Madras High Court Refuses To Transfer 'RIO' Trade Mark Suit For Joint Trial With Rectification Plea

The Madras High Court on 30 September dismissed Rio Children's Hospital Pvt Ltd's plea to transfer its trade mark infringement and passing off suit against Rajesh Jayaraj from the Principal District Court, Madurai, to the High Court's Intellectual Property Division for joint trial with a rectification petition concerning the “RIO” mark.

Justice A.D. Maria Clete held that Rule 14 of the Madras High Court Intellectual Property Division Rules, 2022 cannot be invoked “as a matter of course” merely because the suit and rectification petition concern the same mark. The Bench observed:

“The use of the words 'wherever appropriate' in Rule 14(1) and 'if the Court is of the opinion' in Rule 14(2) makes it clear that consolidation and transfer are discretionary.”

Rio Children's Hospital had filed the suit against Jayaraj in 2022 alleging infringement and passing off in respect of the “RIO” mark. In 2025, the hospital filed a rectification petition seeking removal of Jayaraj's registered mark “RIO SCANS AND LABS”.

It subsequently approached the High Court under Section 24 of the Code of Civil Procedure read with Rule 14 of the Madras High Court Intellectual Property Division Rules, 2022, seeking transfer and consolidation of the proceedings. The hospital argued that the validity of the registration had a bearing on the infringement claim and that a joint trial would avoid duplication of evidence and conflicting decisions.

Jayaraj opposed the application, stating that he had used the name since 2016 and that his mark was registered on 26 May 2023 with effect from 22 October 2021. He also alleged acquiescence, delay and suppression of earlier proceedings, including the dismissal of the hospital's interim injunction application on 20 September 2024.

The Court accepted that the two proceedings were connected but noted that they differed in nature. While the rectification petition concerns the validity of the registration, the suit seeks relief for infringement and passing off.

It observed that the passing off action survives independently and turns on prior use, goodwill, reputation and likelihood of confusion. It therefore held that considerable oral and documentary evidence may be required in the suit irrespective of the outcome of the rectification proceeding. Further, the Bench cautioned against treating the pendency of a rectification proceeding as an automatic ground for transfer. It held:

“If the contention of the applicant that the mere pendency of a rectification proceeding concerning the same mark is sufficient to transfer the civil suit is accepted as a general proposition, virtually every suit for infringement in which rectification proceedings are instituted would become liable to be transferred to the Intellectual Property Division.”

The Court also noted that the hospital had itself chosen the Madurai forum. It found no circumstance showing that continuation of the suit before that court “would result in failure of justice or render effective adjudication impossible”. The fact that issues had not yet been framed was also not sufficient. The applicant had to establish that consolidation was “necessary or sufficiently expedient in the interests of justice”.

Lastly, the Bench held that Rule 14 and Section 124 of the Trade Marks Act, 1999 “have to operate harmoniously”. It left the objections concerning jurisdiction, maintainability, acquiescence and suppression to be decided by the competent court, without recording any finding on those issues.

Accordingly, the High Court dismissed the application. The rectification petition will continue before the High Court, while its effect on the suit can be worked out in accordance with the Trade Marks Act, 1999.