Introduction
When the Tribunals
Reforms Act, 2021 abolished the Intellectual Property Appellate Board (IPAB),
it did more than shut down a specialised forum — it quietly reopened a question
the trademark statute had never clearly answered: which High Court can hear
a rectification or cancellation petition when the mark was registered somewhere
else entirely?
For decades, this
question had a settled, almost mechanical answer. Under the Trade and
Merchandise Marks Act, 1958, "High Court" was expressly defined by
reference to the Trade Marks Registry's territorial reach, and the IPAB later
organised its own benches around the same logic. But the Trade Marks Act, 1999
— the statute now in force — dropped that definition. For years, this omission
went unnoticed because the IPAB's own administrative structure papered over the
gap. Its abolition in 2021 removed that scaffolding, and the underlying
ambiguity surfaced almost immediately, generating conflicting arguments before
the Delhi High Court in case after case.
Two decisions of Delhi
High Court, delivered five months apart, capture the resulting fault line with
unusual clarity. In Dr. Reddy's Laboratories Ltd. v. Fast Cure Pharma
(September 2023), Justice C. Hari Shankar answered the question decisively,
laying down the "dynamic effect" doctrine as a basis for
territorial jurisdiction. In The Hershey Company v. Dilip Kumar Bacha
(February 2024), Justice Prathiba M. Singh — hearing five rectification
petitions together, with the assistance of an Amicus Curiae — arrived at the
opposite conclusion: that the question was too consequential to settle at the
level of a Single Judge, and referred it to a Larger Bench. Read together, the
two rulings are less a contradiction than a snapshot of a legal question still
being worked out in real time, and they offer a useful case study in how courts
reason through a statutory silence with nationwide consequences.
The Common Starting
Point: A Statute That Says Too Little
Both benches confronted
the same structural problem. Sections 47, 57 and 124 of the Trade Marks Act,
1999 all use the unadorned phrase "the High Court," without
specifying which one. The Act does not define "High Court" for this
purpose, unlike the Patents Act (Section 2(1)(i)) and the Designs Act (Section
2(e)), which do. In the absence of a statutory definition, courts must fall
back on Section 3(25) of the General Clauses Act, 1897 — a residual definition
that identifies what a High Court is, but says nothing about which
High Court should hear a particular matter arising anywhere in the country.
This gap matters because
rectification and cancellation proceedings are structurally different from
ordinary civil suits. A trademark registration is entered at one of five
regional offices of the Trade Marks Registry (Delhi, Mumbai, Kolkata, Chennai,
or Ahmedabad), and Rule 4 of the Trade Marks Rules, 2017 designates an
"Appropriate Office" for each mark. The respondents in both cases
argued that this administrative anchor should also fix the judicial one: if the
Registry office is in Mumbai or Kolkata, the corresponding High Court, they
said, should be the only court competent to rectify that entry. The petitioners
in both cases argued the reverse — that a registered trademark operates
nationally, causing commercial injury wherever it is used or enforced, and that
jurisdiction should follow that injury rather than a filing-room address.
Dr. Reddy's Laboratories:
The "Dynamic Effect" Doctrine
The Dr. Reddy's
dispute arose from two separate petitions heard together — one concerning the
mark RAZOFAST (registered in Kolkata, challenged by Dr. Reddy's proprietor of
RAZO), and the other concerning a mark registered in Ahmedabad and challenged
on non-use grounds. In both, the petitioner had no connection to the city where
the mark happened to be registered, yet sought relief in Delhi, where the
commercial consequences of the registration were actually being felt.
Justice Hari Shankar's
reasoning proceeded in careful, cumulative steps rather than resting on a
single dispositive point, and its persuasive force lies in that accumulation:
First,
on plain statutory language, the Court applied the interpretive maxim expressio
unius est exclusio alterius — the express mention of one thing excludes
another. Since Parliament did not name a specific High Court in Sections 47, 57
or 124, the Court declined to read in a restriction Parliament chose not to
write. The respondents' reliance on the Taylor v. Taylor line of
authority (that a statutory act done in a particular manner must be done only
in that manner) was held inapplicable precisely because the statute never
prescribed a particular manner to begin with.
