IMPORTANT POINT
The Court has the inherent power to transfer rectification proceedings and consolidate trademark infringement and rectification proceedings for an effective resolution of disputes.

JUDGMENT :

1. The issue that arises for consideration in this application is whether this Court is having the territorial jurisdiction to transfer to itself by way of consolidation the Rectification Petition filed by the applicants/plaintiffs under Section 57 of the Trade Marks Act, pending before the Trademarks Registry at New Delhi.

2. The following facts are un-disputed:

a) The applicants/plaintiffs have obtained trademark registration for their trademark "NIPPON PAINT" only from the Trademarks Registry at Chennai;

b) The applicants/plaintiffs have pleaded in the plaint that their trademark has been infringed by the respondents/defendants at Chennai and the respondents/defendants are selling the infringed products at Chennai;

c) Both the applicants/plaintiffs and the respondents/defendants have obtained trademark registration for their respective marks.

d) The applicants/plaintiffs have obtained their trademark registration from the Trademarks Registry at Chennai, whereas the respondents/defendants have obtained the trademark registration for their trademark from the Trademarks Registry at New Delhi. The applicants/plaintiffs, prior to the filing of the suit, on coming to know that the respondents/defendants have copied their trademark and obtained trademark registration, have filed an application before the Trademarks Registry at New Delhi, seeking for rectification of the respondents'/defendants' trademark. The said application is still pending on the file of the Trademarks Registry, New Delhi. Till date no application has been filed by the respondents/defendants seeking for rectification of the applicants'/plaintiffs' registered trademark either before this Court or before the trademark registry.

3. The applicants/plaintiffs have filed this infringement suit on 09.01.2024 and immediately, thereafter they have filed this application seeking to transfer the Rectification Petition filed by them before the Trademarks Registry, New Delhi, to the file of this Court.

4. The respondents/defendants have opposed this application by questioning its maintainability on the ground that this Court does not have territorial jurisdiction over the Trademarks Registry at New Delhi.

5. The applicants/plaintiffs contends the following:

a) This Court is empowered to consolidate all proceedings and hear the same together as per Rule 14 of the Madras High Court Intellectual Property Rights Division Rules, 2022;

b) As part of cause of action has arisen within the jurisdiction of this Court, the respondents/defendants being the infringers cannot take the plea of forum non-conveniens, especially when they are advertising their goods within the territorial limits of this Court;

c) There is no express statutory bar for this Court to hear the rectification proceedings pending on the file of the Trademarks Registry, New Delhi and the present infringement suit together.

d) Since the dynamic effect of the impugned registration pending on the file of the Trademarks Registry, New Delhi is felt within the jurisdiction of this Court, there is no prohibition for this Court to entertain and allow this transfer application.

6. In support of the aforesaid contentions, Mr.P.S.Raman, learned Senior Counsel appearing for the applicants/plaintiffs drew the attention of this Court to the following authorities:

a) The order dated 11.12.2023 passed by this Court in W.P. (IPD)/30/2023 in Asia Match Co. Pvt. Ltd. vs. Deputy Registrar of Trademarks and G.I. and another;

b) Jumeirah Beach Resort LLC vs. Designarch Infrastructure Pvt. Ltd. and another reported in MANU/DEOR/194894/2022;

c) University Health Network vs. Adiuvo Diagnostics Pvt. Ltd. and others reported in 2024 SCC Online Mad 185;

d) Dr.Reddy's Laboratories Ltd. vs. Fast Cure Pharma and others reported in 2023 SCC Online Del 5409.

7. On the other hand, the learned counsel for the respondents/defendants would question the maintainability of this transfer petition on the following grounds:

a) Since the Rectification Petition fil