Rectification Under The Trademarks Act And Associated Issues - A Detailed Analysis

Author: LawSphereX

Category: Intellectual Property

Published: 2026-08-23T20:51:34.15246+00:00

Updated: 2026-08-26T17:09:52.451+00:00

RECTIFICATION UNDER THE TRADEMARKS ACT AND

ASSOCIATED ISSUES: A DETAILED ANALYSIS

Soumya Singh & Dr. Meenu Gupta, Amity University

ABSTRACT

The study traces the trajectory of concept of rectification from the 1940 Act, to the 1958 Act, which emerged as a post-independence milestone, and finally to the 1999 Act, which reshaped the trademark jurisprudence in India. A nuanced calibration was represented by the 2021 legislative modification

in the trademark legislation when the Intellectual Property Appellate Board was abolished through the enactment of the Tribunal Reforms Act, 2021. The powers that were given to the IPAB were transferred back to the High Court. However, the judicial conundrum with respect to the jurisdiction of the rectification petition arose as no specific definition of ‘High Court’ has been provided in the legislation. The scheme of the Trade Marks Act, 1999 is that it is a self-contained code; thus the infringement remedies and registration remedies must be read as a whole in determining the jurisdiction. The overlap of the Section 134 with Section 57 of the TM Act, 1999 where the convenience of the Plaintiff has been kept into consideration, Section 57 keeps mum about the jurisdiction of the High Court.

Legislatively, when the right to rectify has been provided to both the registrar and the High Court, the jurisdiction of the High Court over the “appropriate office” is presumed. Although the judiciary has also stressed the fact of dynamic jurisdiction where the effect of registration has been felt, which creates jurisdictional uncertainty Further, the study also examines Section 124 which provides for the stay of the infringement proceedings to pursue the rectification petition if the validity of the mark has been challenged, which overlaps with the understanding of whether Section 57 is an independent right from that of Section 124. This gap has implications for realizing the legislative intent, thus present research is required on this aspect. Keywords: Rectification, Jurisdiction, Trade mark registry, Registration, Infringement

I.

INTRODUCTION

A Trade Mark is one of the intellectual property rights that represents a name, slogan, word, or

logo in a way that helps consumers identify the source of specific goods or services and also to differentiate between the goods and services from those of other competitors in the market. Prolonged usage of the trademark fosters the building a goodwill and a brand by ensuring consistent quality of their products. In India, the Trade mark Act, 1999 protects the trade mark while providing remedies to the registered proprietors from those who have caused harm to their goodwill and reputation by usage of a similar mark to that of the registered one. Previously, the Trade Marks Act 19401 and Trade Marks and Merchandise Act, 19582 dealt with the protection of, trade marks the updated legislation has not only streamlined the registration process but has also focused on preventing the trade marks unauthorised use.

The new act, in line with the international conventions, especially with the Trade-related aspects of intellectual property rights, has revamped its protection limits by introducing the concept of national treatment and priority rights in 18833, streamlining the international registration process by allowing the owners to file single application for registration4. The TRIPS5 agreement has brought stronger enforcement by establishing minimum protection standards and requiring effective enforcement mechanisms from all WTO members. Collectively, these conventions have collectively created more consistent, accessible and robust global framework benefiting the businesses and reducing legal uncertainties and enforcement challenges across territorial boundaries.

Registration of the trade marks provides evidence of protection to the marks as also ingrained under Section 31 of the Trade Marks Act, 1999. 6 Numerous legal benefits such as exclusive rights to use the trade mark7, infringement action rights8, right to assign9, among others are provided to the proprietor on registration. Notwithstanding its benefits, the trade mark registration procedure often imposes substantial impediments on the applicants. The intricacy

1 The Trade Marks Act, 1940 (Act No. V of 1940).

2 The Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958).

3 Paris Convention for the Protection of Industrial Property, 20 March 1883

4 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989 5 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, (1994)

6 Betco Enterprises and another v. Pradhan perfumers and Anr. 2002 (1) KCCR 116 (India)

7 The Trade Marks Act, 1999 s.28

8 The Trade Marks Act, 1999 s.28

9 The Trade Marks Act,1999 s.37

of classification, the inconsistent trademark examination, which leads to unexpected rejections or objections and eventually the long waiting time for the approval add complexity to the process. This, when supplemented with an additional difficulty to correct/ amend the register, the tedious exercise prolongs the time to establish a reputation for brand and market presence. As much as trade mark registration is important in ensuring its validity, the rectification of the register is equally important in ensuring the accuracy and integrity of the register. Any change of entry in the register, rectification of error, or mark wrongly registered can be rectified by the registrar or the High Court, as the case may be any person who applies for the rectification of the trade mark.

