The appropriate forum for filing a suit for infringement of a registered trademark or relating to any right in a registered trademark or for passing off, as per Section 134 of the Trademarks Act, 1999, is the District Court. The said Section reads:

"(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

Herein a significant question that arises when Additional Judges decide upon infringement issues is whether they possess the jurisdictional competence to adjudicate on such matters or not.

In a recent decision, Cadila Healthcare Limited v. Lupin Laboratories Ltd. & Anr. 2006 (33) PTC 68 (Guj.), the applicant-original plaintiff filed the application with the prayer to direct the Principal District Judge at Ahmedabad to transfer the Civil Suit No.4 of 1997 to the appropriate District Court. The pertinent question that arose in the instant case was whether Fast Track Courts can be equated to District Courts as per the requirements of Section 134 for hearing and adjudicating a case of trademark infringement or passing off.

The Civil Suit in question was filed by Cadila Healthcare against M/s. Lupin limited under the provisions of Trademarks Act for ad-interim injunction restraining the defendants from sale, manufacture and marketing of the products under the trademarks CZ-3 and/or CZ and/or any other trademark which is deceptively similar or in imitation of the plaintiff’s trademark CX-5 and/or CX-4 and/or CX-3, either through its employees, agents, stockists, distributors, dealers or retailers.

The Suit was originally filed for passing off action but was subsequently amended and action for infringement of trademark was included. Upon issuance of notice by the court, the defendants filed their reply. The Fifth Extra Assistant Judge of Ahmedabad (Rural) however dismissed the application for ad-interim injunction. Against this order an appeal was filed.

In this appeal the court passed an order directing the trial court to expedite the hearing of the suit and to dispose it of within a period of six months. But the matter could not be disposed of and finally was transferred to the Fast Track Court. In view of this development the present application was filed.

The applicant stated that as per Section 134 of the Trademarks Act, 1999, a suit for infringement and passing off action can be instituted only in a court, which is not inferior to a District Court having the jurisdiction to try the suit and that the Fast Track Court lacks the jurisdiction to try the same and hence any judgment or order, which may be passed by the Fast Track Court, may be, ultimately of no consequence. It was prayed that directions be issued to bring the said suit before the District Court, Ahmedabad (Rural).

Since the case involved an important question of law regarding adjudication and administration of District Court, the Registrar General of the High Court of Gujarat was also joined as a party respondent by the order of the Court. The learned Counsel appearing on behalf of the Registrar General in order to substantiate his arguments brought to the attention of the Court, the concerned provisions of the Indian Constitution.

Accordingly Article 233 through Article236 was discussed. Article 233 deals with the appointment of district judges. It reads:

"(1) Appointments of persons to be, and the posting and promotion of, district judges in any State shall be made by the Governor of the State in consultation with the High Court exercising jurisdiction in relation to such State.

(2) A person not already in the service of of the Union or of the State shall only be eligible to be appointed a district judge if he has been for not less than seven years an advocate or a pleader and is recommended by the High Court for appointment.”

Article 234 provides recruitment of persons other than district judges to the judicial service and Article 235, Control over subordinate courts. Article 236 deals with interpretation. It reads:

“In this Chapter –

(a) the expression "district judge" includes judge of a city civil court, additional district judge, joint district judge, assistant district judge, chief judge of a small cause court, chief presidency magistrate, additional chief presidency magistrate, sessions judge, additional sessions judge and assistant sessions judge;

(b) the expression "judicial service" means a service consisting exclusively of persons intended to fill the post of district judge and other civil judicial posts inferior to the post of district judge.”

Apart from this, while discussing the provisions of Fast Track Courts notification issued by the State of Gujarat, as well as the provisions of Gujarat Civil Courts Act, 1869, Section 2(d) of the Code of Civil Procedure was also referred to with regard to the definition of ‘district’. According to Section 2(d) of the Code of Civil Procedure:

“District means the local limits of the jurisdiction of a principal Civil Court of original jurisdiction (hereinafter called a “District Court”), and includes the local limits of the ordinary original civil jurisdiction of a High Court.”

Thereafter section 134 of the Trademarks Act was discussed and the judgment of the Allahabad High Court in A.K. Enterprises, Agra v. Sterling Machine Tools, Agra and another, 2000 PTC (20) 401 was also placed before the court.

The arguments of the learned counsel for the original plaintiff were that the Fast Track Court cannot be equated with District Court and when the Trademarks Act specifically provides that the suit has to be tried by District Judge or Additional District Judge, adjudication by the Fast Track Court is without jurisdiction.

The court after considering the concerned provisions placed before it and also referring to the observations in Brij Mohan Lal v. Union of India & Others, (2002) 5 SCC 1 where the apex court had considered the scheme of Fast Track courts vis-à-vis the appointment of District Judges and in All India Judges Association & Ors. V. Union of India & Ors. (2004) 12 SCC 444, observed that the procedure and nature of appointment of District Judges and that of the Fast Track Court Judges are the same and the only difference being that the District Judges are permanent whereas the Fast Track Court Judges are appointed on a temporary or ad-hoc basis.

The court further observed that the intention of the legislature has been to create the post of Additional Judges according to the requirement in the district so as to expedite the disposal of the cases by the District Judges with the help of Additional Judges. Thus when the Fast Track Court Judges decide cases, they do so as Additional Judges. Hence, they are a part and parcel of District Judges and are covered within the definition of District Court.

The court further referring to the terms ‘any court inferior to a District Court’ used in Section 134 of the Act clarified that the restriction imposed under section 134 of the Act is with respect to judicial exercise of power and not on administrative side. Further as in the case of an appeal from a District Court, an appeal from the Fast Track Court also lies to the High Court.

Thus the Court while rejecting the application held that Fast Track Court has the jurisdiction to hear and adjudicate trademark proceedings and hence the Principal District judge was requested to assign the matter to any judge including Judges of Fast Track Courts.