A pending rectification proceeding does not automatically warrant transfer and consolidation of an infringement suit.

Rio Children’s Hospital Pvt Ltd filed O.S. No. 302 of 2022 before the Principal District Court, Madurai, seeking relief for infringement and passing off in relation to the mark “RIO”.

In 2025, it filed O.P.(TM) No. 64 of 2025 before the Madras High Court seeking rectification of Rajesh Jayaraj’s registration for “RIO SCANS AND LABS”.

The applicant sought transfer of the suit to the High Court’s Intellectual Property Division and consolidation with the rectification proceeding, relying on overlap between the marks and issues.

The respondent opposed transfer, raising, among other matters, objections concerning delay, acquiescence, suppression, maintainability and territorial jurisdiction.

Whether the facts warranted transfer of O.S. No. 302 of 2022 from the Principal District Court, Madurai, to the Intellectual Property Division under Rule 14(2) of the Madras High Court Intellectual Property Rights Division Rules, 2022, read with Section 24 CPC.

Whether the suit should be consolidated and tried jointly with O.P.(TM) No. 64 of 2025 because the proceedings concern related marks and overlapping issues.

Rule 14(1) of the Madras High Court Intellectual Property Rights Division Rules, 2022 permits consolidation, common evidence, joint trial and consolidated adjudication of proceedings concerning the same or related intellectual property rights, where appropriate; Rule 14(2) permits transfer under Section 24 CPC when the Court considers a matter pending before a Commercial Court necessary to consolidate with a proceeding before the Intellectual Property Division.

These powers are discretionary, not automatic merely because proceedings concern the same mark.

Section 124 of the Trade Marks Act, 1999 provides a statutory mechanism for regulating an infringement suit when the validity of a registration is questioned; it operates harmoniously with, and is not displaced by, Rule 14.

The Court also considered Patel Field Marshal Agencies v. P.M. Diesels Ltd., AIR 2017 SC 1388, and the authorities cited by the applicant, but did not treat them as requiring transfer in every such case.

Although the suit and rectification petition were connected, they differed in scope: the rectification petition concerned the validity of the registration, while the suit included passing off claims requiring separate assessment of prior use, goodwill, reputation, misrepresentation and confusion.

The Court held that Section 124 remained relevant and that the mere filing of a rectification petition did not justify automatic transfer.

The suit had been pending in Madurai since 2022, before the rectification petition was filed, and the applicant had not shown that retaining it there would cause a failure of justice or prevent effective adjudication.

The suit’s unframed issues did not, on their own, establish the need for transfer.

The respondent’s objections to the suit were left for determination on their merits.

It held that the rectification proceeding could continue before the High Court and that the effect of its outcome could be addressed in the civil suit in accordance with the Trade Marks Act.

The transfer application was dismissed, with no order as to costs.