The consideration is brought forth by the very fact that despite the abolition of the Intellectual Property Appellate Board (IPAB) through the Tribunal Reforms Act, 2021 (TRA) the rectification proceedings have been greatly impacted. While the purpose of the TRA, 2021 was to smoothen and streamline the adjudication process by abolishing the IPAB and transferring the power to the judicial body (High Court), it has inadvertently created such jurisdictional issues that pose a significant hindrance in trade mark litigation. The development of the definition through various judicial decisions and still lacking the territorial nexus significantly impacts as to the certainty of seeking a remedy by the person filing the rectification petition.

The study explores the jurisdictional conundrum that is faced by the abolition of the various tribunals and a vacuum that has been created in the legislation, with no clear definition of the High Court. A fundamental question of procedural independence and judicial discretion lies at the core of

Section 124 of the Trade Marks Act, 1999. When a rectification proceeding is ongoing or initiated during an infringement suit, courts must navigate a delicate balance between preserving the integrity of legal proceedings and ensuring substantive justice. This position helps manage the concurrent legal action and recognises the potential interdependence of the rectification and infringement claims while also maintaining the distinct legal character.

However, the jurisdictional ambiguity becomes necessary to be studied when in scenarios the validity of a trademark registration is challenged through rectification proceedings and is also raised as a defense in an infringement suit the quotes in such a situation must carefully consider whether to stay the infringement proceedings or allow them to continue or adopt nuanced approach that will address the interconnected nature of the legal challenges.

Thus, the independence of Section 57 when read along with Section 124 poses complex challenges in trademark litigation that must be addressed to remove the significant gaps and overlapping decisions.

II. JURISDICTIONAL ISSUE FACED IN FILING THE RECTIFICATION PETITION

The concept of ‘Jurisdiction’ represents a fundamental legal question and forms the essence of litigation, yet it lacks a statutory definition in any legislation. At its most basic, jurisdiction refers to the scope of authority that a court possesses by virtue of its constitutional establishment to hear and determine legal proceedings. This power delineates the boundaries within which a court can legitimately exercise its judicial functions, essentially establishing the parameters of what cases it can and cannot adjudicate. The Trade and Merchandise Act, 1958, established a clear jurisdictional framework for filing the rectification petition. This framework came into the light due to the Ayyangar committee report10 which discussed the loopholes present in the Trade Marks Act, 1940.

Under this framework, the jurisdiction was determined by the location of the appropriate office of the trade mark registry where the mark was registered. This provided a straightforward approach in determining the jurisdiction but was somehow inflexible. Further, the Parliamentary debate of Rajya Sabha11 regarding the 1958 Act emphasised on clear and protective intent for trademark harassment by the infringer. The legislators specifically addressed the jurisdictional aspect, emphasizing that it would be unfair and burdensome to allow trademark challenges to be filed in any High Court regardless of territorial jurisdiction. The Trade mark Act, 1999 which ultimately replaced the 1958 Act followed the same approach but due to amendments, the issues in practicality became more challenging.

