A Statute That Says Too Little
Sections 47, 57 and 124 of the Trade Marks Act, 1999 all use the unadorned phrase "the High Court" without specifying which one. Unlike the Patents Act (Section 2(1)(i)) and the Designs Act (Section 2(e)), the 1999 Act contains no definition of "High Court", leaving courts to fall back on Section 3(25) of the General Clauses Act, 1897 — which identifies what a High Court is but not which one should hear a given matter.
The gap matters because a registration is entered at one of five regional offices of the Trade Marks Registry (Delhi, Mumbai, Kolkata, Chennai or Ahmedabad), and Rule 4 of the Trade Marks Rules, 2017 designates an "Appropriate Office" for each mark. Respondents in both cases argued this administrative anchor should fix the judicial one; petitioners argued that a registered mark operates nationally, causing commercial injury wherever it is used or enforced, and jurisdiction should follow that injury rather than a filing-room address.
Dr. Reddy's: The "Dynamic Effect" Doctrine
Justice C. Hari Shankar's reasoning proceeded in cumulative steps. First, applying expressio unius est exclusio alterius, the Court declined to read in a restriction Parliament chose not to write — the Taylor v. Taylor line was inapplicable because the statute never prescribed a particular manner to begin with. Second, Section 124 provides only the procedural pathway for a Section 57 petition once validity is challenged in an infringement suit; since Section 28(1) makes the infringement right contingent on the registration's validity, the same High Court hearing infringement should be competent to examine validity.
Third, and most significantly, the Court revived the static effect / dynamic effect distinction from the Full Bench in Girdhari Lal Gupta v. K. Gian Chand & Co. (a design-law precedent). A registration has a static effect — the entry in the Register, tied to the Registry office — but also a dynamic effect: the ongoing commercial and legal consequences produced wherever the proprietor competes. Nothing confines that reasoning to design law.
Fourth, the Ayyangar Committee's recommendation to confine rectification jurisdiction to the Registry's own High Court was before Parliament twice — in 1958 and 1999 — and adopted neither time; it cannot be smuggled back in through interpretation. Fifth, Rule 4 tells a litigant which Registry office processes a paper application; it says nothing about which constitutional court may adjudicate a challenge to that entry.
Both petitions were held maintainable in Delhi, where the petitioners were suffering the consequences of registrations entered in Kolkata and Ahmedabad — subject to a limiting principle: a petitioner must show a genuine territorial nexus, not a manufactured connection engineered to select a convenient forum.
Hershey v. Bacha: Recognising the Fault Line, Not Resolving It
Five months later, Justice Prathiba M. Singh — hearing five rectification petitions together, with an Amicus Curiae — surveyed the same materials but drew a more cautious conclusion at every stage: the 1958 position was genuinely settled; the IPAB era preserved territorial certainty in practice because its benches were organised around the Appropriate Office; the Tribunals Reforms Act on its own terms merely redirected pending matters to High Courts; and the express definitions in the Patents and Designs Acts cut against reading an expansive jurisdiction into the Trade Marks Act's silence.
Rather than choose between the readings, the Court held the conflict involved a substantial question of law with nationwide consequences and referred it to a Larger Bench, framing three questions: whether Girdhari Lal Gupta survives into the Section 57 context after the Tribunals Reforms Act; whether jurisdiction depends on the Appropriate Office; and whether other High Courts may still entertain such petitions.
Reading the Two Judgments Together
It would be a mistake to treat Hershey as overruling Dr. Reddy's — a Single Judge cannot overrule a co-ordinate bench, and Hershey does not purport to. The doctrinal disagreement is nonetheless real: Dr. Reddy's reasons from the text outward, treating commercial injury as a sufficient territorial anchor; the Hershey respondents and Amicus reason from the system outward, warning of forum shopping, parallel proceedings and conflicting outcomes on the same mark.
- The stakes exceed these disputes. Until the Larger Bench rules, every rights holder faces uncertainty about where to file, and every respondent has a live jurisdictional objection — real litigation cost consumed before the merits.
- The dynamic-effect doctrine remains good law until displaced, binding within its facts and persuasive for interim petitioners.
- The eventual ruling will likely turn on the same materials: Parliament's deliberate non-adoption of the Ayyangar recommendation, the missing definition of "High Court", and the practical consequences for the integrity of the Register.