The Supreme Court on Monday (September 21) has referred to a Larger Bench the question whether a Civil Judge (Senior Division) notified as a Commercial Court under the Commercial Courts Act, 2015 can entertain a trademark infringement suit, despite Section 134 of the Trade Marks Act, 1999 expressly prohibiting institution of such suits before a court inferior to a District Court.

Section 134 of the Trade Marks Act provides that a suit for infringement of a registered trademark or relating to certain other specified reliefs cannot be instituted before a court inferior to a District Court.

The issue arose when the Jharkhand High Court, exercising powers under the Commercial Courts Act, notified a Civil Judge (Senior Division) as a Commercial Court, thereby entitling it to hear a trademark infringement suit despite the rigors of Section 134 of the Trade Mark Act.

In the present case, a Commercial Suit was pending before the Civil Judge (Senior Division). The appellants challenged the jurisdiction of that Civil Court, relying on Section 134 of the Trade Marks Act.

The question before the Supreme Court was therefore whether such a notification issued by the High Court can enable the Civil Judge (Senior Division), despite being hierarchically below a District Court, to entertain a trademark infringement suit.

An apparent conflict was noted by a bench of Justice JB Pardiwala and Justice K Vinod Chandran between two of the Supreme Court's earlier decisions in Kandla Export Corporation v. OCI Corporation (2018) and Jaycee Housing Private Limited v. Registrar (General), Orissa High Court 2022 LiveLaw (SC) 860 on the interplay between a special enactment and the Commercial Courts Act.

Kandla Export had treated the Arbitration and Conciliation Act, 1996 as a special legislation vis-à-vis the Commercial Courts Act, holding that the specific appellate mechanism under the Arbitration Act would prevail. As per the Kandla Export judgment, the Trade Mark Act being a special legislation would override the Commercial Courts Act, thereby, entitling the Civil Courts to entertain trademark infringement suits.

In Jaycee Housing, however, the Court had held that the Commercial Courts Act, being a later enactment dealing specifically with commercial disputes, could operate notwithstanding provisions of the Arbitration Act concerning jurisdiction. As per the Jaycee Housing judgment, the Commercial Courts Act would have precedence over the special statute of the Trade Marks Act, thereby disentitling the Civil Courts to entertain the trademark infringement suits.

Noting the apparent conflict between the two rulings, the Court deemed it appropriate to refer the question to a larger bench.

“We have to notice that Jaycee Hosing Private Limited and Ors. had categorically held that Section 9, 14 and 34 has to concede insofar as jurisdiction is concerned, to the Commercial Courts Act, finding it to be a special enactment as is the case with the Arbitration and Conciliation Act. Kandla Export Corporation and Anr. on the other hand found that the Arbitration Act is a code unto itself and vis-a-vis the Commercial Courts Act, the former is a special legislation, and the latter is a general legislation.”, the Court said.

“We are of the opinion that the matter has to be referred to the Larger Bench for resolving the conflict and also settling the law to be uniform throughout the States and the jurisdiction not to be left to the different notifications issued in the various States. In our humble view the legislative imprimatur cannot be diluted by the notifications issued by the High Courts. The matter shall be placed before the Hon'ble the Chief Justice of India for appropriate orders.”, the Court held.

Cause Title: I.S.D.S. Private Limited & Anr. Versus M/s Khemka Food Products Pvt. Ltd. & Anr.

Citation : 2026 LiveLaw (SC) 968

Click here to read/download judgment

Appearance:

For Petitioner(s) :Mr. Singh Nishant Sajay Kumar, Adv. Mr. Vishal Arun Mishra, AOR

For Respondent(s) : Mr. Indrajit Sinha, Adv. Ms. Prerna Jhunjhunwala, Adv. Ms. Neeharika Mazumdar, Adv. Mr. Ankit Rajgarhia, Adv. Mr. Aakash Nandolia, AOR Mr. Sachin Dubey, Adv. Ms. Vinita Sejwal, Adv. Mr. Naman Sondhi, Adv.

For Intervenor(s): Mr. Abhishek Kumar Rao, Adv. Mr. Vinay P Tripathi, Adv. Mr. Aagam Shah, Adv. Mr. Jayendra M. Modi, Adv. Mr. Shailesh Suman, Adv. Ms. Preeti Shukla, Adv. Mr. B. Shravanth Shanker, AOR