Madras High Court
Jk Medical Systems Pvt. Ltd vs Union Of India on 13 October, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Order reserved on 29.08.2023
Order pronounced on 13.10.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P. Nos.3364 & 3366 of 2020, 10461 of 2021 & 15279 of 2022
&
W.M.P. Nos.3909 & 3910 of 2020 & 14454 of 2022
JK Medical Systems Pvt. Ltd.,
Represented by its Director R.Sahoo,
No.1068, Munusamy Salai,
West KK Nagar,
Chennai - 600 078. ... Petitioner in
W.P.No.3364/2020
The Vivekananda Match Company
Represented by its Partner K.Prithiviraj,
No.9D, Chairman NPSN Arumugam Road,
Sivakasi-626123
Tamilnadu ... Petitioner in
W.P.No.3366/2020
JK Engineering & Technology,
Represented by their partner Rabinarayan Panda,
No.85, 2nd Floor, Rajkilpakkam,
East Tambaram,
Chennai 600 126. ...Petitioner in
W.P.No.10461/2021
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W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
V.Paranthaman,
Proprietor of Stone Age Super Foods
No.152/35, 2nd Floor,
Lotus Colony, N Block,
6th Avenue, Anna Nagar,
Chennai-600 102. ...Petitioner in
W.P.No.15279/2022
-vs-
1. Union of India,
Represented by the Secretary,
Department for Promotion of Industry & Internal Trade
(Ministry of Commerce & Industry)
Udyog Bhawan,
New Delhi – 110 011.
2. The Controller General of Patents, Designs & Trade Marks,
Office of the Trade Marks Registry,
Boundhik Sampada Bhawan,
Near Antop Hill Head Post Office,
S.M.Road, Antop Hill,
Mumbai-400 037.
3. The Assistant Registrar,
Office of the Trade Marks Registry,
Intellectual Property Rights Buildings,
GST Road, Guindy,
Chennai-600 032.
4. The Senior Examiner of Trade Marks
Office of the Trade Marks Registry,
Intellectual Property Rights Buildings,
GST Road, Guindy, Chennai-600 032. ... Respondents in
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W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
W.P.Nos.3364&3366 of
2020 & 10461 of 2021
The Senior Examiner of Trade Marks
(Mr.Devender Kumar)
Office of the Trade Marks Registry,
Intellectual Property Rights Buildings,
GST Road, Guindy,
Chennai-600 032. ... Respondent in
W.P.No.15279/2022
PRAYER in W.P.No.3364 of 2020: Writ Petition filed under Article
226 of the Constitution of India, to issue a writ of Certiorarified
Mandamus calling for the records pertaining to the impugned order
dated 27.09.2019 passed in Trade Mark Application No.3494810 on
the file of the 4th respondent and to quash the same and directing the
2nd and 3rd respondents to restore the status of petitioner's Trade
Mark Application No.3494810 into the e-register of pending trade
mark applications and re-post the same for Hearing under Rule 115
of Trade Marks Rules, 2017, either before the Assistant or Deputy
Registrar, to hear the submissions to be made by the
petitioner/Trade Mark applicant or on their behalf in accordance
with Sec.128 of the Trade Marks Act, 1999, in order to pass 'speaking'
or reasoning' order under Sec.18(5) of the Trade Marks Act, 1999,
within a time frame as may be fixed by this Court.
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PRAYER in W.P.No.3366 of 2020: Writ Petition filed under Article
226 of the Constitution of India, to issue a writ of Certiorarified
Mandamus calling for the records pertaining to the impugned order
dated 17.10.2019 passed in Trade Mark Application No.3579998 on
the file of the 4th respondent and to quash the same and directing the
2nd and 3rd respondents to restore the status of Trade Mark
Application No.3579998 into the e-register of pending applications
and re-post the same for Hearing under Rule 115 of Trade Marks
Rules, 2017, either before the Assistant or Deputy Registrar, to hear
the submissions to be made by the petitioner/Trade Mark applicant
or on their behalf in accordance with Sec.128 of the Trade Marks Act,
1999, in order to pass 'speaking' or reasoning' order under Sec.18(5)
of the Trade Marks Act, 1999, within a time frame as may be fixed by
this Court.
