Supreme Court refers to a larger bench whether trade mark suits can go to Civil Judges named as Commercial Courts

The Supreme Court referred to a larger bench a conflict between the Trade Marks Act, 1999 and the Commercial Courts Act, 2015. Section 134 of the Trade Marks Act bars a suit for infringement and similar reliefs in any court inferior to a District Court. Under the Commercial Courts Act, however, some States, including Jharkhand, have notified the Court of the Civil Judge (Senior Division) as a Commercial Court for disputes within a set pecuniary range.

As a result, a trade mark suit in Jharkhand has to be filed before a Civil Judge, with an appeal to the District Court, which the appellants argued defeats the purpose of Section 134. The Court noted that Section 21 of the Commercial Courts Act overrides other laws only where they are inconsistent. The trade mark bar is not inconsistent with that Act, which also lets High Courts designate District Judges' courts as Commercial Courts; the problem arises only when Civil Judges are designated.

It pointed out the anomaly that in Jharkhand a suit worth under ₹3 lakh must go to the District Court while higher-value suits go to the Civil Judge. It noted that Kerala had since addressed the anomaly by designating District Courts for disputes under intellectual property and arbitration laws. Observing that notifications by High Courts cannot dilute the legislature's choice, it placed the matter before the Chief Justice and stayed the pending commercial suit at Jamshedpur.