Delhi High Court Deliberates Jurisdictional Boundaries: The Hershey Company v. Dilip Kumar Bacha Case

Introduction:

In a significant legal development, the Delhi High Court is set to delve into the question of jurisdiction concerning rectification and cancellation petitions under the Trade Marks Act, 1999. The case, titled The Hershey Company v. Dilip Kumar Bacha, trading as Shree Ganesh Namkeen & Anr, along with connected matters, has brought forth a substantial question regarding the ambit of jurisdiction for such petitions. The case revolves around the interpretation of whether cancellation petitions under the Trademarks Act should exclusively fall within the purview of the High Court where the offices of the pertinent Trade Mark Registry are located or extend to High Courts where the ramifications of the registration are felt by the petitioner. This issue has prompted a referral by a single-judge to a larger bench, signalling the need for comprehensive deliberation and clarification on this matter of jurisdictional significance.

Petitioner’s contention:

The case of Girdhari Lal Gupta v. K. Gian Chand Jain, which was rendered under the Designs Act, offers valuable insight into the determination of jurisdiction concerning matters of intellectual property. The precedent established in this case asserts that the jurisdiction of the court is contingent upon the connection between the subject matter or cause of action and the territory falling within the local jurisdiction of the respective High Court.

Drawing from the principles enunciated in Girdhari Lal Gupta, the current dispute regarding the jurisdiction to entertain rectification petitions under Section 57 of the Trade Marks Act, 1999 presents a challenge. As per the petitioners’ contention, the jurisdiction for such petitions could plausibly rest with all High Courts where the dynamic impact of the impugned registration is perceptible, or alternatively, it could be confined to any of the five High Courts where the Appropriate Office of the Trade Marks Registry is situated.

Respondent’s contention:

The assertion of the Respondents is that the decision of the Full Bench in Girdhari Lal Gupta, which interprets the Designs Act, 1911, should not serve as a benchmark for determining jurisdiction under the Trade Marks Act, 1999. The contention is rooted in the premise that the interpretation rendered in Girdhari Lal Gupta did not originally account for the establishment or dissolution of the Intellectual Property Appellate Board (IPAB). Furthermore, the absence of a defined ‘High Court’ in the Tribunal Reforms Act (TRA) is attributed to an accidental oversight rather than a deliberate omission by the legislature.

It is argued by the Respondents that there was no legislative intent to deviate from the prevailing principle under the 1958 Act and the subsequent Trade Marks Act of 1999, even during the IPAB’s operational period. Consequently, in light of this oversight, the court is urged to interpret the provisions of the Trade Marks Act, 1999 in their current form harmoniously, considering the context and purpose of the statute to ensure its continued relevance and effectiveness.

Judgment:

Given the gravity and implications of the matter, particularly the crucial inquiry into the applicability of the precedent set by Girdhari Lal Gupta in the context of the amended Trade Marks Act of 1999, the Court elevated the consideration of these issues to a larger Bench. The precedent set by Girdhari Lal Gupta, established by a Full Bench holds considerable weight and influence in legal interpretation. However, given the transformative amendments introduced by the Tribunal Reforms Act, it is essential to reassess the applicability of such precedents within the evolved statutory framework.

3 issues before the larger bench:

The impending examination before the Delhi High Court involves 3 pivotal questions:

1. Firstly, the inquiry into whether the precedent set forth in Girdhari Lal Gupta v. K. Gian Chand Jain under the Designs Act, 1911, retains relevance within the framework of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, is of paramount importance.  
2. Secondly, the determination of the jurisdiction of the High Court under Section 57 of the Trade Marks Act, 1999 raises significant deliberations regarding whether it should hinge solely upon the location of the Trade Mark Registry that granted the impugned trademark registration.
3. Lastly, interpretation of the expression ‘the High Court’ within Sections 47, 57, and 91 of the Trade Marks Act, 1999 can be construed differently underscores the necessity for coherence and consistency within legislative interpretation.

Conclusion:

The impending examination by the Delhi High Court holds the promise of providing clarity and guidance on a matter pivotal to the realm of trademark law and judicial jurisdiction. Therefore, recognizing the need for comprehensive examination and clarity on these significant legal questions, the decision to refer these matters to a larger Bench is deemed necessary to ensure thorough deliberation and informed adjudication.