Kerala High Court Sets Jurisdictional Boundaries in Trademark Rectification Cases, Dismissing Plea Against 'India Gate' Mark

KOCHI, KERALA – In a significant ruling that reinforces jurisdictional discipline in intellectual property litigation, the Kerala High Court has dismissed a petition by Pas Agro Foods seeking the cancellation of the well-known 'India Gate' trademark, registered to rice giant KRBL Limited. The decision, delivered by Justice M.A. Abdul Hakhim, provides critical clarity on two procedural cornerstones of the Trade Marks Act, 1999: the territorial jurisdiction for rectification petitions and the mandatory procedural steps required when an infringement suit is already pending.

The court held unequivocally that a petition to cancel or rectify a trademark must be filed before the High Court that exercises appellate jurisdiction over the specific Trade Marks Registry where the mark was originally registered. Furthermore, it affirmed that such a petition is premature if filed during a pending infringement suit without the trial court first framing an issue on the prima facie tenability of the trademark's invalidity. The case, Pas Agro Foods v. KRBL Limited and Ors. , effectively bars litigants from forum shopping and using rectification petitions as a tactic to derail ongoing infringement proceedings.

Background of the Dispute

The legal battle commenced when Delhi-based KRBL Limited, the proprietor of the 'India Gate' trademark since 1993, filed a trademark infringement suit against Kerala-based Pas Agro Foods before the Commercial Court at Tis Hazari, New Delhi. KRBL alleged that Pas Agro was illicitly using the 'India Gate' name for its rice products.

In January 2025, the Delhi court granted KRBL a temporary injunction and appointed an Advocate Commissioner to seize infringing materials. This led to a police-assisted seizure at Pas Agro’s premises in Palakkad, Kerala. In response, Pas Agro filed a Special Jurisdiction Case (SPJC) before the Kerala High Court in February 2025, seeking the cancellation of KRBL’s 'India Gate' registration under Section 57 of the Trade Marks Act.

KRBL immediately challenged the maintainability of Pas Agro’s petition on two primary grounds: 1. Lack of Territorial Jurisdiction: Arguing that the Kerala High Court was the improper forum. 2. Prematurity: Contending the petition was filed without adhering to the procedure laid down in Section 124 of the Trade Marks Act.

The High Court chose to address these preliminary objections before delving into the merits of the trademark cancellation claim.

The Jurisdictional Conundrum: 'Dynamic Effect' vs. Situs of the Registry

The core of the jurisdictional argument revolved around the interpretation of "the High Court" in Section 57 of the Act. Pas Agro’s counsel argued that since the seizure of goods and the consequent business impact occurred in Kerala, a part of the cause of action arose within the court’s jurisdiction. They advocated for the "dynamic effect" principle, previously recognized by the Delhi High Court in Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma , which suggests a court can assume jurisdiction if the harmful effects of a trademark registration are felt within its territory.

KRBL’s counsel countered this by asserting that jurisdiction is tied to the location of the Trade Marks Registry where the mark is registered. Since the 'India Gate' mark was registered in Delhi, only the Delhi High Court, which has appellate jurisdiction over that registry, could hear the matter.

Justice Hakhim, after a detailed analysis, sided firmly with the latter interpretation, aligning the Kerala High Court with the view expressed by the Madras High Court in M/s. Woltop India Pvt. Ltd. v. Union of India . The court found that the legislative intent, particularly the use of the definite article "the High Court," points towards a specific, singular forum to avoid procedural chaos.

In his ruling, Justice Hakhim observed:

“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 concluded that allowing rectification petitions to be filed in any High Court where a registration's "dynamic effect" is felt would open the door to multiple, concurrent proceedings concerning the same trademark, potentially leading to conflicting judicial orders and paralysing the adjudication process. Therefore, the only appropriate forum was the Delhi High Court.

Prematurity and the Mandate of Section 124

The court then addressed KRBL’s second objection: that the rectification petition was premature. This issue turned on the procedural requirements of Section 124 of the Trade Marks Act, which governs the stay of infringement suits when the validity of a trademark's registration is questioned.

The court explained that Section 124 creates a clear procedural pathway. If a defendant in an infringement suit challenges the validity of the plaintiff's trademark, and no prior rectification petition is pending, they cannot unilaterally file one. Instead, the defendant must first convince the civil court hearing the suit that their plea of invalidity is prima facie tenable . Only after the civil court is satisfied and frames a specific issue on this point is the defendant permitted to file a rectification petition before the appropriate High Court within a three-month period.

Relying heavily on the Supreme Court's landmark judgment in Patel Field Marshal Agencies and Another v. P.M. Diesels Ltd. and Others , Justice Hakhim emphasized that this is not a mere procedural formality but a substantive check to prevent frivolous claims of invalidity from stalling litigation. The Court remarked:

“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.”

Since Pas Agro had filed its petition in the Kerala High Court without first obtaining a finding on the prima facie tenability of its invalidity claim from the Delhi Commercial Court, the petition was deemed premature and not maintainable.

Conclusion and Legal Implications

The Kerala High Court allowed KRBL’s application and dismissed Pas Agro’s Special Jurisdiction Case, finding it failed on both jurisdictional and procedural grounds. The ruling directs Pas Agro to first raise its challenge to the 'India Gate' trademark’s validity before the Delhi Commercial Court. If that court finds the plea prima facie tenable and frames an issue, Pas Agro may then approach the Delhi High Court with a rectification petition.

This judgment carries significant weight for IP practitioners across India. It decisively rejects the 'dynamic effect' theory for trademark rectification jurisdiction, promoting a more structured and predictable litigation landscape. By tethering jurisdiction to the situs of the Trade Marks Registry, the ruling champions judicial certainty and curtails strategic forum shopping. Furthermore, its strict interpretation of Section 124 reinforces the primacy of the civil court in gatekeeping challenges to trademark validity during infringement suits, ensuring that rectification proceedings are not weaponized to cause undue delays.