1. Overview of the Case
This Judicial Miscellaneous Application was filed under Sections 73 and 96 of the Trade Marks Ordinance, 2001, seeking the cancellation, rectification, and removal of a registered trademark. The court laid down the principle that interconnected trademark infringement suits and statutory rectification applications pending in the High Court may be retained and heard together to prevent conflicting judgments and multiplicity of proceedings.
2. Brief Facts
Category “A”–Suits filed on or before 28.12.2015 (before the IP Tribunals became operational): these are to be transferred to the IP Tribunal, not returned or rejected. Category “B”–Suits filed on or after 29.12.2015 (after Tribunal jurisdiction commenced): such plaints are to be returned for presentation before the IP Tribunal, as the High Court lacks jurisdiction.
3. Questions of Law
- Which forum has jurisdiction over intellectual property disputes and connected statutory applications under the Trade Marks Ordinance, 2001?
- Can a trademark infringement suit transferred to a District Court be recalled to the High Court to be heard together with a connected rectification application?
4. The Court’s Answers
Question 1
Which forum has jurisdiction over intellectual property disputes and connected statutory applications under the Trade Marks Ordinance, 2001?
“Category “C”–Cases involving statutory applications filed directly in the High Court under the Trade Marks Ordinance, 2001 (e.g., under Sections 73, 80, or 96) that are interconnected with pending suits; these may continue before the High Court to avoid conflicting decisions and multiplicity of proceedings.”
Paragraph 3
Question 2
Can a trademark infringement suit transferred to a District Court be recalled to the High Court to be heard together with a connected rectification application?
“In view of the judgment rendered by the Division Bench of this Court, wherein various Judicial Miscellaneous Applications and connected suits relating to trademark disputes were categorized and specific directions were issued regarding their placement and hearing in accordance with the respective categories determined therein, and since, as submitted by learned counsel for the parties, Suit No. 703 of 2015, which had earlier been transferred to the District Court pursuant to the Civil Courts (Amendment) Act, 2025, squarely falls within Category “C” as defined in…”
Passage from the judgment
5. Practical Relevance
Businesses should preserve registration records and establish the competent forum before pursuing infringement, passing-off or rectification proceedings. The applicable statutory procedure can materially affect available relief.