The definition of the term High Court allows for certainty regarding the territorial jurisdiction of the High Courts. However, the Tribunal Reforms Act, 2021 (hereinafter referred to as TRA), read along with the Trade Marks Act, 1999(hereinafter referred to as the Act), creates a lacuna regarding the identification of the appropriate High Court. The Delhi High Court adjudicated upon the delineation of the appropriate High Court when dealing with trade mark cancellation and rectification petitions.
Petitioners’ Arguments:
The Petitioners argued that there was no absence, and it was instead the intention of the Legislature to avoid inclusion of the definition. They contended that the Act did not envision limiting jurisdiction to only five High Courts and that jurisdiction can also be conferred by considering the dynamic effect of the registration. They referenced the Trade Marks Rules, 2017 (hereinafter referred to as the Rules), arguing that the term “the High Courts” is different from “Office” as delineated in Rule 4, with the latter establishing a clear territorial nexus, unlike the former.
The Petitioners referred to the procedural laws and stated that petitions under Section 57 have a civil nature and, therefore, jurisdiction must be considered in light of Section 20 of the Civil Procedure Code. They contended that the Act does not create the need for jurisdictional certainty for filing petitions under Section 57. The Petitioners highlighted that the convenience of the parties must be considered and that the term “person aggrieved” must be liberally interpreted, allowing the parties to approach the closest High Court.
Respondents’ Arguments:
The Respondents argued that since the Registrar must implement the order, the High Court must exercise jurisdiction over the Registrar. They stated that the statute must not be interpreted to allow multiple cancellation proceedings before various High Courts. They argued that the right to revoke is vested in the High Court exercising jurisdiction over the Appropriate Office. Therefore, there was no need for judicial intervention when Section 57 of the Act and Rule 4 were read together. They referred to the Statement of Reasons of the TRA and stated that the Act aimed to vest jurisdiction upon the High Courts, which had the authority to deal with section 57 matters, and not to vest power upon additional courts. They contended for consistency in interpreting the High Court between Section 57 and Sections 91 and 92 of the Act.
Submissions of the Advocates assisting the Court:
The first advocate submitted that Rules 4 and 5 indicate that the appropriate office remains unchanged except under extraordinary circumstances, which do not include changes in the location of the principal office or address of agents. He highlighted Rule 4, which allows the transfer of all matters to the appropriate office when enacting the 2017 Rules. He submitted that the High Court exercising jurisdiction over the Registrar should be deemed the appropriate High Court.
The second advocate submitted that the test must be substantial of the cause of action, which negates the concern of pendency or burden created by the courts. He submitted that infringement petitions may be filed before High Courts that do not exercise jurisdiction over the Appropriate Office, and the petition must be heard along with the suit. He submitted that “the High Court” refers to the High Court with territorial jurisdiction and not necessarily jurisdiction over the Appropriate Office.
The third advocate submitted that the legislative intent aimed to alleviate hardship for the proprietor and should not be disregarded due to an omission. He stated that the absence of a definition was an oversight, and thus, the definition of the High Court under the 1958 Act must be applied in the present scenario.
Submissions of the Amici Curiae:
The first amicus submitted that there is a difference between the regimes and mechanisms of the various IP legislations, and therefore, definitions accorded for in one of the statutes cannot be substituted in another. He also contended that using “the”, which signifies a definitive article, restricts the maintainability of cancellation petitions to a single High Court. He submitted that consideration must be given to the office where the trade mark was registered. He referred to the Supreme Court’s obiter in various judgements.
He stated that the dynamic effect cannot be considered as it is not covered under Section 57 and, therefore, the territory where the order has been passed must be considered. He submitted that the same must be followed if a special statute laid down a procedure. He submitted that the literal and purposive interpretation of the statute led to the obvious understanding that the High Court referred to the High Court, which exercises control over registration. He submitted that an evident nexus exists between the High Court and the Appropriate Office intended to be created in the statute.
The second amicus evidenced his arguments by relying on the Ayyangar Committee Report, which recommended establishing a territorial nexus between the Registrar and the High Court. He also submitted that the definitions provided in other IP statutes cannot be applied in interpreting the 1999 Act. He submitted that an interpretation which leads to jurisdictional uncertainty would be antithetical to the Act’s purpose and aims; therefore, any interpretation made must prevent potential mischief.
He submitted that the 1999 Act narrowed down the jurisdiction for appeals by channelling it into the five High Courts situated within the jurisdiction of the Intellectual Property Appellate Board and that the TRA did not change this position, which meant that the same High Courts would have power over appellate and cancellation proceedings. He submitted that there was consistency in the intention of the Legislature with regard to the territorial applicability, and therefore, there was no need for judicial intervention.
Judgment:
The Court observed that the omission of the definition of the High Court in the 1999 Act is peculiar, especially since the definition is provided in the Patents Act and the Design Act, leading to ambiguity regarding legislative intent. The Court held that the applicability of Girdhari Lal Gupta decision, which establishes a territorial nexus with the cause of action, to the 1999 Act requires consideration by a larger bench, as the decision was rendered by a Full Bench.
