Jamshedpur Trade Mark case: Supreme Court refers civil judge jurisdiction row to larger bench
SUMAN K SHRIVASTAVA New Delhi, Sept 21: The Supreme Court has referred an important legal question arising from Jharkhand to a larger…
SUMAN K SHRIVASTAVA
New Delhi, Sept 21: The Supreme Court has referred an important legal question arising from Jharkhand to a larger bench over the jurisdiction of courts to hear trade mark infringement cases.
The case involves I.S.D.S. Private Limited and another as appellants against M/s Khemka Food Products Pvt. Ltd. and another as respondents. The dispute concerns Commercial Suit No. 11 of 2023 pending before the Civil Judge (Senior Division)-I, Jamshedpur.
The central question before the Supreme Court was whether a Civil Judge (Senior Division), after being notified as a Commercial Court in Jharkhand, can hear a trade mark infringement suit, when Section 134 of the Trade Marks Act, 1999 says such a suit cannot be instituted before a court below the rank of a District Court.
A Bench of Justice J.B. Pardiwala and Justice K. Vinod Chandran heard the matter on September 21 and concluded that the legal conflict requires consideration by a Larger Bench.
Why did I.S.D.S. challenge the jurisdiction?
The challenge by I.S.D.S. Private Limited and another centres on the notification under the Commercial Courts Act, 2015, by which a Civil Judge (Senior Division) in Jharkhand has been notified as a Commercial Court.
The appellants argued that Section 134 of the Trade Marks Act specifically requires trade mark infringement suits to be instituted before a District Court. According to their submission, merely notifying a Civil Judge (Senior Division) as a Commercial Court cannot override that specific statutory requirement.
The appellants also raised a concern about the appeal mechanism. If a Civil Judge (Senior Division) hears the case initially, an appeal would lie to the District Court under the Commercial Courts Act. They argued that this would leave the High Court with a more limited revisional or Article 227 jurisdiction rather than a regular appellate remedy involving wider examination of the case.
What exactly did the Supreme Court have to decide?
In simple terms, the Court had to examine whether the Commercial Courts Act can effectively allow a Civil Judge to hear a case that the Trade Marks Act says must be heard by a District Court.
The issue has arisen because trade mark disputes are included within the definition of commercial disputes under the Commercial Courts Act.
At the same time, Section 134 of the Trade Marks Act contains a specific restriction on the court before which a trade mark infringement suit can be instituted.
The respondents, M/s Khemka Food Products Pvt. Ltd. and another, relied on the Commercial Courts Act and particularly its Section 21, arguing that the later law dealing specifically with commercial disputes should prevail where there is an inconsistency.
Why Jharkhand’s court structure created the problem
The Supreme Court specifically examined the situation in Jharkhand.
The Court noted that Civil Judges (Senior Division) have been notified as Commercial Courts with pecuniary jurisdiction between ₹3 lakh and ₹1 crore.
This creates an apparent anomaly in trade mark cases.
A trade mark suit valued below ₹3 lakh would, because of Section 134 of the Trade Marks Act, have to be filed before a District Court. But a higher-value commercial suit could fall within the jurisdiction of a Civil Judge (Senior Division) notified as a Commercial Court.
The Supreme Court said this conflict cannot be left to different interpretations in different States.
Two Supreme Court judgments add to the legal complexity
The Bench examined earlier judgments dealing with the relationship between special laws and the Commercial Courts Act, including Kandla Export Corporation v. OCI Corporation and Jaycee Housing Private Limited v. Registrar (General), Orissa High Court.
The Court found that the reasoning in these judgments raised an issue that required consideration by a Larger Bench.
The Bench also referred to a Gujarat High Court decision, Fun N. Fud v. GLK Associates, concerning the jurisdiction of a Civil Judge (Senior Division) notified as a Commercial Court.
SC: Issue must be settled uniformly across India
The Supreme Court did not finally decide whether the Jamshedpur Civil Judge has jurisdiction to hear the trade mark suit.
Instead, it held that the issue should be examined by a Larger Bench so that the law is settled uniformly across States.
The Bench observed that jurisdiction should not depend upon different notifications issued by different High Courts.
In a significant observation, the Court said:
“The legislative imprimatur cannot be diluted by the notifications issued by the High Courts.”
The Court said the Larger Bench would have to resolve the conflict and settle the legal position concerning the interaction between the Trade Marks Act, 1999 and the Commercial Courts Act, 2015.
Jamshedpur commercial suit stayed
Pending consideration by the Larger Bench, the Supreme Court ordered that Commercial Suit No. 11 of 2023 pending before the Civil Judge (Senior Division)-I, Jamshedpur, shall remain stayed.
The matter will now be placed before the Chief Justice of India for appropriate orders regarding constitution of the Larger Bench.
The Supreme Court’s order therefore leaves the core jurisdictional question open for now: Can a Civil Judge (Senior Division), merely because the court has been notified as a Commercial Court, hear a trade mark infringement suit that Section 134 of the Trade Marks Act says cannot be instituted before a court below the District Court?
