Jurisdiction for trade mark cancellation petitions lies with the High Court where the mark is registered, requiring prior framing of invalidity issues in related suits.

JUDGMENT :

M.A.ABDUL HAKHIM, J.

1. This Special Jurisdiction Case is filed under Section 57 read with Sections 124 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) and Section 50 of the Copyright Act, 1957 , by a firm formed and having business operations in Kerala to cancel the trade mark registration ‘INDIA GATE’ owned by the Respondent No.1, a limited company incorporated in New Delhi. The Respondent No.1 acquired the statutory rights of the trade mark ‘INDIA GATE’ through a Deed of Assignment dated 06.08.2019, assigned by one Mr. Ram Pratap, who obtained the trade mark registration for ‘INDIA GATE’ from the Trade Marks Registry, New Delhi, on 18.06.1993.

2. The Respondent No.1 challenged the maintainability of the case by filing I.A. No.2 of 2025, and accordingly, the maintainability of the case was heard by me as a preliminary issue.

3. The Respondent No.1 raised two grounds in support of its challenge against the maintainability of the case:–

I. Lack of territorial jurisdiction.

II. The case is premature.

4. I heard the learned Counsel for Petitioner, Smt. Uma Devi M., and the learned Counsel for the Respondent No.1, Sri. Praveen K. Joy with Sri. Shravan Kumar Bansal on the maintainability issue.

5. I may narrate brief facts of the case for better understanding of the contentions of the parties: The Respondent No.1 filed C.S.(Comm) No.78/2025 under Section 134 of the Act against the petitioner and another for infringement of registered trade mark before the District Court (Commercial) at Tis Hazari Courts (Central), New Delhi, on 14.01.2025. The District Court, as per the Order dated 21.01.2025, granted temporary injunction against the use of the trade mark by the defendants therein and appointed an Advocate Commissioner to take into custody the infringing goods and other incriminating materials like stationery, packing materials, etc., with police assistance. The Advocate Commissioner visited the business premises of the Petitioner with police assistance on 27.01.2025 and took into custody all the materials connected with the name ‘INDIA GATE’ from there. The Petitioner filed this Case on 07.02.2025. Thereafter, the Petitioner filed an Application in C.S.(Comm) No.78/2025 seeking stay of the said suit pending final disposal of this case in this Court, and the said Application is pending consideration before the District Court, New Delhi.

6. Let me consider the grounds raised by the Respondent No.1 in support of its challenge against the maintainability of the case.

I. LACK OF TERRITORIAL JURISDICTION:

7. The contention of the learned Counsel for the Respondent No.1 is that the Rectification Petition under Section 57 of the Act is to be filed before the High Court, which is exercising appellate jurisdiction over the Trade Marks Registry where the trade mark was originally registered. Since the registration of the trade mark ‘INDIA GATE’ of the Respondent No.1 is granted by the Trade Marks Registry, New Delhi, the Delhi High Court alone has the jurisdiction to entertain the Petition for rectification or cancellation of the registered trade mark. The Learned Counsel relied on the decision of the Delhi High Court in The Hershey Company v. Dilip Kumar Bacha [MANU/DE/0904/2024] and the decision of the Madras High Court in M/s. Woltop India Pvt. Ltd. v. Union of India and Others [W.P.(IPD) Nos.30 & 32 of 2024] in support of his contention.

8. The contention of the learned Counsel for the Petitioner is that a Rectification Petition under Section 57 of the Act can be filed in this Court, as part of the cause of action has arisen within the jurisdiction of this Court. The Petitio