Case Note & Summary
The matter concerns an application for transfer of trademark rectification proceedings from the Registrar of Trade Marks to the Bombay High Court, to be heard alongside a pending infringement suit and other related rectification proceedings. The plaintiff trust, involved in educational activities, had challenged certain trademark registrations of the defendant trust by filing rectification applications under Sections 47 and 57 of the Trade Marks Act, 1999 before the Registrar. The defendant had also filed its own set of rectification applications against the plaintiff's marks, which were initially before the IPAB and later transferred to the High Court upon dissolution of the IPAB. The plaintiff sought to transfer its pending applications to achieve judicial efficiency and prevent conflicting decisions. The parties presented arguments on maintainability: the plaintiff contended that the High Court had original jurisdiction and inherent powers under CPC Section 151, while the defendant argued that the application was untenable because the Registrar is not a 'court' for purposes of CPC Section 24, and that the proper remedy lay under the Trade Marks Act. The judgment text provided does not include the court's analysis or the final decision on the application.
Issue of Consideration
Whether the Interim Application seeking transfer of ITM Rectification Proceedings from the Registrar to the High Court under Section 24 of CPC is maintainable, and whether the Registrar of Trade Marks is a 'court' subordinate to the High Court for purposes of Section 24 CPC.
Case Details
2026 LawText (BOM) (06) 91
COMMERCIAL INTERIM APPLICATION NO. 3128 OF 2025 IN COMMERCIAL SUIT NO. 102 OF 2015
SOMASEKHAR SUNDARESAN, J.
Mr. Aseem Naphade, Mr. Hiren Kamod with associates
Institute For Technology And Management Trust And Anr.
Samata Lok Sansthan Trust
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Nature of Litigation
Interim application for transfer of trademark rectification proceedings from the Registrar of Trade Marks to the High Court in a pending commercial suit for infringement.
Remedy Sought
Plaintiff sought transfer of its three rectification proceedings from the Registrar to the High Court to be clubbed with the main suit and the defendant's rectification proceedings already before the court.
Filing Reason
To avoid parallel proceedings and potential divergent outcomes between the Registrar and the High Court over the same or overlapping trademark issues.
Previous Decisions
The defendant's rectification proceedings were transferred to the High Court after the IPAB was disbanded; by order dated January 2, 2025, they were directed to be heard with the suit. The plaintiff's rectification proceedings remain pending before the Registrar.
Issues
Maintainability of a transfer application under Section 24 of the Code of Civil Procedure, 1908 when filed as an Interim Application in a commercial suit, given that the Registrar of Trade Marks is not a 'court' subordinate to the High Court.
Submissions/Arguments
Plaintiff contended that transfer would be efficient and prevent conflicting decisions; the High Court has original jurisdiction under Sections 47 and 57 of the TM Act and inherent powers under Section 151 CPC; precedents from Delhi and Madras High Courts support such transfer.
Defendant argued that the application was fundamentally flawed: it could not be filed as an Interim Application in the suit; the proper remedy was under Section 125 of the TM Act before the Registrar; the Registrar is not a 'court' under CPC Section 24; and the application should have been filed on the Appellate Side, not the Original Side, thus falling outside the roster of the Bench.
Judgment Excerpts
Upon the IPAB being disbanded, the Samata Rectification Proceedings, in which pleadings are complete, have been transferred to this Court.
The Transfer Application seeks transfer of the three ITM Rectification Proceedings pending before the Registrar to this Court for being clubbed and heard along with the Suit and the Samata Rectification Proceedings.
the Registrar is not a Court is judicially well-recognised, in particular, by this Court in Anglo French, which held that the Registrar as a tribunal with many trappings of a Court is not a Court.
the Transfer Application having been filed on the Original Side is misconceived
Procedural History
The suit was instituted on September 14, 2015. The plaintiff filed three rectification proceedings under Sections 47 and 57 of the Trade Marks Act, 1999 before the Registrar between May 27, 2014 and July 6, 2015. The defendant filed 17 rectification applications before the IPAB on February 16, 2016. After the IPAB was disbanded, those proceedings were transferred to the High Court and by order dated January 2, 2025, directed to be heard with the suit. The plaintiff then filed the present Transfer Application as an Interim Application in the suit, seeking transfer of its pending rectification proceedings from the Registrar to the High Court.
Acts & Sections
- Trade Marks Act, 1999: Section 47, Section 57
- Code of Civil Procedure, 1908: Section 24, Section 151
