The Jurisdiction Battle in Trademark Rectification: How Two Delhi High Court Rulings Exposed a Post-IPAB Fault Line

 

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.