New Delhi, May 26, 2022: While dismissing the writ petition filed by the petitioner assailing the registration of a trademark, the Delhi High Court has opined that the petitioner was completely aware of the remedy provided under under Section 57 in Chapter VII of the Trade Marks Act , 1999 but chose to remain silent and took no steps to seek cancellation of the mark and rectification of the Register, with respect to the trademark in question.
The Bench of Justice Jyoti Singh was considering a writ petition by which the petitioner was seeking a writ of Certiorari quashing the advertisement with respect to an application filed by Midas Hygiene Industries Pvt. Ltd. (third respondent) for registration of trademark LAXMAN REKHA (label) and a further direction to the concerned Registrar of Trade Marks to re-advertise the application.
Factual matrix of the case was such that the third respondent instituted an application for registration of trademark Laxman Rekha. It also filed a suit for perpetual injunction, infringement of copyright, passing off, delivery etc. against the petitioner herein, in respect of that trademark. The Single Judge of this Court granted injunction against the petitioner but by way of an appeal before the Division Bench , the injunction order was vacated. When the same was assailed, the Apex Court set aside the order passed by the Division Bench and restored the order of injunction. Thereafter, the suit was transferred to District Court on account of pecuniary jurisdiction.
In respect of the same, the third respondent preferred an application before the Trial Court under Order 6 Rule 17 CPC in the year 2006, seeking amendment of the plaint and along with the application filed copy of the registration certificate, whereby the third Respondent’s trademark was registered in Class 5. Eventually, a legal notice was sent to the second respondent. Receiving no response, petitioner approached this Court by way of the present writ petition.
On the issue of territorial jurisdiction to entertain the present petition, the Bench took note of the fact that the writ petition was filed in the year 2008 and in 2011, ‘Rule’ was issued and the petition was admitted for hearing. The writ petition remained pending since then and a long period of almost 14 years had lapsed. Thus, the Court observed that it would be inequitable to dismiss the writ petition on the ground of lack of territorial jurisdiction. Further reliance was place on the judgment of this Court in the case of Azra Poultry Equipments v. Union of India and Or,.
The Bench said, “Having perused the Scheme of the Act, in my view, what is discernible is that post-registration of a trademark the remedy available to any person aggrieved is to seek cancellation of the mark and rectification of the Register, under Section 57 in Chapter VII of the Act.” As per the Bench, the petitioner was completely aware of the said remedy way-back in the year 2006, but chose to remain silent and took no steps to seek cancellation of the mark and rectification of the Register, with respect to the trademark in question.
Thus, taking note of the above findings, the Court stated when there is a statutory remedy available under the Act, then the same relief cannot be granted to the petitioner by way of writ petition. In light of the aforesaid observations, the petition was dismissed, however liberty was granted to the petitioner to approach the appropriate forum and seek remedies accordingly.