Initially, under Section 57 of the Trade Marks Act, 1999, the rectification of the trade mark could be filed before the registrar or the IPAB; thus, the “appropriate office” of the trade mark registry was directly linked to the jurisdictional determination of these offices. Although certainty was provided but for those litigants who had to approach the forum as per their place of business or where the cause of action has arisen, the difficulties in applying the concept emerged. 10 Justice N. Rajagopala Ayyangar Committee, Report on the Trade Marks Bill (Government of India 1955) 11 Parliamentary Debates, Discussion on the Tribunals Reforms Bill, 2021 Lok Sabha Debates, Series 17, Vol. 14 (August 2, 2021) [contains significant discussion on IPAB abolition affecting trademark adjudication]

Following the TRA’s enactment which brought changes by altering the landscape, abolished the IPAB and gave the powers to the High Courts. If specific language used in Section 57 is examined, then the provision employs particular terms like “any person aggrieved”, which gives a standing to file rectification applications/petitions by a person who has suffered an injury in a practical sense12. The section refers to “absence or omission” from the register, entries made “without sufficient cause, “entries wrongly remaining”, and “error or defect” in entries all representing different types of register problems that can be addressed. The section specifies that applications must be made “in the prescribed manner” to either a High Court as per Section 97 or to the Registrar as per Rule 97 to 100 of The Trade Mark Rules, 2017, giving applicants two possible forums .

The language grants the tribunal broad remedial powers to make orders for “making, expunging or varying” entries, showing the comprehensive authority to add, remove, or modify register entries as deemed appropriate. These word choices carefully delineate who can seek rectification, what issues can be addressed, what remedies are available but no clarity is provided on the jurisdiction of the High Court to be approached when filing the rectification petition. ● Definition of the term “High Court” Glancing upon the natural meaning of the term “High Court” under Section 57, the jurisdiction as to where and in which High Court the case should be filed is not mentioned. The natural meaning that can be drawn is that where the registry has been initially filed will be the relevant jurisdiction of the High Court.

The Trade marks Act, 1999 does not anywhere define the term and thus, in ordinary parlance, the jurisdiction can be assumed by linking it to the Trade mark registry. Moreover, if rectification, which is used to rectify the error, removal of improperly registered mark, acts as a review of what has already been registered in the register, then such review should only lie before the authority which granted the registration or the High Court that has jurisdiction over the registry. Further, if the choice of words is noticed that has been used under Section 57 by adding ‘The’ before High Court signifies a specific High Court, the jurisdiction of which is decided upon the registration of trade mark. If the legislature had to state that any High Court or trade mark registry could be approached then the legislature would have done so by choosing the

12 Hardie Trading Ltd v. Addisons Paint & Chemicals Ltd. 2003 (11) SCC 92 (India)

appropriate words. The literal interpretation of the words must be applied accordingly. The Trade Marks Registry has offices in multiple locations, including Delhi, Kolkata, Chennai, and Ahmedabad. Thus, the High Court pertaining to the office of registry should be approached having a direct linkage between the jurisdiction and the registry which only registration serves. Section 58(4)’s use of the phrase “on its own motion” grants the Registrar the authority to independently initiate rectification of the trademark register. This provision requires the Registrar to serve notice to the proprietor or any other interested parties, clearly stating the grounds for the proposed rectification. Nevertheless, if the trademark application isn’t registered with that particular registry office, then exercising this suo moto power would be illogical and inappropriate.

The Registrar’s authority to act independently is meaningfully connected to trademarks within its own registry's jurisdiction. Attempting to rectify registrations that fall under a different registry's authority would exceed the jurisdictional boundaries implied by the provision and undermine the territorial organisation of the trademark registration system. The potential for a broad interpretation of trademark jurisdiction emerges from a nuanced reading of Section 3 (25) of the General Clauses Act,1897 which defines “High Court” as “the highest Civil Court of appeal (not including the Supreme Court) in the part of India in which the Act or Regulation containing the expression operates”, also caters to the convenience of the petitioners who can approach the High Court where the cause of action has arisen.

However, the same liberty can allow the Petitioners to cause great hardship to harass the potential defendants as they will have to travel to all lengths and breadths of the country to defend themselves. By adopting an expansive interpretation, the legal framework transcends the traditional limitation of trademark jurisdiction to five specific High Courts where trademark offices are located. This approach recognises the dynamic nature of commercial interactions and intellectual property protection in contemporary legal landscapes. The broader interpretation allows High Courts across India to entertain trademark rectification proceedings, thereby significantly expanding the accessibility of legal remedies for trademark owners.

