Where can you file Trademark Rectification Petitions? The Delhi High Court refers the question to a Larger Bench.

The Delhi High Court was recently called upon to answer where a trademark rectification petition can be filed. Should it be filed within the jurisdiction of the trademark office that gave the registration, or can it be filed before any High Court? In Dr. Reddys Labs Vs. Fast Cure Pharma, a Single Judge of the same Court had earlier held that rectification petitions could be filed before any High Court. This decision was based on statutory interpretation, and the decision in Giridharilal case where the Division Bench of the Delhi High Court had held that design revocation petitions could be filed before any High Court. The same rule was earlier held to be applicable to patent revocation applications as well.

In this case, the Single Judge disagreed with the earlier decision of her colleague, and observed that Trademark Rectification petition filing must be limited to the jurisdiction of the High Court within which the trademark office that granted the registration was situated. While observing so, the Court differentiated the Patents and Designs Acts, and stated that Trademarks Act must be treated differently. The Judge also observed that the jurisdiction of the Registrar with respect to rectification petitions  and that of the High Courts to deal with the said petitions must stand on the same footing. Additionally, the Judge also stated that divergent jurisdiction based on dynamic effect principle would result in inconvenience and difficulties for businesses and registrants. As per the dynamic effect principle, any High Court where the effect of the trademark is felt would have jurisdiction.

In view of the significance of the issues raised in this case and other similar cases, the Court opined that the issues deserved to be considered by a larger Bench. Accordingly, the question on jurisdiction among others was remanded to the Acting Chief Justice, for constitution of an appropriate Bench that would decide on the questions raised.

Citation: The Hershey Company vs Dilip Kumar Bacha…, High Court of Delhi, 09th February, 2024, C.O. (COMM.IPD-TM) 179/2023


The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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