Court holds that mere pendency of rectification proceeding does not mandate transfer; infringement and passing off claims to be adjudicated independently in original forum
In a recent judgment dated September 30, 2026, the Madras High Court, presided over by Justice Dr. A.D. Maria Clete, dismissed the application seeking transfer of a trademark infringement and passing off suit from the Principal District Court, Madurai, to the Intellectual Property Division of the High Court. The petitioner, Rio Children's Hospital Pvt Ltd, had moved the High Court under Section 24 of the Code of Civil Procedure, 1908 read with Rule 14 of the Madras High Court Intellectual Property Rights Division Rules, 2022, seeking consolidation of its infringement suit (O.S.No.302 of 2022) with a rectification petition (O.P.(TM) No.64 of 2025) concerning the respondent's registered trademark "RIO SCANS AND LABS".
The dispute centers around the use and registration of the mark "RIO." The petitioner initiated the infringement and passing off suit in 2022 before the Principal District Court, Madurai, alleging unauthorized use by the respondent, Rajesh Jayaraj, trading as Rio Scans and Labs. Subsequently, the petitioner filed a rectification petition challenging the validity of the respondent's trademark registration before the High Court in 2025.
The petitioner contended that since both proceedings involve the same or related trademarks and parties, transfer and consolidation before the Intellectual Property Division would avoid multiplicity of proceedings, reduce duplication of evidence, and allow a more streamlined adjudication. The petitioner also argued that the issues in the infringement suit had not yet been framed, thus transfer would not cause prejudice.
Conversely, the respondent opposed the transfer, asserting that the infringement suit was properly instituted and pending in Madurai, where the respondent's business and evidence are located. The respondent emphasized the statutory scheme under Section 124 of the Trade Marks Act, 1999, which regulates the conduct of infringement suits when validity of registration is questioned, and argued that Rule 14 of the Intellectual Property Rights Division Rules does not mandate automatic transfer merely due to the pendency of rectification proceedings. The respondent further alleged that the rectification petition was belated and raised issues of acquiescence and suppression of material facts.
After hearing both sides, the Court examined the scope and interplay of Rule 14 of the Intellectual Property Rights Division Rules, 2022 and Section 24 CPC, as well as the statutory mechanism under Section 124 of the Trade Marks Act. The Court held that:
- Rule 14 confers discretionary power to consolidate and transfer proceedings but does not mandate transfer of every infringement suit merely because a rectification petition concerning the same mark is pending.
- The infringement and passing off suit and the rectification petition are connected but differ in nature; the former involves claims of infringement and passing off based on prior use, goodwill, and deception, while the latter concerns the validity of registration.
- Passing off claims survive independently of the validity of registration and require substantial oral and documentary evidence.
- The statutory mechanism under Section 124 of the Trade Marks Act is designed to regulate proceedings involving validity questions and must operate harmoniously with Rule 14 to avoid rendering statutory provisions redundant.
- The petitioner failed to demonstrate that continuation of the suit before the Principal District Court would cause failure of justice or that transfer was necessary or expedient in the interests of justice.
- Territorial jurisdiction, maintainability, and other objections raised are to be decided by the trial court on merits.
Accordingly, the Court dismissed the transfer application, allowing the rectification petition to proceed before the Intellectual Property Division and the infringement suit to continue before the District Court. The Court clarified that the effect of the rectification petition's outcome will be given due consideration in the infringement suit as per the Trade Marks Act provisions.
This judgment underscores the discretion exercised by courts in transfer applications involving intellectual property disputes and affirms the independent survival of passing off claims irrespective of registration validity challenges. It also highlights the importance of adhering to statutory procedural mechanisms rather than seeking automatic consolidation.
Bottom Line:
Trade Marks - Transfer and consolidation of infringement suit pending before District Court with rectification petition pending before Intellectual Property Division - Power under Rule 14 of Madras High Court Intellectual Property Rights Division Rules, 2022 read with Section 24 CPC is discretionary - Mere pendency of rectification proceeding concerning same mark is not by itself sufficient to transfer suit - Statutory mechanism under Section 124 of Trade Marks Act, 1999 must operate harmoniously - Where passing off claim survives independently and no necessity for transfer in interests of justice is shown, transfer liable to be refused.
Statutory provision(s):
Trade Marks Act, 1999 Section 124, Madras High Court Intellectual Property Rights Division Rules, 2022 Rule 14(1), Rule 14(2), Code of Civil Procedure, 1908 Section 24
Rio Children's Hospital Pvt Ltd v. Rajesh Jayaraj, (Madras) : Law Finder Doc Id # 2990718
