondent No.1 contended that the

present Case is premature for want of framing issue regarding

invalidity of registration of trade mark by the District Court, New

Delhi, in C.S.(Comm) No.78/2025 under Section 124(1)(ii) of the

Act, after satisfying that the plea regarding the invalidity of the

registration of the trade mark is prima facie tenable. Learned

Counsel relied on the decision of the Hon'ble Supreme Court in

Patel Field Marshal Agencies and Another v. P. M. Diesels Ltd. and Others

[(2018) 2 SCC 112], the decision of the Delhi High Court in Steelcase

Inc. v. Mr. K.J. Bhuta and Another [C.S.(Comm) 1180 of 2018] and the

decision of the Madras High Court in M/s. Anugraha Castings v.

Anugraha Valve Castings Ltd. [C.R.P. No.2480 of 2025] in support of his

contention.

18. It is quite apposite to extract Section 124 of the Act for easy

reference.

I.A No.2/2025 & SPJC 2/2025 19

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"124. Stay of Proceedings where the validity of registration of

the trade mark is questioned, etc.--

(1) Where in any suit for infringement of a trade mark--

(a) The defendant pleads that registration of the plaintiff's trade

mark is invalid; or

(b) The defendant raises a defence under clause (e) of sub-section

(2) of section 30 and the plaintiff pleads the invalidity of registration

of the defendant's trade mark,

the court trying the suit (hereinafter referred to as the court),

shall,--

(i) if any proceedings for rectification of the register in relation to

the plaintiff's or defendant's trade mark are pending before the

Registrar or the High Court, stay the suit pending the final disposal

of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied

that the plea regarding the invalidity of the registration of the I.A No.2/2025 & SPJC 2/2025 20

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plaintiff's or defendant's trade mark is prima facie tenable, raise an

issue regarding the same and adjourn the case for a period of three

months from the date of the framing of the issue in order to enable

the party concerned to apply to the High Court for rectification of

the register.

(2) If the party concerned proves to the court that he has made any

such application as is referred to in clause (b) (ii) of sub-section (1)

within the time specified therein or within such extended time as

the court may for sufficient cause allow, the trial of the suit shall

stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the

time so specified or within such extended time as the court may

allow, the issue as to the validity of the registration of the trade

mark concerned shall be deemed to have been abandoned and

the court shall proceed with the suit in regard to the other issues in

the case.

I.A No.2/2025 & SPJC 2/2025 21

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(4) The final order made in any rectification proceedings referred

to in sub-section (1) or sub-section (2) shall be binding upon the

parties and the court shall dispose of the suit conformably to such

order in so far as it relates to the issue as to the validity of the

registration of the trade mark.

(5) The stay of suit for the infringement of a trade mark under this

section shall not preclude the court from making any interlocutory

order (including any order granting an injunction, directing account

to be kept, appointing a receiver or attracting any property), during

the period of the stay of the suit."

19. Section 124 of the Act deals with two situations with reference to

an infringement suit. The first situation is the pendency of the

Rectification Petition at the time of institution of the suit. In such a

situation, Section 124(1)(i) mandates that the suit shall be stayed

pending final disposal of the Rectification proceedings. The second

situation is that no Rectification Petition is pending at the time of I.A No.2/2025 & SPJC 2/2025 22

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institution of the suit. In such a situation, the party to the suit cannot

file a Rectification without following the procedure prescribed under

Section 124(1)(ii) of the Act. The procedure is that the party having

a grievance against the registration of trade mark must raise a plea

regarding the invalidity of the registration. He has to satisfy the

Court that the plea is prima facie tenable. If the Court is satisfied

that the plea is prima facie tenable, the Court has to raise an issue

regarding the same and adjourn the case for a period of three

months to enable the party to file Rectification Petition in the High

Court. If the Party proves that he has made the Rectification

Petition within the said three months or within such extended time,

the trial of the suit shall stand stayed until final disposal of the

rectification proceedings. If the party does not file the Rectification

Petition within the said three months or within such extended time,

the issue as to the validity of the registration is deemed to have

been abandoned, and the court shall proceed with the suit I.A No.2/2025 & SPJC 2/2025 23

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regarding the other issues in the suit. This provision would indicate

that if a party does not raise a plea regarding the invalidity of the

registration of the trade mark in the infringement suit, it has to be

treated as if he has no grievance against the registration of the

trade mark. If the court is not prima facie satisfied with the plea

regarding invalidity and does not raise an issue, the party

aggrieved has to challenge the same before the Appellate Court of

the court dealing with the infringement suit. If the parties are

allowed to institute Rectification proceedings without any prima

facie satisfaction as to the tenability of the challenge, it is easy to

get the infringement suit stayed by the casual institution of

Rectification proceedings.