The theoretical foundation of this approach lies in purposive interpretation, which seeks to understand and implement the broader legislative intent behind trademark protection laws. By

moving beyond a literal, restrictive reading of jurisdictional provisions, the legal framework becomes more adaptive to the evolving complexities of commercial interactions. ● Section 134 paradigm and its implications Section 134 states that for a suit for infringement or passing off the jurisdiction will be the District Court. The general rule of jurisdiction under Section 20 of the Code of Civil Procedure,

1908 (CPC) deals with the territorial jurisdiction, which provides that jurisdiction based on

where the defendant actually or voluntarily resides or carries on business or works for gain or where the cause of action arises. 13 Section 134(2) does not limit the general jurisdiction but provides an additional forum to the petitioners. 14 Thus, without other legal provisions supplementing Section 20, a plaintiff cannot select a court based on where they “reside, or carry on business, or personally works for gain” to file their legal action. The controversy stems from the inclusion of the phrase “notwithstanding anything contained in the Code of Civil Procedure” in Section 134 of the Trade Marks Act. Taking the interpretation as it is the convenience of the Plaintiff, where at the time of instituting the suit, he voluntarily or actually resides or carries on business or personally works for gain.

This would cause hardship to the defendants who, for defending themselves, will have to travel to parts of the country where the Plaintiff institutes the suit. Conversely, as per Section 20 CPC,

1908 the plaintiffs have to travel across the country to protect their mark and file where the

cause of action has arisen or where the defendant resides or works for gain. In the case of IPRS v. Sanjay Dalia15 the Supreme Court analysed section 20 interacting with section 62 of the Copyright Act and Section 134 of the Trade Marks Act, 1999. Pertinently, section 62 of the Copyright Act,1957 is almost identical to section 134 of the Trade Marks Act, 1999, the earlier Act of TM 1958 did not create an additional forum like Section 62 of the Copyright Act, 1957. In this case the Defendants head office was situated in Mumbai where the cause of action had arisen but the suit was filed in Delhi for infringement of the copyright against the Defendant. Simultaneously, a trademark infringement suit was filed for which the jurisdiction was in 13 Manjusha Tiwari, Rishi Shukla Issue of Jurisdiction In Trademarks And Copyright Disputes, Int’l Journal of Cre. Res.

Thoughts (IJCRT), Volume 11, Issue 9, 9 September 2023 14 Exphar SA and Another v Eupharma Laboratories and Anr. Appeal (civil) 1189- 1190 of 2004, has been specifically recorded that Section 62 of the Copyright Act 1957 (which is akin to Section 134 of the Trade Marks Act, 1999) removes impediments to the rights of the proprietor of a registered trade mark and provides an additional jurisdiction over and above the “normal” ground as laid down in Section 20 of the CPC.

15 I.P.R.S. v. Sanjay Dalmia, 2009 (39) PTC 1 (India)

Mumbai, as the registered office of the plaintiff was Mumbai. The issue that arose in both the cases was that where the cause of action has arisen in one place can the Plaintiff who has the office either head office or subordinate office can they sue the Defendants in another jurisdiction? The court held that Section 62 and Section 134 deals with where the cause of action has arisen. More prominently, the language used in Section 20 CPC, 1908 clarifies that where the subordinate office is in the jurisdiction where the cause of action has arisen, the defendant can be sued there. Therefore, the linkage between the cause of action and the Plaintiff’s subordinate office has been done wisely by the legislature and not just to provide an additional forum to harass the defendant. Further, Section 20 includes an “Explanation” part that specifically talks about corporations.

This explanation is important because it helps define what “carry on business” means for companies. It goes on to explain that if the company has a main office at one place and a branch office at another place, and if the cause of action has arisen near the branch office, then the suit should be filed there. This explanation should also be considered while interpreting section 134 of the Trademarks Act. The court emphasised the very fact that the law has been created in a way to connect the problem where it has happened to the suit by not giving the Plaintiffs an extra advantage to soon wherever they want to. If the law wanted to give the liberty to the plaintiffs to sue anywhere where they do business then the explanation of section 20 would be pointless.

