Rio Children's Hospital Pvt Ltd (represented by its Managing Director Dr. M. Saravanan) v. Rajesh Jayaraj trading as Rio Scans and Labs

The petitioner, Rio Children's Hospital Pvt Ltd, represented by its Managing Director Dr. M. Saravanan and based in Madurai, filed O.S. No. 302 of 2022 before the Principal District Court, Madurai, against the respondent Rajesh Jayaraj (trading as Rio Scans and Labs, Tirunelveli), seeking reliefs for infringement and passing off in relation to the trade mark 'RIO'. Subsequently, the petitioner instituted O.P.(TM) No.64 of 2025 before the Madras High Court seeking rectification and removal of the respondent's registered trade mark 'RIO SCANS AND LABS' (Application No. 5183815) from the Register of Trade Marks. By way of (TM) A No. 8 of 2026, the petitioner sought transfer of the civil suit from the Principal District Court, Madurai to the Intellectual Property Division of the Madras High Court for consolidation with the rectification petition, joint trial, and consolidated adjudication.

Learned counsel for the petitioner submitted that the application was maintainable under Section 24 of the Code of Civil Procedure, 1908 read with Rule 14 of the Madras High Court Intellectual Property Rights Division Rules, 2022. It was contended that both proceedings arose from competing marks containing the word 'RIO', that the validity of the respondent's registration was directly questioned in the rectification petition, and that the same registration formed the basis of the rival claims in the infringement suit. The petitioner further argued that since issues in the civil suit had not yet been framed, transfer at that stage would cause no prejudice, and that Section 124 of the Trade Marks Act, 1999 was merely an enabling provision for stay and did not preclude transfer and consolidation under Rule 14. Reliance was placed on King Point Enterprise Co. Ltd. v. Maarg India, M/s. Woltop India Pvt. Ltd. v. Union of India, Arif Elahi v. Martin Davis, and KRBL Limited v. Fair Food Overseas Pvt. Ltd. to contend that consolidation would avoid multiplicity of proceedings and conflicting decisions.

The respondent opposed the transfer. The court examined the scope of Rule 14(1) and Rule 14(2) of the Madras High Court Intellectual Property Rights Division Rules, 2022 and observed that the use of the expressions 'wherever appropriate' and 'if the Court is of the opinion' made consolidation and transfer discretionary. The court noted that while the suit and the rectification petition were connected, the nature and scope of the two proceedings were different: the rectification petition concerned the validity and continuance of the respondent's registration, whereas the civil suit sought reliefs for infringement and passing off. The court further observed that the passing off action survived independently and had to be decided on the basis of prior use, goodwill, reputation, misrepresentation, and likelihood of deception, requiring considerable oral and documentary evidence irrespective of the outcome of the rectification proceeding.

The court held that the Trade Marks Act, 1999 itself contained a statutory mechanism under Section 124 to regulate an infringement suit when the validity of registration was questioned, and that the availability of the power under Rule 14 did not render that statutory mechanism redundant. The two provisions had to operate harmoniously. The court rejected the contention that the mere pendency of a rectification proceeding concerning the same mark was sufficient to transfer the civil suit, observing that such an automatic consequence was not contemplated by Rule 14. The decisions cited by the petitioner were held to recognise the power of consolidation without laying down that transfer must necessarily follow in every case involving the same or related trade marks.

The court further noted that the civil suit had been instituted in 2022 before the Principal District Court, Madurai, a forum chosen by the petitioner itself, while the rectification petition was filed subsequently in 2025. No sufficient circumstance had been demonstrated to show that continuation of the suit before the original court would result in failure of justice or render effective adjudication impossible. The fact that issues had not yet been framed was held to be relevant but not by itself sufficient to order transfer. The court was therefore not persuaded that O.S. No. 302 of 2022 should be withdrawn from the Principal District Court, Madurai and transferred to the Intellectual Property Division at Chennai. The rectification petition was permitted to proceed independently, and the court dealing with the suit was left to regulate the proceedings in accordance with law, including the statutory consequences arising from the rectification proceedings.

In the result, (TM) A No. 8 of 2026 was dismissed, with no order as to costs.