SC Refers Dispute Over Commercial Court Jurisdiction In Trademark Suits To Larger Bench

New Delhi, Sep 23 (KNN) The Supreme Court has recently discussed whether a Civil Judge (Senior Division) notified as a Commercial Court under the Commercial Courts Act, 2015 can entertain a trademark infringement suit.

They questioned the possibility despite Section 134 of the Trade Marks Act, 1999 barring such suits before a court inferior to a District Court. The court has referred to a Larger Bench with the question.

A Bench of Justices JB Pardiwala and K Vinod Chandran noted an apparent conflict between two earlier Supreme Court judgments on the interplay between special statutes and the Commercial Courts Act.

Conflict Between Earlier Rulings

The issue arose after the Jharkhand High Court notified a Civil Judge (Senior Division) as a Commercial Court, enabling it to hear commercial disputes including a trademark infringement suit.

The appellants challenged the jurisdiction of the Civil Court, relying on Section 134 of the Trade Marks Act, which stipulates that suits relating to infringement of registered trademarks and certain specified reliefs cannot be instituted before a court inferior to a District Court.

The Supreme Court noted that Kandla Export Corporation v. OCI Corporation (2018) treated the Arbitration and Conciliation Act, 1996 as a special legislation vis-à-vis the Commercial Courts Act. On that reasoning, the special provisions of the Trade Marks Act would prevail over the Commercial Courts Act.

However, in Jaycee Housing Private Limited v. Registrar (General), Orissa High Court (2022), the Court held that the Commercial Courts Act, being a later enactment specifically dealing with commercial disputes, could prevail over jurisdictional provisions in the Arbitration Act.

Larger Bench To Settle Law

The Bench said the apparent conflict required authoritative resolution to ensure uniformity across States and prevent jurisdiction from depending on different notifications issued by High Courts.

“We are of the opinion that the matter has to be referred to the Larger Bench for resolving the conflict and also settling the law to be uniform throughout the States,” the Court said.

The Bench also observed that the legislative intent cannot be diluted through notifications issued by High Courts.

The matter has been directed to be placed before the Chief Justice of India for appropriate orders.

Impact on IP Enforcement

Resolving this conflict prevents trademark suits from being dismissed or remanded years later due to defective initial forum jurisdiction. Uniform National Forum Structure: Resolving state-by-state judicial notifications simplifies IP enforcement by ensuring consistent court hierarchies and jurisdiction across India.