20. In Patel Field Marshal Agencies (supra), the Hon'ble Supreme Court

was considering the scope of Section 111 of the old Trade and

Merchandise Marks Act, 1958, corresponding to Section 124 of the

Act. Sections 46, 56 and 107 of the old Trade and Merchandise I.A No.2/2025 & SPJC 2/2025 24

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Marks Act, 1958, correspond to Sections 47, 57 and 125,

respectively, of the Act. In the said case, while the infringement suit

was pending before the Delhi High Court, the defendants therein

initiated three parallel Rectification proceedings before the Gujarat

High Court. The learned Single Judge of the Gujarat High Court

dismissed the Rectification Petitions and the same was confirmed

by the Division Bench. The order of the Division Bench of the

Gujarat High Court was challenged before the Hon'ble Supreme

Court. The Hon'ble Supreme Court dismissed the Special Leave

Petitions. The Hon'ble Supreme Court formulated the following

question for consideration.

"In a situation where a suit for infringement is pending wherein the

issue of validity of the registration of the trade mark in question has

been raised either by the plaintiff or the defendant and no issue on

the said question of validity has been framed in the suit or if framed

has not been pursued by the party concerned in the suit by filing an I.A No.2/2025 & SPJC 2/2025 25

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application to the High Court for rectification under Section 111 read

with Section 107 of the Trade and Merchandise Marks Act, 1958,

whether recourse to the remedy of rectification under S.46/56 of the

1958 Act would still be available to contest the validity of the

registration of the Trade mark?"

21. The Hon'ble Supreme Court made certain categorical findings

which are squarely applicable to the subject issue involved in this

case. The findings of the Hon'ble Supreme Court relevant to the

case on hand are stated here: From the resume of the provisions

of the 1958 Act, it becomes clear that all questions with regard to

the validity of a trade mark is required to be decided by the

Registrar or the High Court under the 1958 Act or by the Registrar

or the IPAB under the 1999 Act and not by the Civil Court. The Civil

Court, in fact, is not empowered by the Act to decide the said

question. The Act mandates that the decisions rendered by the

prescribed statutory authority [Registrar / High Court] will bind the I.A No.2/2025 & SPJC 2/2025 26

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Civil Court. The Act (both old and new) goes on to provide a

different procedure to govern the exercise of the same jurisdiction

in two different situations. In a case where the issue of invalidity is

raised or arises independent of a suit, the prescribed statutory

authority will be the sole authority to deal with the matter. In a

situation where a suit is pending, the exercise of jurisdiction by the

prescribed statutory authority is contingent on a finding of the Civil

Court as regards the prima facie tenability of the plea of invalidity.

Conversely, in a situation where the Civil Court does not find a

triable issue on the plea of invalidity, the remedy of an aggrieved

party would not be to move under Sections 46/56 of the 1958 Act

but to challenge the order of the Civil Court in appeal. This would

be necessary to avoid multiple proceedings on the same issue and

resultant conflict of decisions. The intention of the legislature is

clear. All issues relating to and connected with the validity of

registration has to be dealt with by the Tribunal and not by the civil I.A No.2/2025 & SPJC 2/2025 27

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court. In cases where the parties have not approached the civil

court, Section 46 and Section 56 provide an independent statutory

right to an aggrieved party to seek rectification of a trade mark.