Second,
on statutory scheme, the Court held that Section 124 does not create an
independent rectification remedy; it merely provides the procedural pathway by
which a Section 57 petition is filed once a validity challenge arises in an
infringement suit. Because Section 28(1) makes an infringement right contingent
on the validity of the underlying registration, the Court found it logical —
almost inevitable — that the same High Court hearing the infringement action
should also be competent to examine the registration's validity.
Third,
and most significantly, the Court revived and extended the "static effect
/ dynamic effect" distinction drawn by the Full Bench in Girdhari Lal
Gupta v. K. Gian Chand & Co., a design-law precedent. A registration
has a static effect — the mere entry in the Register, tied to the
Registry office. But it also has a dynamic effect — the ongoing commercial
and legal consequences the registration produces wherever the registered
proprietor competes in the market. The Court held that nothing confines this
reasoning to design law; a trademark registration, like a design registration,
confers an exclusive right capable of affecting competitors across India, and
the same jurisdictional logic should apply equally.
Fourth,
on legislative history, the Court rejected reliance on the Ayyangar Committee
Report, which had recommended confining rectification jurisdiction to the
Registry's own High Court. Parliament had that recommendation before it twice —
while enacting the 1958 Act and again while enacting the 1999 Act — and
declined to adopt it both times. A recommendation Parliament consciously chose
not to legislate, the Court held, cannot be smuggled back in through judicial
interpretation.
Fifth,
the Court drew a sharp distinction between administrative and judicial
jurisdiction: Rule 4 tells a litigant which Registry office should
process a paper application; it says nothing about which constitutional
court may adjudicate a challenge to that entry. Conflating the two, the
Court reasoned, would let a procedural rule silently override the territorial
jurisdiction of a High Court — something only Parliament, not a rule-making
body, could validly do.
On this reasoning, the
Court held both petitions maintainable in Delhi, since the petitioners were
suffering the legal and commercial consequences of the impugned registrations
within Delhi's territorial jurisdiction — even though the marks themselves had
been registered in Kolkata and Ahmedabad. The Court was careful to add a
limiting principle: this is not a licence for forum shopping. A petitioner must
still demonstrate a genuine territorial nexus — real, practical injury —
not a manufactured connection engineered purely to select a convenient forum.
Hershey v. Bacha:
Recognising the Fault Line, Not Resolving It
Five months later,
Justice Prathiba Singh confronted essentially the same question — but with the
added weight of five rectification petitions heard together, spanning marks
registered in different cities and litigants with no connection to Delhi beyond
the fact that Delhi was where they chose to sue. In the lead matter, Hershey (a
US company) sought cancellation of the mark "HARSHY," registered in
Mumbai, against a respondent based in Madhya Pradesh — with Delhi entering the
picture only as the forum of choice.
The Court, assisted by an
Amicus Curiae specifically because of the ruling's nationwide reach, surveyed
the same legislative history as Dr. Reddy's but drew a materially more
cautious conclusion at each stage:
- Under the 1958 Act, the position was
genuinely settled — jurisdiction followed the Registry.
- Under the IPAB regime, although the
1999 Act had already dropped the statutory definition of "High
Court," the same territorial certainty persisted in practice, simply
because IPAB benches were themselves organised around the Appropriate
Office.
- The Tribunals Reforms Act, 2021, on
its own terms, did nothing more than abolish the IPAB and redirect its
pending matters to High Courts — it contained no language expanding
territorial jurisdiction beyond what the IPAB itself had exercised.
- The comparison with the Patents Act
and Designs Act — both of which expressly define "High Court" —
cut, if anything, against reading an expansive jurisdiction into the Trade
Marks Act's silence, since Parliament clearly knew how to define the term
when it wished to.