PRAYER in W.P.No.10461 of 2021: Writ Petition filed under Article
226 of the Constitution of India, to issue a writ of Certiorarified
Mandamus calling for the records pertaining to the impugned order
dated 18.05.2020 passed in Trade Mark Application No.3950632 on
the file of the 4th respondent and to quash the same and directing the
2nd and 3rd respondents to restore the status of Trade Mark
Application No.3950632 into the e-register of pending applications
and re-post the same for Hearing under Rule 115 of Trade Marks
Rules, 2017, either before the Assistant or Deputy Registrar, to hear
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the submissions to be made by the petitioner/Trade Mark applicant
or on their behalf in accordance with Sec.128 of the Trade Marks Act,
1999, in order to pass 'speaking' or reasoning' order under Sec.18(5)
of the Trade Marks Act, 1999, within a time frame as may be fixe0d
by this Court.
PRAYER in W.P.No.15279 of 2022: Writ Petition filed under Article
226 of the Constitution of India, to issue a writ of Certiorarified
Mandamus calling for the records pertaining to the impugned order
dated 12.11.2021 passed in Trade Mark Application No.4512449 on
the file of the respondent and to quash the same and further direct
the respondents to restore the e-status of Trade Mark Application
No.4512449 prior to the said date 12.11.2021 in the E-Register of
Trade Marks in order to re-post the same before such other officers
designated and suffixed with appellation of 'Registrar' prescribed
and employed under Sec.3(2) of the Trade Marks Act, 1999, for
passing further orders under the provisions of the Trade Marks Act,
1999, within a time frame as may be fixed by this Court.
For Petitioner:
Mr.R.Sathish Kumar
in WP Nos.3364 & Mr.N.R.Srinath
3366/2020 for P.C.N.Ragupathy
in WP Nos.10461/2021
& 15279/2022 : Mr.G.N.Shukumar
Mr.T.K.Rajesh
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W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
For Respondents : Mr.AR.L.Sundaresan, ASGI
Assisted by
in WP Nos.3364 & : Mr.G.Ilangovan, CGSC
3366/2020
in WP No.10461/2021 : Mr.K.Subbu Ranga Bharathi,
CGSC
in WP No.15279/2022: Mr.R.Subramanian, CGSC
**********
COMMON ORDER
In each of these writ petitions, the order passed by the Senior Examiner concerned is challenged on the ground that such Senior Examiner is not empowered to reject an application for registration of a Trade Mark. Since a common legal issue arises for consideration in all these writ petitions, they are considered and disposed of by this common order.
2. Oral arguments on behalf of the petitioner in W.P.Nos.3364 & 3366 of 2020 were addressed by Mr.R.Sathish Kumar, learned 6/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 counsel; and for the petitioner in W.P.Nos.10461 of 2021 & 15279 of 2022 by Mr.G.N.Shukumar, learned counsel. Oral arguments on behalf of the respondents in all the writ petitions were advanced by Mr.AR.L.Sundaresan, learned Additional Solicitor General of India, and he was assisted by Mr.G.Ilangovan, learned Central Government Standing Counsel in W.P.Nos.3364 & 3366 of 2020; Mr.K.Subbu Ranga Bharathi, Central Government Standing Counsel in W.P.No.10461 of 2021; and Mr.R.Subramanian, learned Central Government Standing Counsel in W.P.No.15279 of 2022.
3. By inviting my attention to Section 3(1) of the Trade Marks Act, 1999 (the Trade Marks Act), Mr.Sathish Kumar submitted that the Controller-General of Patents, Designs and Trade Marks (the CGPDTM) is appointed by the Central Government by notification and that the CGPDTM is the Registrar of Trade Marks for purposes of the Trade Marks Act. Since the CGPDTM is the Registrar of Trade Marks, learned counsel submitted that sub-section 2 of Section 3 7/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 enables the Central Government to appoint other officers to discharge the functions of the Registrar under his superintendence and direction. According to Mr.Sathish Kumar, the officers of the Trade Marks Registry, in hierarchical order, are: the Registrar, the Joint Registrar, the Deputy Registrar, the Assistant Registrar, the Senior Examiner and the Examiner.
4. He also submitted that the Central Government is required to appoint officers for the specific purpose of discharging the functions enumerated in the order of appointment. Consequently, unless the order of appointment empowers the officer concerned to exercise quasi-judicial powers and functions, he submitted that such functions cannot be exercised by the officer merely on instructions by the Registrar and by relying on sub-section 2 of Section 3. By referring to the information booklet issued by the Trade Marks Registry, learned counsel submitted that the information booklet sets out the powers and functions of each officer in the Trade Marks 8/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 Registry. As regards the Senior Joint Registrar of Trade Marks & Geographical Indications (GI), Joint Registrar of Trade Marks & GI, Deputy Registrar of Trade Marks & GI, and Assistant Registrar of Trade Marks & GI, learned counsel pointed out that the information booklet expressly records that the above mentioned officers are entitled to adjudicate contested matters and issue speaking orders/decisions. By contrast, learned counsel submitted that the Senior Examiner and the Examiner of Trade Marks and GI are not empowered to adjudicate contested matters or issue speaking orders/decisions. He further submitted that the information booklet specifies that the said officers are authorized to accept Trade Mark applications for registration but does not empower them to reject such applications. Consequently, he contended that the order of rejection issued by the respective Senior Examiner in these writ petitions is without jurisdiction and liable to be interfered with. 9/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
5. In support of these contentions, learned counsel referred to and relied upon the following judgments, which are cited along with the principles laid down therein:
(i) M/s.Bright Bros. (Pvt.) Ltd. Bombay v. J.K.Sayani, AIR 1976 MADRAS 55, for the proposition that words in a statute should be given its normal and ordinary meaning and not disregarded as being superfluous or otiose.
