PAS AGRO Foods VS KRBL Limited & ORS

Facts:

In this Case, PAS Agro Foods, a partnership firm from Kerala, filed a case before the Kerala High Court under Section 57 (Rectification of Petition)  of the Trade Marks Act, 1999, asking for the cancellation of the trademark “INDIA GATE” owned by KRBL Limited, a company based in Delhi. KRBL had obtained ownership of the “INDIA GATE” trademark through an assignment deed in 2019.

Earlier, KRBL had filed a trademark infringement suit before the Commercial Court at Tis Hazari, Delhi, against PAS Agro for using the mark without authorization. The Delhi Court granted an interim injunction and appointed an Advocate Commissioner to seize goods and materials bearing the disputed mark from PAS Agro’s business premises in Kerala.

Following this, PAS Agro approached the Kerala High Court seeking cancellation of the “INDIA GATE” trademark registration in KRBL’s name.

Issues:

1. Whether the Kerala High Court had jurisdiction to entertain a rectification petition under Section 57 of the Trade Marks Act when the trademark was registered at the Delhi Trade Marks Registry.
2. Whether the rectification petition was premature since the District Court, Delhi, had not yet framed an issue regarding the validity of KRBL’s registration under Section 124(1)(ii) of the Act.

Judgment:

In this Present Case, The High Court of Kerala, dismissed PAS Agro’s petition as not maintainable. The Court held that it did not have territorial jurisdiction to hear the case since the “INDIA GATE” trademark was registered at the Delhi Trade Marks Registry. Therefore, only the Delhi High Court had the power to hear a rectification petition related to that registration.

The Court also observed that the petition was filed prematurely. Since the infringement suit was already pending before the Delhi Court, PAS Agro could file a rectification petition only after the Delhi Court had framed an issue on the validity of the trademark under Section 124(1)(ii) of the Trade Marks Act. As no such issue had been framed, the rectification petition was not maintainable.

Key Findings:

The Court emphasized that the appropriate High Court for a rectification petition is the one exercising appellate jurisdiction over the Trade Marks Registry where the registration was made. It rejected the argument advanced by the petitioner that the Kerala High Court had jurisdiction merely because part of the cause of action, such as seizure of goods occurred within Kerala. The Court expressly disagreed with the “dynamic effect” doctrine, which had been recognized by certain Delhi and Madras High Court judgments, holding that jurisdiction cannot be based on where the commercial impact of a trademark is felt. Instead, the Court aligned itself with the reasoning in M/s Woltop India Pvt. Ltd. v. Union of India (2024), cautioning that allowing multiple High Courts to entertain rectification petitions based on dynamic effect could lead to jurisdictional chaos and conflicting decisions.

On the issue of prematurity, the Court relied on the Supreme Court’s landmark ruling in Patel Field Marshal Agencies v. P.M. Diesels Ltd. [(2018) 2 SCC 112], which held that when an infringement suit is pending, the question of validity of registration must first be raised before the trial court. The trial court must then determine whether the plea is prima facie tenable and, only upon such satisfaction, can a party apply to the High Court for rectification. The Kerala High Court reaffirmed that this procedural safeguard prevents abuse of process and ensures that invalidity claims are scrutinized at the appropriate stage.

Significance:

This judgment is a significant reaffirmation of the territorial limits and procedural discipline governing rectification petitions under the Trade Marks Act, 1999. The Court’s reasoning highlights that rectification jurisdiction is strictly registry-based, confined to the High Court exercising appellate authority over the relevant Trade Marks Office. By rejecting the “dynamic effect” principle, the Court has promoted uniformity, consistency, and certainty in rectification proceedings post-abolition of the IPAB under the Tribunals Reforms Act, 2021.

The decision also reinforces the mandatory procedural sequence under Section 124, emphasizing that a rectification petition cannot be filed independently once an infringement suit is pending, unless the trial court has framed an issue on validity. This ruling provides valuable clarity for IP practitioners and businesses engaged in cross-jurisdictional trademark disputes, ensuring that procedural compliance and forum selection remain central to maintaining the integrity of trademark litigation in India.