Where Dr. Reddy's
treated the interpretive gaps as licence to extend jurisdiction on the strength
of commercial "dynamic effect," the Hershey bench treated the
same gaps — together with the practical stakes of certainty, forum shopping,
and conflicting parallel proceedings raised by the respondents and the Amicus —
as reasons for institutional caution. Rather than choose between these readings
itself, the Single Judge held that the conflict involved a substantial question
of law with consequences for trademark litigation across the country, and
referred it to a Larger Bench, framing three specific questions: whether Girdhari
Lal Gupta survives into the Section 57 context after the Tribunals Reforms
Act; whether jurisdiction depends on the Appropriate Office; and whether High
Courts other than the one supervising that office may still entertain such
petitions.
Reading the Two Judgments
Together
It would be a mistake to
treat Hershey as simply overruling or disagreeing with Dr. Reddy's
— a Single Judge bench cannot overrule a co-ordinate Single Judge bench, and Hershey
does not purport to. What it does is something narrower but equally important:
it records, on the record of a reasoned order, that the question is genuinely
contested and consequential enough to warrant an authoritative, binding answer
from a Larger Bench, rather than continuing to be decided (potentially
inconsistently) matter by matter.
Several threads are worth
drawing out for practitioners and rights holders tracking this space:
The doctrinal
disagreement is real, not cosmetic. Dr. Reddy's
reasons from the text outward — no express restriction in the statute means no
restriction should be read in — and treats commercial injury as a sufficient
territorial anchor. The respondents and Amicus in Hershey reason from
the system outward — Section 57 is a special statutory jurisdiction tied
to an administrative register, and reading it as freely portable risks exactly
the disorder (parallel proceedings, forum shopping, conflicting outcomes on the
same mark) that a unitary Register is meant to prevent. Both readings are textually
and doctrinally defensible; that is precisely why a Larger Bench reference was
appropriate.
The stakes go well beyond
these two disputes. A rights holder anywhere in India — or
abroad — currently faces genuine uncertainty about where to file a
rectification petition, and a respondent facing such a petition has a live
jurisdictional objection available to it, at least until the Larger Bench
rules. This uncertainty carries real litigation cost: petitions may need to be
filed defensively in multiple forums, and jurisdictional objections can consume
the early stages of proceedings that ought to be decided on their merits.
The "dynamic
effect" doctrine remains good law until displaced.
Because Dr. Reddy's was actually decided on this basis, and because Hershey
did not — and could not — overrule it, the dynamic-effect reasoning continues
to bind at least within its own facts and persuades other petitioners in the
interim, subject to whatever the Larger Bench eventually holds.
The eventual Larger Bench
ruling will likely turn on the same materials both benches already examined
— the deliberate non-adoption of the Ayyangar Committee's recommendation across
two separate enactments, the absence of an express definition of "High
Court" in the 1999 Act (in contrast to the Patents and Designs Acts), and
the practical consequences of either approach for litigants and for the
integrity of the Register. What the Larger Bench adds is the authority to
choose between two positions that a Single Judge, however carefully reasoned,
cannot conclusively resolve.
Conclusion
Together, Dr. Reddy's
Laboratories v. Fast Cure Pharma and The Hershey Company v. Dilip Kumar
Bacha illustrate how a single unresolved statutory phrase — "the High
Court" — can generate a genuine split in judicial reasoning within the
same High Court, on the same underlying question, within the space of a few
months. Dr. Reddy's offers a fully worked-out, text-and-precedent-driven
case for a liberal, commercial-injury-based reading of territorial
jurisdiction. Hershey offers an equally careful case for institutional
restraint, recognising that a question with nationwide ramifications for
trademark administration deserves a definitive answer rather than an
accumulation of persuasive but non-binding Single Judge rulings.
Until the Larger Bench
speaks, rights holders would be well advised to build a genuine, demonstrable
territorial nexus wherever they choose to litigate a rectification petition —
rather than relying on convenience alone — and to keep a close watch on the
Delhi High Court's docket for the reference that both judgments, in their own
ways, have made inevitable.
