A five-judge Bench of the Delhi High Court on Wednesday appointed Senior Advocate Gaurav Pachnanda as amicus curiae to assist the Court in deciding its jurisdiction to deal with rectification/cancellation petitions filed under the Trade Marks Act, 1999 [The Hershey Company v. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr + Connected Matters].A Bench of Acting Chief Justice Manmohan as well as justices Vibhu Bakhru, Sanjeev Narula, Tara Vitasta Ganju and Manmeet Pritam Singh Arora is tasked with deciding the issue.The Bench is considering the question whether cancellation petitions under the Trademarks Act can be filed only before a High Court within whose jurisdiction the offices of the Trade Mark Registry which granted the registrations are situated, or whether such applications should also be filed before the High Courts within whose jurisdiction the dynamic effect of the registration is felt by the petitioner.The Court assembled in the post-lunch session to hear the five connected matters.It heard the case in brief and said that since the issue involves a significant question of law, it would appoint Pachnanda as amicus curiae in the matter.The Bench asked the parties to file their short written submissions in three weeks along with judgments and listed the matter for further proceedings in May 2024.The matter had been referred to the larger bench by Justice Prathiba M Singh through a judgment passed on February 9, 2024.Justice Singh disagreed with the conclusions of Justice C Hari Shankar in the case of Dr Reddys Laboratories Ltd v. Fast Cure Pharma.The Dr. Reddys judgement had held that rectification petitions 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.
The following questions were referred to the larger bench by Justice Singh:
Whether the decision of the ld. Full Bench in Girdhari Lal Gupta v K Gian Chand Jain 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 the Trade Marks Act?
Whether the jurisdiction of the High Court under Section 57 of the Trade Marks Act, 1999 would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the impugned trade mark registration?
Whether the expression ‘the High Court’ can be differently construed in Sections 47, 57 and 91 of the Trade Marks Act?
TAGS: amicus curiae Gaurav Pachnanda Delhi High Court jurisdiction Trade Marks Act 1999 cancellation petitions
