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2024 Supreme(Mad) 1948
IN THE HIGH COURT OF JUDICATUE AT MADRAS
ABDUL QUDDHOSE, J.
M/s. Roots Industries India Pvt. Ltd., Coimbatore - Appellant
Versus
The Registrar of Trademarks, Mumbai and Anr. – Respondents
C.M.A.(TM) No.8 of 2024
Decided On : 28-11-2024
For the Appellant : Mr. G.K. Muthukumaran.
For the Respondents: Mr. S. Janarthanam, SPCGSC, Mr. S. Diwakar.
Jurisdiction for trademark appeals is determined by the location of the Trademark Registry, not the appellant's office location.
Headnote:(A) Trade Marks Act, 1999 - Section 91 - Limitation Act, 1963 - Section 14 - Appeal against dismissal of opposition petition for trademark registration - Jurisdiction of the court to entertain appeal is questioned - Court finds it lacks territorial jurisdiction as the impugned order was passed by the Mumbai Trademark Registry - Appellant inadvertently approached wrong court - Appeal dismissed but time spent in this court excluded for limitation purposes. (Paras 6, 9)
(B) Jurisdiction - Territorial jurisdiction is essential for the court to entertain an appeal - The appeal must be filed in the court having jurisdiction over the location of the trademark registry where the application was filed. (Paras 6, 7)
Facts of the case:
The appellant filed an appeal against the dismissal of an opposition petition concerning the trademark 'NAVEO' in Class 11, which was registered by the second respondent. The opposition was dismissed by the Mumbai Trademark Registry, leading to this appeal.
Findings of Court:
The court concluded that it lacks territorial jurisdiction to entertain the appeal as the order was passed by the Mumbai Trademark Registry. The appellant is permitted to approach the Bombay High Court for relief.
Issues: The main issue was whether this court had the jurisdiction to entertain the appeal against the order of the Mumbai Trademark Registry.
Ratio Decidendi: The court ruled that jurisdiction is determined by the location of the trademark registry, and since the order was made in Mumbai, the appeal must be filed in the Bombay High Court.
Result: Appeal dismissed.
Key Points: - The court held that territorial jurisdiction is determined by the location of the Trademark Registry; since the Mumbai Trademark Registry issued the impugned order, the Bombay High Court is the proper forum. (!) (!) - The appeal before the Madras High Court was dismissed for lack of territorial jurisdiction, but the time spent in that court may be excluded under Section 14 of the Limitation Act. (!) (!) - The appellant is allowed to approach the Bombay High Court for relief, and the registry was directed to return the impugned order to the appellant. No costs. (!) - The decision references applicable statutes and precedents regarding jurisdiction over appeals arising from Trademark Registry decisions and aligns with decisions in similar patent/trademark jurisdiction questions. (!) (!) (!)
What is the jurisdiction of a High Court to entertain an appeal under Section 91 of the Trade Marks Act, 1999 when the impugned order was issued by a Trademark Registry located in Mumbai?
What is the effect of Section 14 of the Limitation Act on time spent pursuing an appeal in a court lacking territorial jurisdiction, and whether such time should be excluded for limitation purposes?
What remedies are available to a party when the appropriate forum for challenging a Trademark Registry order is the High Court having territorial jurisdiction over the relevant registry?
JUDGMENT :
(Abdul Quddhose, J.)
(Prayer: This appeal is filed under Section 91 of the Trade Marks Act, 1999, read with Section 151 of CPC and Rule 7 read with Rule 11 of the Madras High Court Intellectual Property Rights Division Rules, 2022, seeking to set aside the impugned order dated 09.02.2024 passed by the first respondent in Opposition No.1167193 in respect of the Trademark Application No.4409145 in Class 11, and consequently direct the first respondent to proceed further with the said opposition proceedings in accordance with law and by serving the defect notice if any, upon the appellant for compliance and to proceed further with the opposition proceedings, with costs.)
This appeal has been filed challenging the order dated 09.02.2024 passed by the first respondent in the opposition petition filed by the appellant opposing grant of trademark registration in respect of the mark 'NAVEO' in favour of the second respondent under Class 11. Under the impugned order, opposition petition has been dismissed. Aggrieved by the same, this appeal has been filed.
2. A preliminary objection has been raised by the learned counsel for the contesting respondent stating that the present appeal is not for want of jurisdiction by this Court. He would submit that due to the following reasons, this appeal cannot be entertained by this Court:-
(a) The contesting respondent filed an application seeking for registration of the trademark only before the Trademark Registry at Mumbai.
(b) An opposition petition opposing grant of registration in favour of the contesting respondent was filed by the appellant only before the Trademark Registry at Mumbai.
(c) The impugned order rejecting the opposition petition filed by the appellant has also been passed by the Mumbai Trademark Registry.
3. In view of the aforesaid reasons, the learned counsel for the contesting respondent would submit that no part of cause of action has arisen at Chennai and therefore, this appeal cannot be entertained by this Court on account of lack of jurisdiction by this Court to entertain this appeal.
4. On the other hand, the learned counsel for the appellant would submit that since the opposition petition was sent through speed post from Coimbatore and the appellant is also having its office at Coimbatore, which is within jurisdiction, this Court is having the power to exercise its jurisdiction in this matter.
5. The learned counsel for the contesting respondent drew the attention of this Court to a decision of the Division Bench of this Court in the case of Bharat Bhogilal Patel Vs. Union of India [MANU/TN/1915/2014] and would submit that if the ratio laid down in the said decision is applied, this appeal cannot be entertained by this Court for want of jurisdiction. The said decision of this Court has also been followed by a learned Single Judge of the Delhi High Court in Dr.Reddys Laboratories Ltd. and another Vs. the Controller of Patents and others [C.O.(Comm.IPD-PAT) No.3 of 2021 & I.A.Nos.13644/2021 and 3420/2022, dated 10.11.2022], wherein it is observed that an appeal under Section 117 of the Patents Act, 1970, challenging the order of Patent Office would lie before High Court having territorial jurisdiction over the appropriate office from where the patent application originates.
6. Applying the aforesaid decisions, this Court is of the considered view that the High Court which has territorial jurisdiction in the case on hand is Bombay High Court, as the impugned order has been passed only by the Trademark Registry at Mumbai, as the trademark application seeking for grant of trademark registration was also applied by the contesting respondent only before the Trademark Registry at Mumbai. In view of the settled law, the present appeal cannot be entertained by this Court for lack of territorial jurisdiction.
7. The learned counsel for the appellant also drew the attention of this Court to a decision of the Hon'ble Supreme Court in the case of Purni Devi and another Vs. Babu Ram a
