Kerala High Court Clarifies Jurisdiction and Procedure for Trademark Rectification Amidst Infringement Suits

In a significant ruling that reinforces procedural discipline in trademark litigation, the Kerala High Court has dismissed a petition seeking the cancellation of the 'INDIA GATE' trademark, holding that it lacked the territorial jurisdiction to entertain the plea and that the petition was premature.

The decision, delivered by Justice M.A. Abdul Hakhim in Pas Agro Foods v. KRBL Limited and Ors. , provides crucial clarity on two fundamental aspects of trademark law: the appropriate forum for filing a rectification petition under Section 57 of the Trade Marks Act, 1999, and the mandatory procedural prerequisites under Section 124 when an infringement suit is already pending. The judgment effectively curbs the practice of forum shopping and prevents the use of rectification petitions as a dilatory tactic in infringement proceedings.

Background of the Dispute

The case originated from an intellectual property dispute between Pas Agro Foods (the petitioner) and KRBL Limited (the respondent), the owner of the well-known 'INDIA GATE' trademark for basmati rice. KRBL Limited had initiated a suit for trademark infringement against Pas Agro Foods before the District Court in Delhi. On January 21, 2025, the Delhi court granted KRBL Limited a temporary injunction, restraining the petitioner from using the allegedly infringing mark, and appointed an Advocate Commissioner to seize the infringing materials.

Following this enforcement action, Pas Agro Foods filed a Special Jurisdiction Case (SPJC) before the Kerala High Court. The petition sought the rectification and cancellation of KRBL Limited's registered trademark 'INDIA GATE' under Section 57 of the Trade Marks Act. Concurrently, the petitioner filed an application in the pending Delhi suit, requesting a stay of proceedings until the Kerala High Court decided on the rectification petition.

The Jurisdictional Conundrum: Where to File?

KRBL Limited immediately challenged the maintainability of the petition in Kerala on two primary grounds: lack of territorial jurisdiction and prematurity.

The core jurisdictional question was whether the Kerala High Court could hear a rectification petition for a trademark registered at the Delhi Trade Marks Registry. The respondent argued that jurisdiction for such matters lies exclusively with the High Court that exercises appellate jurisdiction over the specific Trade Marks Registry where the mark was originally registered.

The petitioner countered this by asserting that since a part of the cause of action—specifically, the seizure of goods by the Advocate Commissioner—arose within Kerala, the High Court had the authority to entertain the case. They further contended that Section 57 of the Act does not explicitly limit jurisdiction to the High Court overseeing the relevant registry.

Justice Hakhim, after a thorough review of precedents, sided firmly with the respondent. The Court placed significant reliance on the Madras High Court's decision in M/s. Woltop India Pvt. Ltd. v. Union of India and Others , endorsing it as the correct interpretation of the law. The judgment emphasized that the legislative intent behind the Trade Marks Act is to consolidate rectification proceedings in a single, predictable forum to avoid conflicting decisions and judicial chaos.

In a pivotal observation, the Court stated:

“The scheme of the Act is to consolidate all the Rectification Petitions in one Forum, whether it be the Registrar or the High Court. The conferment of jurisdiction on a High Court on the basis of the 'dynamic effect' of registration within its jurisdiction is against the scheme of the Act, and it would lead to utter chaos in the matter of adjudication."

The Court unequivocally held that the 'cause of action' principle, which applies to civil suits, is not applicable to statutory rectification petitions. Instead, the determinative factor is the location of the Trade Marks Registry where the mark is registered. Since the 'INDIA GATE' mark was registered in Delhi, the Court concluded that only the Delhi High Court possessed the requisite jurisdiction.

The Procedural Hurdle: Prematurity under Section 124

Beyond the jurisdictional issue, the Court meticulously analyzed the respondent's second argument: that the rectification petition was premature. This part of the ruling delves into the intricate relationship between an infringement suit and a subsequent challenge to the trademark's validity, governed by Section 124 of the Act.

Section 124 outlines a clear, sequential procedure for instances where a defendant in an infringement suit wishes to challenge the validity of the plaintiff's registered trademark. The Court explained that a party cannot unilaterally file a rectification petition while the infringement suit is ongoing. The prescribed steps are:

• Plead Invalidity: The defendant must first raise a plea of invalidity of the trademark in their written statement before the civil court hearing the infringement suit.
• Prima Facie Tenability: The defendant must then satisfy the civil court that this plea is prima facie tenable. It is not enough to simply allege invalidity.
• Framing of Issue: If the court is satisfied, it must frame a specific issue regarding the validity of the trademark.
• Adjournment: Only after framing the issue will the court adjourn the suit for a period of three months to allow the defendant to file a rectification petition before the competent High Court.

In this case, Pas Agro Foods had bypassed this entire statutory sequence. They filed the rectification petition in the Kerala High Court without first having the Delhi District Court frame an issue on the trademark's invalidity.

Referencing the landmark Supreme Court decision in Patel Field Marshal Agencies and Another v. P. M. Diesels Ltd. and Others , Justice Hakhim reiterated that while civil courts cannot adjudicate on the validity of a trademark, they act as a crucial gatekeeper. The statutory authority (the High Court) can only exercise its jurisdiction to hear a rectification plea if the civil court first finds a prima facie case of invalidity.

The Court powerfully articulated the rationale behind this procedural safeguard:

“The requirement of satisfaction of the civil Court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect...is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit.”

By failing to follow this mandatory procedure, the petitioner's SPJC was deemed not maintainable. The Court held that the rectification petition could not be filed under Section 57 without first securing a finding of prima facie tenability and the framing of an issue by the Delhi court where the infringement suit was pending.

Conclusion and Implications for Legal Practitioners

The Kerala High Court's dismissal of the petition serves as a vital precedent and a practical guide for intellectual property litigators. It clarifies two critical points:

• Jurisdiction is Tied to the Registry: The choice of forum for a trademark rectification petition is not flexible. It is determined by the location of the Trade Marks Registry of registration, not where the effects of infringement are felt. This reinforces the jurisdictional discipline intended by the statute and prevents litigants from dragging trademark owners into courts across the country.

• Section 124 is a Mandatory Gateway, Not an Option: When an infringement suit is pending, a defendant cannot circumvent the trial court to challenge a mark's validity directly before a High Court. The process of pleading invalidity and obtaining a prima facie finding from the trial court is an indispensable prerequisite. This prevents defendants from using rectification as a tool to derail infringement proceedings with frivolous claims.

This judgment underscores the judiciary's commitment to upholding the structured procedural framework of the Trade Marks Act, ensuring that challenges to registered trademarks are brought in the correct forum and only after meeting a preliminary threshold of merit.