Kerala High Court Dismisses India Gate Trademark Cancellation Plea

Plea against India gate is dismissed by the High Court.

The Kerala High Court has quashed a petition to cancel the famous trademark of the India Gate in a major case on the intellectual property law. It is the famous trademark of the so-called basmati rice manufactured by a company named KRBL Limited situated in Delhi. The court did not decide according to the merits of the trademark itself but according to two most important procedural grounds. The court ruled that it lacked the legal jurisdiction, or territorial jurisdiction to hear the case and the plea was entered too early.

It was petitioned by one Kerala based company called Pas Agro Foods. The basis of this legal challenge was the result of another case that was pending between the two companies. KRBL Limited had already filed a lawsuit in a Delhi District Court claiming Pas Agro Foods had infringed its trademark by using the name of the India gate on its own rice products. That an interim injunction had been granted against KRBL by the court of Delhi.

Pas Agro Foods had retaliated with this new case in the Kerala High Court. They wanted the registration of the trademark KRBL had on the India Gate to be cancelled completely. This legal strategy can be referred to as a rectification petition. However, the case was immediately appealed by KRBL who claimed that the Kerala High Court was not the court to file in the case and was a premature move to derail the infringement suit in Delhi.

This ruling by Justice M.A. Abdul Hakhim offers much insight on trademark law in India. It strengthens restrictions on the place of such cancellation petitions, eliminating a so-called forum shopping. This is where a litigant will seek to discover a court in which he or she feels would be most accommodative of his or her case, whether it is the right court or not. This strategy is strongly blocked by the ruling of the High Court.

The fact that the court dismissed it implies that the fight in court is not over yet. It merely reinstates the battle to Delhi where a case of infringement was initiated in the first place. Now Pas Agro Foods will have to follow the appeal against the validity of the trademark under the law of the Delhi legal court system. This decision is a great procedural win to KRBL Limited as it safeguards their trademark against legal battles in courts throughout thecountry.

The main problem of Territorial Jurisdiction.

Lack of territorial jurisdiction was the main cause of the dismissal. Justice Hakhim believed that the Kerala High Court did not have the jurisdiction to listen to the cancellation petition. The petitioner which is Pas Agro Foods submitted that the court had the jurisdiction since their business operations are located in Kerala. They further indicated that their goods were physically seized in Kerala at the order of the Delhi court which they argued was in the cause of action.

The owner of India gate, KRBL limited responded to this argument with a procedural point. They claimed that the trademark of the India Gate was initially registered at the Trade Marks Registry in New Delhi. The petition to cancel or rectify a trademark under Trade Marks Act shall be filed in the same High Court which has jurisdiction of appeal over the registry of registration of mark. That in this instance is the Delhi High Court.

The High Court ruled full scale in favor of the argument by KRBL. This ruling made it clear that the principle of cause of action that is used in civil cases cannot be used in statutory rectification petitions. The court said that the law was purposely made understandable and organized. In case any High Court could listen to a plea of cancellation simply because the product is sold in the same state it would bring about complete chaos and conflicting decisions of various courts in different parts of the country.

The rationale of a comparable case in the Madras high court was supported by the court. The holding of that court had been before that the law is aimed at putting such challenges in one, predictable place. The decision of Justice Hakhim affirmed that the dynamic effect of a trademark, which is that the trademark is recognizable or marketed across the board does not imply that every single court in the country has jurisdiction in the registration of the trademark. Considering that the mark of the India gate is registered in the state of Delhi, the Delhi high court is the only court that can cancel it.

A “Premature” Legal Challenge

The second reason was that the petition was premature and so the High Court declined to support the petition. This is a legal, although technical, issue to do with an on-going court case. The court observed that KRBL already submitted a trademark infringement complaint against Pas Agro Foods in the District Court in New… In this previous instance, there is a tremendous shift in the process of challenging a trademark.

The High Court gave a clear explanation of the procedure that is provided in Section 124 of the Trade Marks Act. In this part, it is mentioned that when the infringement suit is already pending, a defendant (Pas Agro) looking to issue a challenge against the trademark validity must seek to raise that subject matter before the trial court (the Delhi District Court). The trial court will then hear the arguments and determine whether the challenge can be, on its part, prima facie tenable.

In case the court of first instance considers the claim to invalidity of the trademark to be valid, then it will pose a matter on the same. It will then stay the infringement suit and grant the defendant a certain period of time which is normally three months, to present a due rectification petition to the appropriate High Court which in this case is the Delhi High Court. It is only after that that cancellation process can be initiated.

Here, Pas Agro Foods has omitted this whole required process. They directly moved their cancellation request in the Kerala High Court without seeking the Delhi trial court to raise a question over the validity of the trademark.