Supreme Court Refers to a Larger Bench Whether a Court Below the District Court Can Try a Trade Mark Infringement Suit
Background and Facts
Where a State has notified Civil Judges (Senior Division) as Commercial Courts, a trade mark infringement suit is now being tried by a court that Section 134 of the Trade Marks Act, 1999 appears to put out of bounds. The Supreme Court has referred the conflict to a larger bench. The order was made in I.S.D.S. Private Limited v. Khemka Food Products Private Limited and was reported on September 21, 2026.
The underlying suit, Commercial Suit No. 11 of 2023, is pending before the Civil Judge (Senior Division)-I at Jamshedpur. Jharkhand has notified Civil Judges (Senior Division) as Commercial Courts with pecuniary jurisdiction between Rs 3 lakh and Rs 1 crore. A trade mark suit valued within that band therefore goes to a Civil Judge, while a suit valued below Rs 3 lakh falls outside the Commercial Courts Act, 2015 altogether and must go to the District Court under Section 134. The hierarchy is inverted: the smaller claim reaches the senior court.
The Bench of Justice J.B. Pardiwala and Justice K. Vinod Chandran stayed the Jamshedpur suit and directed that the question be placed before the Chief Justice of India for the constitution of a larger bench.
Key Legal Issue
Whether a notification constituting a Civil Judge (Senior Division) as a Commercial Court under Section 3 of the Commercial Courts Act, 2015 can displace the bar in Section 134 of the Trade Marks Act, 1999 against instituting an infringement or passing off suit in any court inferior to a District Court.
The Supreme Court's Order
The Court did not decide the question. It identified a conflict between two of its own decisions and referred it, observing that
"the legislative imprimatur cannot be diluted by the notifications issued by the High Courts". That observation frames the issue but does not resolve it, because the notifications in question are issued under a statute of equal authority.
What the Two Statutes Actually Say
Section 134(1) of the Trade Marks Act, 1999 provides that no suit for infringement of a registered trade mark, for any right in a registered trade mark, or for passing off shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. Sub-section (2) then widens the territorial reach of that District Court by allowing the plaintiff to sue where it actually and voluntarily resides or carries on business or personally works for gain.
The Commercial Courts Act, 2015 pulls in the opposite direction. Section 2(1)(c)(xvii) brings disputes over intellectual property rights relating to registered and unregistered trade marks squarely within the definition of a commercial dispute. Section 3(1) permits a State Government, after consultation with the High Court, to constitute Commercial Courts at district level. Section 3(3) is the provision that creates the difficulty: it permits the appointment of a Commercial Court judge
"either at the level of District Judge or a court below the level of a District Judge". The statute therefore contemplates in terms the very forum that Section 134 forbids.
Section 21 supplies the collision. It gives the Commercial Courts Act effect notwithstanding anything inconsistent contained in any other law for the time being in force. Section 13(1) confirms that Parliament had sub-District Judge Commercial Courts in contemplation, because it provides an appeal to the Commercial Appellate Court from the judgment or order of a Commercial Court below the level of a District Judge.
The Conflict Between the Two Decisions
The first decision is Kandla Export Corporation v. OCI Corporation, Civil Appeal Nos. 1661 to 1663 of 2018, decided on February 7, 2018 by a Bench of Justice R.F. Nariman and Justice Navin Sinha. The Court there treated Section 50 of the Arbitration and Conciliation Act, 1996 as a self-contained code on appeals from orders enforcing foreign awards, and held that Section 13(1) of the Commercial Courts Act, being a general provision, would not apply to cases covered by it.
The second is Jaycee Housing Private Limited v. Registrar (General), Orissa High Court, Cuttack, decided on October 19, 2022 in Civil Appeals Nos. 6876 to 6878 of 2022 by a Bench of Justice M.R. Shah and Justice Krishna Murari. Reading Section 10(3) of the Commercial Courts Act, which directs that applications and appeals arising out of a domestic arbitration that would ordinarily lie before the principal civil court of original jurisdiction in a district shall be filed in and heard by the Commercial Court exercising territorial jurisdiction, the Court held that Commercial Courts constituted under Section 3, including those below the level of District Judge, may hear such applications.