The court referred to Dhodha House16 case under the 1958 Act in which the Plaintiff’s main office was located in one jurisdiction (Ghaziabad) and cause of action arose in another jurisdiction (Faridkot). The case was filed where the plaintiff was residing and a temporary order was also obtained. The Respondent appealed that the jurisdiction should have been related to Respondent’s convenience and not the Plaintiff’s. The phrase “carry on business” means a physical presence or an agent, actively selling and making decisions at that place, and mere selling would not constitute that a company has been “carrying on business” there. The Supreme Court ruled that just because a business is selling products in a different location doesn’t mean a lawsuit can be filed there. The correct jurisdiction depends on where the business operates, not just where the Plaintiff prefers.

Exphar Case17 was also touched upon in this IPRS case18 along with Dhodha case19, the question that arose in this case was whether the Plaintiff can choose to sue in any location

16 Dhodha House v. S.K. Maingi, (2006) 9 S.C.C. 41. (India)

17 Id at 11

18 Id at 12

19 Id at 13

where they have an office or should sue where the cause of action arose, or they have a subordinate office. The court held that forum shopping is prevented by the explanation part of Section 20 by the Plaintiffs by stating that if the subordinate office of the corporation is situated where the cause of action arose then the case must be filed there. Such balance of linking the cause of action to the subordinate office has been created by the legislature keeping in mind the convenience of the Defendants. While the above discussion was particularly on the physical location, the issues with respect to online cases also casts an impediment. There are various opposing views on how the courts have assumed jurisdiction where the website can be accessed globally. In the case of Casio India Co.

Limited20 it was held by Delhi High Court that the territorial jurisdiction to decide the matter is given on the mere ability to access the website. While on the other hand, in the case of Independent Services News Service. Pvt. Ltd. 21 accessibility of the website at a particular place does not itself gives sufficient reason to exercise the jurisdiction. What is important is to establish that the Plaintiff was engaged in a commercial activity which specifically targeted the customers causing “damage or inconvenience” to the Plaintiff, in the place of court’s jurisdiction. Mere advertisement does not allow customers to enter into commercial transactions. 22 When analyzing actions for infringement and passing off, it's evident that courts have not limited jurisdiction solely to where the proprietor is located, as Section 134 provides expanded jurisdictional options.

Following this logic, there appears to be no reasonable basis for restricting the jurisdiction for rectification proceedings under Section 57 of the Act. The jurisdictional flexibility granted for infringement cases creates a notable inconsistency if such flexibility is denied for rectification actions. The special privilege that Parliament conferred through Section 134, which expanded jurisdictional options beyond traditional limitations, cannot be arbitrarily modified or applied in reverse to restrict jurisdictional options under Section 57.

Although these provisions serve different purposes within the trademark protection framework which can be divided into infringement remedies and registration remedies, the expanded jurisdiction under Section 134 represents a deliberate legislative choice that should be respected on the other hand if the concept is understood keeping in view Section 91 of the

20 Casio India Co. Limited v. Ashita TeleSystems Pvt. Limited, 2003 (27) PTC 265 (Del) (India)

21 Independent News Service Pvt. Limitedv. India Broadcast Live Llc And Ors., 2007 (35) PTC 177 (Del) (India) 22 Banyan Tree Holding (P.) Limited v. A. Murali Krishna Reddy and Anr., 2010 (42) P.T.C. 361 (Del.) (India)

act which refers to the appeal then the restrictive approach of assuming jurisdiction to only the five High Courts where the registry is situated is made. ● The Static v. Dynamic Effect Doctrine The question for determination is the application of the static or dynamic effect of registration while filling the rectification application in the High Court. The static effect means where the application for registration has been filed by the applicant , while dynamic effect is where the effect of registration has been felt. 23 Following the theory of static effect would mean that the position before the enactment of the TRA, 2021 would be reverted, meaning thereby the situation under the 1958 Act, where the jurisdiction was decided as per the office of the Trade Mark Registry. On the other hand, the dynamic effect theory would mean to interpret the law beyond the black and white letters.

