Hershey Company vs. Dilip Kumar Bacha and others: The question of jurisdiction concerning rectification and cancellation petitions under S. 57 of TMA

The Delhi High Court recently addressed a pivotal issue in trademark law: the jurisdictional reach of High Courts in handling rectification and cancellation petitions under the Trade Marks Act, 1999. In The Hershey Company v. Dilip Kumar Bacha, the Court examined whether such petitions should be confined to the High Court corresponding to the Trade Mark Registry offices where the registrations were granted or if they could extend to other High Courts where the effects of these registrations are felt. This article explores the arguments, judicial interpretations, and implications of the Court’s decision, which aims to clarify the jurisdictional framework and adapt it to the realities of modern commerce.

Hershey Company vs. Dilip Kumar Bacha and others: The question of jurisdiction concerning rectification and cancellation petitions under S. 57 of TMA

Introduction:

In 2024, the Delhi High Court tackled a significant legal question concerning the jurisdictional boundaries of High Courts in rectification and cancellation petitions under the Trade Marks Act, 1999. The Hershey Company v. Dilip Kumar Bacha Trading as Shree Ganesh Namkeen & Anr brought this issue to the forefront, prompting a larger bench to consider whether such petitions should be strictly confined to High Courts within the jurisdiction of the Trade Mark Registry offices that granted the registrations, or whether they could extend to other High Courts where the registrations’ effects are felt. This case arose from a referral by Justice Prathiba M. Singh, who questioned previous interpretations and called for a unified approach, highlighting the broader implications for trademark jurisprudence in India.

 

Legal Framework and Judicial Inquiry:

The core of the judicial examination centred on interpreting the Trade Marks Act, 1999, in the context of amendments introduced by the Tribunal Reforms Act, 2021. The primary questions referred to the larger bench included:

  1. Relevance of Girdhari Lal Gupta Precedent: Whether the decision in Girdhari Lal Gupta v. K Gian Chand Jain under the Designs Act, 1911, remains applicable to the Trade Marks Act, 1999, particularly after the amendments brought by the Tribunal Reforms Act, 2021, in determining the jurisdiction of a High Court under Section 57.
  2. Jurisdiction of High Courts under Section 57: Whether the High Court's jurisdiction should be determined by the location of the ‘appropriate office’ of the Trade Mark Registry that granted the impugned trademark registration or if it should extend to High Courts where the adverse effects of such registrations are perceptible.
  3. Interpretation of ‘the High Court’ in Trademark Law: The bench also needed to interpret the expression ‘the High Court’ as used in Sections 47, 57, and 91 of the Trade Marks Act, 1999, and whether a consistent understanding across these sections is achievable.

The case necessitated an in-depth review of legislative intent, statutory frameworks, and principles governing jurisdiction in intellectual property disputes. Senior Advocate Gaurav Pachnanda served as amicus curiae, guiding the court through these intricate legal questions. The bench also addressed the divergent interpretations from previous cases, notably the conflicting views of Justices Prathiba M. Singh and C. Hari Shankar, which underscored the need for a definitive stance on the jurisdictional scope under the Trade Marks Act.

Arguments and Deliberations:

The petitioners, led by The Hershey Company, argued for a broader interpretation of jurisdiction, advocating that rectification petitions should not be restricted to the High Courts corresponding to the Trade Mark Registry offices that granted the registrations. Instead, they proposed that petitions be permissible in any High Court where the adverse impacts of the trademark registration are experienced, thereby acknowledging the national implications of such registrations.

Conversely, the respondents, represented by Dilip Kumar Bacha Trading as Shree Ganesh Namkeen, supported a narrower view, favouring the traditional approach that limits jurisdiction to the geographical confines of the Trade Mark Registry offices that issued the registrations. This restrictive interpretation, they argued, preserves the consistency and predictability of judicial processes in trademark disputes.

Judicial Analysis and Interpretation:

The Delhi High Court scrutinized the applicability of the precedent set by Girdhari Lal Gupta under the Designs Act, 1911, to the Trade Marks Act, 1999, especially considering the changes brought by the Tribunal Reforms Act, 2021. The bench debated whether the jurisdiction of ‘the High Court’ in trademark disputes should be strictly linked to the office of the Trade Mark Registry or could extend to broader contexts where the trademark’s effects are felt.

Acting Chief Justice Manmohan and the accompanying justices explored whether the legislative intent of the Trade Marks Act, 1999, sought to centralize jurisdiction within specific High Courts or aimed to provide broader access to justice for affected parties across multiple jurisdictions. The court carefully considered whether the ‘dynamic effects’ of a trademark registration—its impact beyond the physical location of the registry office—should influence the jurisdictional reach.

Verdict and Implications:

The Delhi High Court’s ruling carefully balanced the interests of trademark owners, public interest, and the need for judicial efficiency. The Court’s decision, rooted in the provisions of the Trade Marks Act, 1999, and the Tribunal Reforms Act, 2021, reflected a nuanced understanding of the complexities inherent in trademark law. The ruling sought to streamline the rectification and cancellation processes, ensuring that the rights of trademark owners and the public interest are adequately safeguarded while aligning the jurisdictional rules with contemporary commercial realities.

The judgment clarified that while adhering to legislative intent is paramount, the judiciary must also adapt to the evolving commercial landscape, where trademarks transcend local boundaries and influence markets nationwide. This approach ensures that affected parties have access to judicial remedies in jurisdictions that experience the trademark's impact, promoting fairness and access to justice.

 

Conclusion: Reflecting on the Path Forward

The Delhi High Court’s examination in The Hershey Company v. Dilip Kumar Bacha Trading as Shree Ganesh Namkeen & Anr marks a significant turning point in Indian trademark law. By addressing jurisdictional ambiguities, the ruling provides much-needed clarity for legal practitioners and businesses, ensuring that rectification and cancellation petitions can be filed in relevant jurisdictions that experience the impact of trademark registrations.

This judgment underscores the judiciary’s role in interpreting statutory provisions in a manner that aligns with legislative intent while adapting to the demands of modern commerce. It establishes a precedent for handling similar jurisdictional issues, promoting consistency, predictability, and efficiency in trademark disputes.

For the legal community and businesses alike, the Delhi High Court’s ruling serves as a critical reference, guiding the approach to jurisdiction in trademark cases and setting the stage for future legal strategies and interpretations in the realm of intellectual property rights in India. As this landmark decision is implemented, its effects will resonate throughout the landscape of trademark litigation, enhancing the robustness of India’s legal framework in protecting and managing intellectual property