Delhi High Court - Orders
Vimal Agro Products P. Ltd vs Capital Foods P. Ltd. & Anr on 21 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 227/2023, I.A. 19905/2023
VIMAL AGRO PRODUCTS P. LTD. ..... Petitioner
Through: Mr. Sachin Gupta, Mr. Ajay Kumari,
Mr. Rohit Pradhan and Ms. Prashansa
Singh, Advocates.
versus
CAPITAL FOODS P. LTD. & ANR. ..... Respondents
Through: Mr. Chander M. Lall, Senior
Advocate with Mr. Hiren Kamod,
Mr. Nishad Nadkarni, Mr. Aasif
Navodia, Mr. Kiratraj Sadana and
Ms. Jaanvi Chopra, Advocates for R-
1.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 21.02.2024
th
1. On 5 January, 2024, the Court had observed that arguments shall be heard on the issue of territorial jurisdiction.
2. Mr. Sachin Gupta, counsel for Petitioner, has relied upon the judgement of this Court in Dr. Reddys Laboratories Limited v. Fast Cure Pharma and Anr,1 as well as other judgements, to contend that this Court would have the jurisdiction to entertain the present petition, particularly, in light of the following observations:
"40. Applying the principle enunciated in Girdhari Lal Gupta, therefore, a 1 2023 SCC OnLine Del 5409 C.O. (COMM.IPD-TM) 227/2023 Page 1 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/02/2024 at 21:04:45 rectification petition could be instituted before any Court within whose jurisdiction the dynamic effect of the registration of the defendant's trademark is felt. That would, however, be conditional on the petitioner establishing that it is in fact suffering the dynamic effect of the registration within such jurisdiction, either by actually accessing the impugned mark within such jurisdiction, or intending to do so, or, as in the case of CO (COMM. IPD TM) 97/2023, the impugned registration acting as an obstruction to the petitioner securing registration of its own mark. In each of these cases, the dynamic effect of the registration of the impugned mark would be felt by the petitioner and, therefore, the petitioner could-institute the cancellation petition within the jurisdiction of the High Court within which he feels such effect.
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85. I, therefore, hold 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 Courts within whose jurisdiction the offices of the Trade Mark 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 petitioner/applicant. The dynamic effect of the impugned registrations in these cases having been felt by the petitioners before this Court, these petitions are maintainable before it."
3. However, in a later decision passed in The Hershey Company v. Dilip Kumar Bacha and other connected matters,2 this Court observed as under:
52. However, for the following reasons, this Court is unable to subscribe to the view taken by the ld. Single Judge in Dr. Reddys Laboratories Ltd. v.
Fast Cure Pharma (supra):
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(iii)The application of the 'dynamic effect', as interpreted by the ld. Full Bench in Girdhari Lal Gupta (supra), presumes casus omissus, which was not the intention of the Legislature. Although the ld. Single Judge in Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma (supra) acknowledges the principle of expressio unius est exclusio alterius (meaning: the express mention of one thing excludes all others), the application of the dynamic effect concept seems to contradict this legal maxim. The said approach 2 2024 SCC OnLine Del 814 C.O. (COMM.IPD-TM) 227/2023 Page 2 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/02/2024 at 21:04:45 potentially expands the scope beyond the explicit provisions, indirectly filling gaps that the Legislature did not address.
iv) Paragraph 47 of the decision of the ld. Single Judge proposes a distinct framework for entertaining rectification petitions by the High Court compared to the Registrar of Trade Marks. According to this Court, such an approach, however, does not fully consider the implications of the term "or" within Sections 47, 57 and 91 of the Trade Marks Act, 1999, which implies a choice rather than a distinction in the procedure to be followed in entertaining such petitions. Additionally, the 1999 Act itself does not provide any guidance on whether the jurisdiction applicable to the High Court should diverge from that of the Registrar, leaving room for interpretation. Such absence of any guidance raises doubts about the basis for such a differentiated approach.
v) The approach recommended by the ld. Single Judge, which allows different High Courts to exercise original jurisdiction over rectification petitions, raises questions regarding the interpretation and application of the 1999 Act. One of the implications of such an approach as suggested is that different High Courts would be conferred with original jurisdiction to entertain original rectification petitions, for which there is no clear indication from the scheme of the 1999 Act itself. Under the Patents Act, 1970, if a counter claim is filed then the patent dispute automatically moves to the concerned High Court. In such a situation, all High Courts where patent disputes are received or filed, would in effect be exercising original jurisdiction under the Patents Act, 1970. However, insofar as cancellation petitions are concerned, such an intent is not borne out from the 1999 Act or the TRA- though the spread of trade mark disputes across the country to all High Courts could be a positive move. The basis however needs to exist in the legislation."
53. In view of the significance of the issues raised in these cases, including the question as to whether Girdhari Lal Gupta (supra) would be applicable in the context of the 1999 Act, as amended by the TRA, this Court is of the opinion that the issues deserve to be considered by a larger Bench, as the said decision was rendered by a Full Bench of this Court."
4. In light of the above, the Judge has directed that a larger bench be constituted for deciding 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 applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining jurisdiction of a High Court under Section 57 of C.O. (COMM.IPD-TM) 227/2023 Page 3 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/02/2024 at 21:04:46 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 Mark 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?"
[Emphasis Supplied]
5. In light of the above two decisions the Court has, at the outset, observed that it would be appropriate for Petitioner to await the outcome of the decision of the larger bench to which Mr. Gupta agrees.
6. List on 9th July, 2024.
SANJEEV NARULA, J FEBRUARY 21, 2024 nk C.O. (COMM.IPD-TM) 227/2023 Page 4 of 4 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/02/2024 at 21:04:46