High Court may direct transfer of pending trademark rectification proceedings to its Intellectual Property Division.

The petitioner, which carries on business in the hospitality sector, filed Rectification Proceeding No. MAS-279782 before the Registrar of Trade Marks on 17 July 2023, seeking removal of Trade Mark Registration No. 2441920 in Class 43.

The rectification proceeding remained pending before the Registrar.

The writ petition originally sought several forms of relief concerning the registration and its renewal, as well as transfer of the rectification proceeding. The petitioner later gave up the other prayers and pursued only transfer to the High Court’s Intellectual Property Division. The second respondent did not object to that limited prayer.

Whether Rectification Proceeding No. MAS-279782, pending before the Registrar of Trade Marks, Chennai, should be transferred to the Intellectual Property Division of the Madras High Court.

Section 125(2) of the Trade Marks Act, 1999 provides that, subject to Section 125(1), the Registrar may refer to the High Court, at any stage, an application for rectification made before the Registrar under Section 47 or Section 57.

The Court also relied on its decision in Asia Match Company Pvt. Ltd. v. Deputy Registrar of Trade Marks & GI, 2023 SCC OnLine Mad 8549, which recognised that writ jurisdiction may be exercised in appropriate circumstances to direct transfer of a rectification proceeding pending before the Registrar to the High Court.

The Court treated the transfer request as the sole surviving issue after the petitioner abandoned its other prayers.

The rectification proceeding had been pending before the Registrar since 17 July 2023 and concerned a mark that was also the subject of other proceedings between the parties.

As the petitioner sought only transfer—not adjudication of the rectification on its merits—and the second respondent consented, the Court found that transfer would cause no prejudice and would allow the Intellectual Property Division to adjudicate the dispute. It left questions concerning the mark’s validity, ownership, prior use, renewal and continuance for determination in the rectification proceeding.

The Registry was directed to number or renumber the proceeding and place it before the appropriate Bench; the proceeding is to be decided independently on its merits, with all relevant questions left open.

The remaining prayers were dismissed as not pressed, with no order as to costs.