Supreme Court Refers to Larger Bench the Question of Jurisdiction of Civil Judges in Trade Mark Suits Under the Commercial Courts Act

The Supreme Court, in I.S.D.S. Private Limited & Anr. v. M/s Khemka Food Products Pvt. Ltd. & Anr., referred to a Larger Bench the question of whether a notification under the Commercial Courts Act, 2015, empowering a Civil Judge (Senior Division) to function as a Commercial Court, can override the restriction under Section 134 of the Trade Marks Act, 1999, which requires specified trade mark suits to be instituted before a court not inferior to a District Court. The Court observed that intellectual property disputes constitute a category of commercial disputes, whereas the Trade Marks Act specifically prescribes the level of court competent to entertain such proceedings. Finding that the apparent conflict in judicial precedents required authoritative resolution, the Court directed that the matter be placed before the Chief Justice of India for appropriate orders.

Facts of the Case

The appeal arose from proceedings concerning the appropriate forum for instituting a commercial suit involving rights under the Trade Marks Act, 1999. The dispute raised a question regarding the effect of notifications issued under the Commercial Courts Act, 2015, constituting Civil Judges (Senior Division) as Commercial Courts.

The appellants contended that Section 134 of the Trade Marks Act specifically restricts the institution of suits seeking the reliefs covered by that provision before courts inferior to a District Court. According to them, permitting a Civil Judge (Senior Division) to exercise jurisdiction merely because the court had been notified as a Commercial Court would dilute the statutory restriction and affect the appellate remedy available to litigants.

The respondents, on the other hand, relied on the overriding effect of Section 21 of the Commercial Courts Act and argued that the later enactment, which was specifically intended to facilitate the speedy adjudication of commercial disputes, would prevail in the event of inconsistency with the earlier legislation.

Issue before the Court

The principal issue before the Supreme Court was whether the restriction under Section 134 of the Trade Marks Act, requiring specified suits to be instituted before a court not inferior to a District Court, is rendered ineffective by a notification under the Commercial Courts Act constituting a Civil Judge (Senior Division) as a Commercial Court.

Findings of the Court

The Court considered the competing submissions in light of the decisions in Kandla Export Corporation v. OCI Corporation, Fun N. Fud v. GLK Associates and Jaycee Housing Private Limited v. Registrar (General), Orissa High Court.

In Kandla Export Corporation, the Supreme Court had treated the Arbitration and Conciliation Act, 1996, as a self-contained special legislation in the context of the maintainability of appeals, holding that the Commercial Courts Act could not expand the categories of appeals permitted under the Arbitration Act. Conversely, in Jaycee Housing, the Court had held that the later-enacted Commercial Courts Act prevailed in relation to the jurisdiction prescribed under certain provisions of the Arbitration Act.

The Court observed that the Commercial Courts Act deals with the broader category of commercial disputes, expressly including intellectual property disputes under Section 2(1)(c)(xvii). Trade mark disputes, therefore, constitute one category within the larger class of commercial disputes. The Court distinguished these from arbitration, which is governed by a specialised statutory framework regulating the procedure for arbitration-related proceedings.

The Court further observed that Section 21 of the Commercial Courts Act gives the legislation overriding effect only where an inconsistency exists with another law. According to the Court, Section 134 of the Trade Marks Act, which restricts the institution of specified suits before courts inferior to a District Judge, is not inconsistent with the Commercial Courts Act insofar as the latter permits the constitution of Commercial Courts at the District Judge level.

The difficulty arises where a notification designates a Civil Judge (Senior Division) as a Commercial Court. Such a notification may permit a court inferior to a District Court to entertain a trade mark suit, thereby raising a conflict between the two statutory frameworks. The Court also highlighted the anomaly that could arise where the pecuniary value of a suit determines whether it is instituted before a Civil Judge (Senior Division) or a District Court, notwithstanding the restriction under Section 134.

Held

The Supreme Court held that the apparent conflict between the decisions in Kandla Export Corporation and Jaycee Housing required resolution by a Larger Bench to ensure uniformity in the law governing the jurisdiction of Commercial Courts across States. The matter was directed to be placed before the Chief Justice of India for appropriate orders. The Commercial Suit No. 11 of 2023 pending before the Civil Judge (Senior Division)-I, Jamshedpur, was stayed.

Conclusion

The decision raises an important question concerning the interplay between the Trade Marks Act, 1999, and the Commercial Courts Act, 2015, particularly regarding the designation of courts below the District Judge level as Commercial Courts. The Larger Bench’s determination is expected to clarify whether State notifications can confer jurisdiction over specified intellectual property suits on Civil Judges (Senior Division), ensuring greater consistency in the institution and adjudication of trade mark disputes across India.

Last Updated on 16 October, 2026