Such interpretations are in the law in the light of the evolving legal landscape and the practicality of litigation. The approach considers the territorial nexus as per the location where the cause of action has arisen, rather than strictly confining the jurisdiction to the historical determination, thus not restricting to the Trade mark registry’s location. The jurisdictional uncertainty present in the legislation creates a tension between these two approaches with one arguing on the historical determination (static) and other to create a nexus between the jurisdiction of the court the where the dispute arises(dynamic). In the case of Reddy's Laboratories Limited & Anr. v. The Controller of Patents24, the court, while deciding on the patent application, dealt with the question of whether on the abolition of the IPAB, the High Courts can entertain the appeals and revocation petition.

The Hon’ble High Court held that the original jurisdiction under section 47 and 57 and the appellate jurisdiction under section 91 need not be identical. The dynamic effect principle has been adopted from the case of Girdhari Lal Gupta v. K. Gian Chand & Co. 25 Where the court emphasised where the effects of law has been felt, the case can be filed in that jurisdiction. The case was related to the Patents and Designs Act, 1911 Section 51-A which dealt with cancellation of registered design. The static view was considered to be

23 Girdhari Lal Gupta v. K. Gian Chand & Co. AIR 1978 Del 146 (India)

24 Reddy's Laboratories Limited & Anr. v. The Controller of Patents W.P.(C)-IPD 4/2022 & CM 27/2022 (India)

25 Id at 20

narrow as it captures the registration nexus with the registry is essentially only the paperwork formality. The broader implications of the registration are only catered to by the dynamic effect. The court took into consideration the impact of registration which extends beyond the place where the register is kept. When a design is registered it prevents anyone else from using the similar design anywhere in the country. Implying that an injury can be caused in places where the register is not kept. Thus, the place where the injury has occurred and damage has taken place can be the place of jurisdiction. In this case the competitors experienced the negative effects of registration in Delhi while the design was registered in Calcutta. The court recognized that the impact of a design registration extends everywhere the business operates, not just where the official paperwork is stored.

This gives companies more flexibility in where they can file legal challenges when they believe someone else's design registration is unfairly hurting their business. • Navigating Trade mark Rectification Under Section 124 Section 124 of the Trademarks Act addresses situations where a defendant in an infringement action challenges the validity of the plaintiff's trademark registration. This provision creates a complex interplay between infringement proceedings and rectification actions, requiring courts to navigate carefully between the two. When a plea of invalidity is raised by the defendant in the infringement proceedings, the infringement proceedings are stayed pending the resolution of rectification proceedings. This procedure becomes complicated when the jurisdictional issue as to in which High Court the rectification petition should be filed crops up.

If the rectification must be filed in a different High Court than the one hearing the infringement action (because of jurisdictional restrictions), this creates inefficiencies and potential conflicts. Parties may need to litigate in multiple forums, increasing costs and creating the risk of inconsistent judgments. This situation undermines the judicial economy that Section 124 was presumably designed to promote. The Court in the case of Patel Field Marshal26 stated that right to seek rectification as per Section 57 under Section 124 is dependent on the plea of invalidity and also on the fact the issue must be framed before the filing of the rectification petition in order to stay the

26 Patel Field Marshal Agencies v. P.M. Diesels Ltd. AIR 2017 SCC 1388 (India)

infringement proceedings. If such plea is abandoned then the right to seek rectification is lost. However, significant judicial developments has taken place over the years and the courts have adopted a different view which states that even if the invalidity plea is not tenable or if the rectification petition under Section 124 (2) or (3) is filed after the elapse of time period, then also the right to rectification remains intact.27 A controversial departure was taken in the case of Anubhav Jain v. Satish Kumar Jain & Anr.28,

in which the Hon’ble Court held that the Section 124 is independent from the additional right under Section 57 and is not subjected to Section 124. The court determined that since the Supreme Court in Patel Field Marshal wasn't concerned with rights under Section 57, the judgment couldn't be interpreted to mean that a Defendant loses the right to seek cancellation/rectification once an infringement suit is filed. Moreover, the permission of civil court even if the plea of invalidity has been raised, is not required before initiating the rectification petition. Recently, in the case of Mr. Amrish Aggarwal Trading as M/s Mahalaxmi Product v. M/s Venus Home Appliances Pvt. Ltd. and Anr. 29 the judgement of Sana Herbals30 was overruled which stated that the infringement suit and the rectification petition can be filed before the same High Court.

