Section 125(2) permits referral of pre-suit trademark rectification proceedings from the Registrar to the High Court.

The petitioner claimed that his family had operated a hotel in Kumbakonam since 1914 and challenged the second respondent’s Class 43 trade mark registration.

He filed Rectification No. 268705 before the Registrar of Trade Marks on 29 June 2020; the civil suit between the parties was instituted later, as O.S. No. 160 of 2022.

After the suit was dismissed, a Division Bench set aside the judgment and remitted the suit for fresh consideration, directing the Trial Court to keep it in abeyance pending the rectification proceeding and the petitioner to take immediate steps to have that proceeding transferred to the High Court.

The petitioner sought transfer by writ petition.

The second respondent objected, among other grounds, that the petitioner had not first asked the Registrar to transfer the proceeding.

Whether the rectification proceeding, filed before the civil suit, could be transferred to the High Court under Section 125(2) of the Trade Marks Act, 1999.

Whether the writ petition could be entertained despite the petitioner’s failure to make a prior request to the Registrar and the objection that transfer should be pursued through another procedure.

Section 125(1) of the Trade Marks Act, 1999 provides that where the validity of a trade mark is questioned in an infringement suit in the circumstances specified there, the rectification application must be made to the High Court; Section 125(2) permits the Registrar, where rectification under Sections 47 or 57 was already filed before the Registrar, to refer it to the High Court at any stage.

The Supreme Court in Jagatjit Industries Ltd. v. Intellectual Property Appellate Board, (2016) 4 SCC 381, explained that rectification proceedings instituted before an infringement suit may be brought before the Registrar or the competent tribunal, whereas proceedings instituted after the suit must follow the statutory route identified in Section 125(1).

The Court also relied on Asia Match Company Pvt. Ltd. v. Deputy Registrar of Trade Marks & GI, 2023 SCC OnLine Mad 8549, which recognised transfer under Section 125(2) in comparable circumstances.

Section 24 CPC concerns transfer of proceedings between courts, not a statutory proceeding pending before the Registrar; Rule 14(2) of the Madras High Court Intellectual Property Rights Division Rules, 2022 concerns proceedings pending before a Commercial Court.

Ordinarily, mandamus is preceded by a demand and the authority’s failure or refusal to act, but the prior-demand requirement is a rule of practice whose purpose may be substantially served in the circumstances of a case.

Because Rectification No. 268705 was filed in 2020, before the 2022 civil suit, the Court held that Section 125(2), rather than Section 125(1), governed the proceeding and empowered the Registrar to refer it to the High Court.

Section 24 CPC and Rule 14(2) did not supply the applicable transfer procedure because the rectification proceeding was pending before a statutory authority, not a court.

Although the petitioner had not first requested transfer from the Registrar, the Court found that the Registrar had been impleaded, served, represented, and given an opportunity to state his position.

In addition, the Division Bench had directed the petitioner to take immediate steps for transfer and had stayed the suit pending the rectification outcome; requiring a separate request and a further court application would cause additional delay.

The Court therefore treated the case as exceptional, while clarifying that a party should ordinarily approach the Registrar first.

The High Court Registry was directed to renumber the proceeding under the applicable IPD Rules and place it before the appropriate Bench; the rectification proceeding was to be decided independently on its merits.

There was no order as to costs.