The two decisions are not formally irreconcilable, because one concerns appeals and the other original jurisdiction. They pull in opposite directions on method: one asks whether the earlier special Act is a complete code, the other whether the later Act with an overriding clause has occupied the field.
Why the Problem Is Confined to One Class of Notification
The conflict does not arise wherever Commercial Courts exist. Where a State has notified District Courts or courts at District Judge level as Commercial Courts, nothing in Section 134 is offended, because the forum is not inferior to a District Court. The difficulty is created only by notifications that designate Civil Judges (Senior Division), as Jharkhand has done.
The practical consequence is that the correct forum for a trade mark suit now differs from State to State according to the terms of a notification rather than the terms of the Trade Marks Act. Until the larger bench rules, a plaintiff in such a State faces a real risk that the suit is returned, or worse, that a decree is later challenged as a nullity for want of jurisdiction.
Practice Notes
In practice, the reference changes how a trade mark suit should be filed in the affected States:
Check the State notification before drafting: The question is not whether a Commercial Court exists but at what level it has been constituted under Section 3. Where it sits at District Judge level, the conflict does not arise and the ordinary practice continues.
Plead jurisdiction in the alternative: Where the Commercial Court is a Civil Judge (Senior Division), plead the basis on which that court has jurisdiction and, in the alternative, the basis on which the District Court would. The pleading costs nothing now and preserves the position.
Value the suit deliberately: Valuation decides which side of the Rs 3 lakh threshold in Section 2(1)(i) the suit falls on, and therefore whether the Commercial Courts Act applies at all. A valuation chosen casually may select the forum by accident.
Take the objection early or not at all: A jurisdictional objection raised after a contested trial invites the answer that the objecting party took its chance. Take it at the threshold and record it.
Weigh the appellate consequence: Section 13(1) routes an appeal from a Commercial Court below District Judge level to the Commercial Appellate Court. Where the choice of forum is genuinely open, the appellate route it produces is a legitimate consideration.
Key Provisions Discussed
Section 134 of the Trade Marks Act, 1999: No suit for infringement of a registered trade mark, for any right in a registered trade mark, or for passing off shall be instituted in any court inferior to a District Court having jurisdiction to try the suit, with sub-section (2) extending that court to the place where the plaintiff resides or carries on business.
Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015: Disputes over intellectual property rights relating to registered and unregistered trade marks, copyright, patents, designs, domain names, geographical indications and semiconductor integrated circuits are commercial disputes.
Section 3 of the Commercial Courts Act, 2015: Constitution of Commercial Courts at district level by the State Government after consultation with the High Court, with sub-section (3) permitting appointment of a judge either at the level of District Judge or at a court below that level.
Section 10(3) of the Commercial Courts Act, 2015: Applications and appeals arising out of a domestic arbitration that would ordinarily lie before the principal civil court of original jurisdiction in a district are to be filed in and heard by the Commercial Court exercising territorial jurisdiction.
Section 13(1) of the Commercial Courts Act, 2015: An appeal to the Commercial Appellate Court from the judgment or order of a Commercial Court below the level of a District Judge, within sixty days.
Section 21 of the Commercial Courts Act, 2015: The Act has effect notwithstanding anything inconsistent contained in any other law for the time being in force.
Case Details
Case: I.S.D.S. Private Limited v. Khemka Food Products Private Limited
Court: Supreme Court of India
Bench: Justice J.B. Pardiwala and Justice K. Vinod Chandran
Reported: September 21, 2026
Suit Below: Commercial Suit No. 11 of 2023, Civil Judge (Senior Division)-I, Jamshedpur, stayed
Outcome: The question referred to a larger bench, to be placed before the Chief Justice of India for constitution of the bench.
Sources and References
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Readers should consult a qualified legal professional for advice specific to their circumstances.
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