The primary question as to whether the stay provision under section 124 remained applicable even after the enactment of TRA,2021 and abolition of IPAB. The secondary issue was whether the rectification petitions can be filed before the civil court that determines the prima facie tenability of the validity challenge. The petitioner in this case was trading as Mahalaxmi product, challenged the validity of the Respondent's mark and filed for rectification after being sued for infringement the Defendant initiated by filing a suit for infringement and contended that the civil suit must be stayed pending the rectification proceedings. The court focused on the precise wording of the statute, “shall stand stayed,” which remained unchanged even after the abolition of the IPAB.

In order to avoid multiplicity of the proceedings, the rectification proceedings should be prioritised first to avoid any conflicting ruling, as also held in the Patel Field Marshal case31 which reinforced the 27 Data Infosys Ltd. v. Infosys Technologies Ltd 2016 (65) PTC 209 Del. & B. Mohamed Yousuff v. Prabha Singh (2008) 38 PTC 576 (India)

28 Anubhav Jain v. Satish Kumar Jain & Anr. 2023/DHC/000233 (India)

29 Mr. Amrish Aggarwal Trading as M/s Mahalaxmi Product v. M/s Venus Home Appliances Pvt. Ltd. and Anr.

2024 SCC OnLine Del 3652 (India)

30 Sana Herbals Pvt. Ltd. v. Mohsin Dehlvi 2022 SCC OnLine Del 4482 (India)

31 Id at 19

importance of resolving the trademark validity before proceeding with the infringement proceeding. The court rejected the argument that the rectification proceedings could be heard by any High Court where the effect of the trademark registration is being felt; such expansive jurisdiction is not supported by the statutory framework of rectification. Section 57 and Section 124 serve different purposes and have different jurisdictional requirements that must be respected independently. Therefore, infringement actions that have broader jurisdictional options, rectification proceedings have more of a limited jurisdictional avenue, so the distinct requirements applicable to both sections should be followed even if the two proceedings are related through section 124.

Accordingly, there is no requirement to stay the infringement suit as the rectification jurisdiction after the abolition of IPAB has been vested with the High Court.

III. Analysis

Rectification serves as an integral part in maintaining the integrity of the register, while the legislature does not clarify where the rectification proceedings must be filed after the abolition of the IPAB. The grey area that has been created causes problems for both parties as the jurisdictional certainty is not present. The principle “the sufferer should not be compelled to chase after the transgressor” has been carefully followed by the updated Trade Marks Act,

1999 under Section 134 but the implementation of the same principle under Section 57 has not

been done. This compels the Plaintiff to file a rectification petition where the mark was originally registered. Thus, even after registration and getting the exclusive right to use it preventing others from using the mark, the plaintiff has to move to the registry where the defendant has registered the mark in order to file the rectification petition in the concerned High Court. Even if Section 20 of the CPC is examined the same gives the provision to file the case where the cause of action has arisen. Moreover, parallel reading of Section 134 and 57 would mean that the Plaintiff can file the suit where he or she voluntarily resides, carries on business or works for gain. Where the cause of action has arisen near the branch office of the Plaintiff, it will create a jurisdiction to file the rectification petition.

Considering the very fact that digitization has eased physical procedures, the register can be accessed online from any location providing flexibility32. In the event where the petition is filed, where the cause of action has arose the changes to the register can be done electronically,

32 The Trade Marks Act, 1999 s.6

which prevents the hassle of rectifying it physically. Therefore, the historical approach of filing the petition where the office of the registry lies must be done away with and dynamic effect of registration must be applied. Additionally, where under Section 124 the infringement is filed in one court and the rectification in another based on the Trade Mark registry would nevertheless complicate the process. The rectification should be allowed to proceed in the same court as the infringement suit for judicial efficiency. However, courts are hesitant to create jurisdictional flexibility where the legislature has not provided it, viewing this as judicial overreach that might encroach on parliamentary authority.

