The Delhi High Court allowed the Transfer Petition filed under Section 24 of the Code of Civil Procedure, 1908 read with Rule 26 of the Intellectual Property Rights Division Rules, 2022 (“IPD Rules”). The Court transferred the infringement suit and counterclaim from the District Court to itself. It also consolidated these matters with the rectification petition.
Shri Surinder Kumar filed the Transfer Petition as the Petitioner. He sought transfer of the suit and counterclaim pending before the Additional District Judge-03, Patiala House Courts. The Petitioner wanted these matters consolidated with his rectification petition before the Intellectual Property Rights Division of the Delhi High Court. The common subject matter involved the PRAKASH trademark and label copyright for PVC self-adhesive electrical insulation tapes.
Rahul Khanna, one of the Respondents, had instituted the suit in the District Court. He claimed passing off, copyright infringement in artistic work, delivery up of goods, rendition of accounts, and an injunction against Surinder Kumar’s use of the PRAKASH mark on PVC tapes. Surinder Kumar filed a counterclaim. He sought a permanent injunction against Rahul Khanna for passing off and copyright violation in his PRAKASH label. Surinder Kumar also filed a rectification petition to expunge Rahul Khanna’s copyright registration. All proceedings concerned the validity and use of the same PRAKASH mark and label.
The Petitioner argued for commonality of issues across the suit, counterclaim, and rectification petition. He invoked Rule 26 of the IPD Rules and Section 24 CPC for transfer to avoid multiplicity. The Respondent objected that Rule 26 applies only to commercial courts and also highlighted the suit’s advanced stage.
The Bench comprising Justice Tejas Karia held that Section 24 CPC provides a general transfer power independent of Rule 26 IPD Rules. It observed that Rule 26 of the IPD Rules supplements but does not limit Section 24 CPC’s broad transfer powers for IPR matters. The Court noted a clear overlap in issues concerning PRAKASH mark validity, prior use, and infringement across all proceedings. The advanced stage of the suit did not preclude transfer, as evidence had concluded in 2021.
The Court also noted that no prejudice would be caused to the Respondent from transfer despite the advanced stage. The Court thereby prioritized avoiding conflicting decisions on identical IPR issues.
In result, the Court allowed the Transfer Petition and directed transfer of the suit and counterclaim from the Additional District Judge-03 to the Intellectual Property Rights Division of the High Court. The Court consolidated these with the rectification petition. All matters are listed together on 16th March 2026.
Cases relied on:
1. Patola Industries v. Mahesh Namkeen Pvt. Ltd and Anr.,O. (COMM.IPD-TM) 187/2021
2. M/s Loreal India Private Limited and Anr. v. M/s Pornsricharoenpun Co. Ltd and Anr., CS (COMM) 496/2023
Appearances:
For the Petitioner: Mr. Shailen Bhatia and Mr. Amit Jain, Advocates.
For the Respondents: Ms. Nidhi Raman, CGSC with Mr. Om Ram and Mr. Arnav Mittal, Advocates for R1 (Registrar of Copyrights).
Ms. Archana Kumari, GP for UoI.
Mr. Ajay Amitabh Suman, Mr. Shravan Kumar Bansal, Mr. Rishi Bansal and Mr. Risabh Gupta, Advocates for R2 (Rahul Khanna).