However, in the event the Civil Court is approached, inter alia,

raising the issue of invalidity of the trade mark, such plea will be

decided not by the civil court but by the Tribunal under the 1958

Act. The Tribunal will however come into seisin of the matter only

if the Civil Court is satisfied that an issue with regard to invalidity

ought to be framed in the suit. Section 111 of the 1958 Act, and the

corresponding Section 124 of the 1999 Act, nowhere contemplate

the grant of permission by the civil court to move the High Court or

the IPAB, as may be, for rectification. The requirement of

satisfaction of the civil Court regarding the existence of a prima

facie case of invalidity and the framing of an issue to that effect

before the law operates to vest jurisdiction in the statutory authority

to deal with the issue of invalidity by no means, tantamount to I.A No.2/2025 & SPJC 2/2025 28

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permission or leave of the civil court, as has been contended. It is

a basic requirement to further the cause of justice by elimination of

false, frivolous and untenable claims of invalidity that may be raised

in the suit.

22. In view of the aforementioned binding propositions of law laid down

by the Hon'ble Supreme Court, I find it unnecessary to consider the

decision of the Delhi High Court in Steelcase Inc. (supra) and the

decision of the Madras High Court in M/s. Anugraha Castings (supra)

cited by the learned Counsel for the Respondent No.1.

23. The law is clear on the point. The Petitioner cannot file the above

Special Jurisdiction Case under Section 57 of the Act seeking

cancellation of the trade mark registration granted to the

Respondent No.1 without framing an issue regarding the invalidity

of the registration in C.S.(Comm) No.78/2025 pending before the

District Court, New Delhi, after satisfying the Court of the prima I.A No.2/2025 & SPJC 2/2025 29

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facie tenability of the plea regarding the validity of the registration

of the trade mark.

CONCLUSION

24. In view of the findings under the aforesaid two grounds raised by

the Respondent No.1, I hold that the above Special Jurisdiction

Case is not maintainable. I.A. No.2/2025 is allowed accordingly.

SP.JC.No. 2/2025

This Special Jurisdiction Case is dismissed as not maintainable.

Sd/-

M.A.ABDUL HAKHIM JUDGE

jma I.A No.2/2025 & SPJC 2/2025 30

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APPENDIX OF SP.JC 2/2025

PETITIONER ANNEXURES

Annexure 1 THE DETAILS OF THE PETITIONER COMPANY AS CAN BE DISCERNED FROM INDIA MART AN Annexure 2 TRUE COPY OF THE TRADEMARK REGISTRATION CERTIFICATE DATED 12TH AUGUST, 2019 Annexure 3 TRUE COPY OF THE COPYRIGHT REGISTRATION UNDER REGISTRATION NUMBER A-75495/2006 Annexure 4 TRUE COPY OF THE TRADEMARK APPLICATION OF THE PREDECESSOR OF THE 1ST RESPONDENT Annexure 4 (a) TRUE COPY OF THE APPLICATION OF AMENDMENT OF TRADEMARK FILD BY THE PREDECESSOR OF THE 1ST RESPONDENT Annexure 5 TRUE COPY OF THE EXAMINATION REPORT DATED 21-12- 1998 Annexure 6 UNDERTAKING DATED 30-5-2001 SUBMITTED BY THE RESPONDENT RESPONDENT ANNEXURES

Annexure R1(a) TRUE COPY OF PLAINT IN CS COMMERCIAL NO.78 OF 2025 DATED 14.01.2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI Annexure R1(b) TRUE COPY OF ORDER DATED 21.01.2025 IN CS COMMERCIAL NO.78 OF 2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI Annexure R1(c) TRUE COPY OF THE APPLICATION UNDER SECTION 124 IN CS COMMERCIAL NO.78 OF 2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI DATED 13.02.2025 Annexure R1(d) TRUE COPY OF THE JUDGMENT IN PATEL FIELD MARSHAL AGENCIES V. P.M. DIESEL LTD., 2018 (73) PTC 15 (SC) DATED 29.11.2017 OF APEX COURT Annexure R1(e) TRUE COPY OF THE JUDGMENT OF HON'BLE DELHI HIGH COURT IN RESILIENT INNOVATIONS PVT. LTD. V. PHONE PE PVT. LTD., (2023:DHC:3426-DB) DATED 18.05.2023 Annexure R1(f) TRUE COPY OF THE JUDGMENT IN LAKHA RAM SHARMA VS.

BALAR MARKETING PVT. LTD. {97 (2002) DLT 342} DATED 10.10.2001