Kerala High Court Dismisses Plea To Cancel 'India Gate' Trademark; Says Only Delhi HC Has Jurisdiction Since Mark Was Registered At Delhi

The Kerala High Court has recently dismissed a special jurisdiction case filed before it under the Trade Mark Act seeking to cancel the registered trade mark 'INDIA GATE' belonging to the 1st respondent KRBL Limited.Justice M.A. Abdul Hakhim observed that the rectification petition filed by the petitioner under Section 57 of the Act was not maintainable before the Kerala High Court but before the Delhi High Court since the subject trade mark was registered at the Delhi Trade Marks Registry.The 1st respondent had filed a suit for infringement against the petitioner and another before the District Court in Delhi and an order was passed on 21.01.2025, granting a temporary injunction against the use of the trade mark. An Advocate Commissioner was also appointed to take the infringing materials into custody.After the materials were taken into custody, the petitioner filed the present special jurisdiction case (SPJC) under Section 57 read with Sections 124 and 125 of the TM Act (and Section 50 of the Copyright Act, 1957 and, filed an application before the Delhi court seeking a stay of the suit till disposal of the SPJC. The application before the Delhi court is yet to be considered.The respondent challenged the maintainability in I.A. No. 1/2025 on two grounds: lack of territorial jurisdiction and prematurity of the case. It was contended the High Court having jurisdiction is the one exercising appellate jurisdiction over the Trade Marks Registry where the trade mark was registered.The petitioner argued that the Kerala High Court can entertain the case since part of the cause of action arose within its jurisdiction, and also since Section 57 does not specify which High Court has appellate jurisdiction over the Registry.After referring to various decisions, the Court was of the opinion that the decision of the Madras High Court in M/s. Woltop India Pvt. Ltd. v. Union of India and Others has laid down the correct position of law in this regard.It observed: “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.”The Court, thus, held that only the Delhi High Court has jurisdiction the rectification petition and the present case is not maintainable.Next, the Court considered the second argument of the 1st respondent that the case is premature since no issue regarding the invalidity of trade mark was raised before the Delhi Court in the suit.It referred to Section 124 of the TM Act, which deals with stay of proceedings where the validity of registration of the trade mark is questioned. It found that if there is no rectification petition pending at the time of institution of suit, a rectification petition cannot be filed without following the procedure prescribed under the provision. The procedure is that the party having a grievance against the registration of a trade mark must raise a plea regarding the invalidity of the registration and satisfy to the court that the plea is prima facie tenable. Then, the court has to raise such an issue and adjourn the case for 3 months to enable the party to file a rectification petition before the High Court and only afterwards can the suit be stayed.It also referred to a Supreme Court decision, Patel Field Marshal Agencies and Another v. P. M. Diesels Ltd. and Others, where the scope of the old section corresponding to Section 124 was considered. Relying on the decision, the Court found that the civil courts cannot decide on the validity of a trade mark and the same can be done only by the High Court or the Registrar, which are the statutory authority. However, when a suit is pending before the civil court, then the statutory authority can exercise jurisdiction only if the civil court enters into a prima facie finding regarding tenability of plea of invalidity. In case the civil court does not find the plea to be tenable, then the remedy is to file an appeal challenging the civil court's decision and not to file a Rectification petition.The Court remarked: “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 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...

Kerala High Court Dismisses Plea To Cancel 'India Gate' Trademark; Says Only Delhi HC Has Jurisdiction Since Mark Was Registered At Delhi

K. Salma Jennath

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