IV. CONCLUSION AND SUGGESTION

The Trademarks Act, 1958, established a clear jurisdictional framework for rectification proceedings. Under this framework, the jurisdiction was primarily determined by the location of the appropriate office of the TM Registry where the mark was registered. This provided a straightforward, albeit somewhat inflexible, approach to determining the appropriate forum. The Trademarks Act, 1999, which replaced the 1958 Act, initially maintained this approach but introduced subtle changes that would later become significant. The 1999 Act preserved the concept of an “appropriate office” of the TM Registry and continued to tie jurisdictional determinations to these offices. This structure provided certainty but sometimes imposed practical difficulties on litigants who had to approach forums distant from their place of business or where the cause of action arose.

The TRA's passage in 2021 fundamentally altered this landscape. By abolishing the Intellectual Property Appellate Board (IPAB) and reverting its powers to the High Courts, the TRA created a situation where the jurisdictional provisions needed reinterpretation. Specifically, the removal of certain definitional provisions left open the question of whether the jurisdiction should continue to be determined by the location of the TM Registry or could now be interpreted more flexibly. Further, Section 134 of the Trademarks Act provides a plaintiff-friendly jurisdictional framework for infringement actions. It allows plaintiffs to initiate proceedings in a High Court having jurisdiction over the area where they reside or carry on business, regardless of whether

the defendant has any presence in that jurisdiction. This provision significantly expands the potential forums available to trademark holders seeking to enforce their rights. The contrast between this expansive approach to jurisdiction in infringement proceedings and the more restrictive interpretation being applied to rectification proceedings creates practical challenges. This disparity becomes particularly problematic when considering the interrelationship between infringement and rectification actions, which often arise in the same factual context and involve the same parties. Lastly, when a defendant raises validity concerns, Section 124 generally requires the infringement court to stay its proceedings pending the resolution of a rectification application.

However, this straightforward procedure becomes complicated when jurisdictional questions arise regarding where the rectification application should be filed. If the rectification must be filed in a different High Court than the one hearing the infringement action (because of jurisdictional restrictions), this creates inefficiencies and potential conflicts. Parties may need to litigate in multiple forums, increasing costs and creating the risk of inconsistent judgments. This situation undermines the judicial economy that Section 124 was presumably designed to promote. Suggestions: The most direct and comprehensive solution to the current jurisdictional uncertainties would be legislative action. Parliament could amend the Trademarks Act to explicitly address jurisdictional questions for rectification proceedings following the TRA's abolition of tribunals. This could take several forms:

1. Comprehensive Territorial Jurisdiction Framework: Amendments regarding clear

hierarchical framework for determining the HC over rectification matters must be effectuated. Explicit hierarchy on the priority of the primary jurisdiction i.e. jurisdiction of High Court over the trade mark registry and Secondary jurisdiction i.e. where the primary jurisdiction is impractical then the principle place of business of the proprietor where the cause of action has wholly or partially arisen. Establish statutory power for the

Supreme Court to transfer and consolidate related rectification matters pending before different HCs upon application.

2. Amendment of S. 57: Providing with an explicit definition of High Court will be

beneficial in determining the territorial jurisdiction through which a clear nexus requirement between the location of trade mark registration or for that matter the cause of action for the rectification could be established.

3. Commercial Impact: Create a statutory “commercial impact test” that allows filing

rectification petitions where actual commercial harm is being experienced, regardless of where the mark was registered.

4. Transfer Mechanism: Implement a transfer mechanism between High Courts when cases

have stronger connections to different jurisdictions than where they were initially filed.

5. Dynamic and Static jurisdiction should be explicitly mentioned: Recognize through

statutory amendment that while the primary purpose of abolishing IPAB was administrative efficiency, the transfer to High Courts creates an opportunity to enhance access to justice through broader jurisdictional access. For which explicitly codify both dynamic and static interpretive approaches within the Act, acknowledging that trademark rights create effects both at registration sites and wherever commercial activities occur. Incorporate language explicitly stating: The effect of trademark registration shall be considered both at the place of registration (static effect) and at all places where the trademark produces commercial impact (dynamic effect). Legislative clarity would provide certainty to litigants and courts alike, reducing the need for case-by-case determinations of jurisdictional questions.