(ii) K.L.Sahgal v. State of U.P. & Ors. MANU/UP/0132/1965, where, at paragraph 7, the Full Bench of the Allahabad High Court held that (i) decisions in disputes between two or more contesting parties qualify as quasi-judicial decisions or quasi-judicial acts; and
(ii) decisions where the contest is between the authority and a party would qualify as quasi-judicial decisions or quasi-judicial acts, provided such decisions would unfairly prejudice a party and the authority is required by the statute to act judicially.10/29
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(iii) Indian National Congress (I) v. Institute of Social Welfare and Others (Indian National Congress), MANU/SC/0451/2002, wherein, at paragraphs 27 and 28, the Hon'ble Supreme Court held that the distinction between an administrative act and a quasi-judicial act is that, in case of a quasi-judicial function under an enactment, the statutory authority is required to act judicially. The Court further held that if the authority is required to conduct an enquiry before taking a decision, the authority is functioning as a quasi-judicial authority.
(iv) The Joint Action Committee of Airlines Pilots Associations of India and Others v. The Director General of Civil Aviation and Others, MANU/SC/0543/2011, wherein, at paragraph 27, the Hon'ble Supreme Court held that only the authority vested with power to act under the statute should exercise discretion by following the procedure prescribed therein and that interference by an authority upon whom the statute does not confer jurisdiction is wholly unwarranted in law.
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6. Therefore, Mr.Sathish Kumar concluded his submissions by reiterating that the impugned orders of the Senior Examiner are unsustainable and liable to be set aside for lack of jurisdiction.
7. Mr.G.N.Shukumar addressed arguments in the other writ petitions. By referring to sub-section 5 of Section 18 of the Trade Marks Act, learned counsel submitted that the Registrar is required to record in writing the grounds for refusal or conditional acceptance. According to him, the said requirement is not applicable when an application for registration of Trade Mark is accepted for advertisement. Consequently, he contended that the Examiner or the Senior Examiner, as the case may be, is empowered to accept an application for advertisement but not to refuse such application. In support of this contention, he referred to the notification published by the office of the CGPDTM with regard to the recruitment of Assistant Registrars and submitted that a master's degree in law from 12/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 a recognized university is an essential academic qualification for officers up to the level of Assistant Registrar of Trade Marks and GI, whereas for the Senior Examiner of Trade Marks and GI and Examiner of Trade Marks and GI, a degree in law from a recognized university is sufficient.
8. By comparing and contrasting the Trade Marks Act, particularly Section 3(2) thereof, with Section 19 of the Securities and Exchange Board of India Act, 1992 (the SEBI Act) and Section 2(75) of the Companies Act, 2013 (CA 2013), he contended that Section 3(2) provides for limited delegation unlike the SEBI Act or CA 2013. Hence, he concluded his submissions by reiterating that the Senior Examiner of Trade Marks & GI is not entitled to reject an application for registration of a Trade Mark.
9. Mr.AR.L.Sundaresan, learned ASGI, made submissions in response and to the contrary. At the outset, he pointed out that sub- 13/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 section 2 of Section 3 of the Trade Marks Act is not under challenge. Likewise, he submitted that the notification issued under sub-section 2 of Section 3 is also not under challenge. By focusing on the language of sub-section 2 of Section 3, learned ASGI pointed out that the Central Government is empowered to appoint officers, other than the Registrar as defined in Section 3(1) of the Trade Marks Act, for the purposes of discharging the functions of the Registrar. He also pointed out that the text of sub-section 2 of Section 3 makes it clear that there is no restriction with regard to the designation of such officers. As regards the meaning of the word 'Registrar', learned ASGI referred to Section 2(2)(d) of the Trade Marks Act and pointed out that it means the CGPDTM. With regard to the information booklet on which Mr. R. Sathish Kumar placed reliance, he submitted that the reference to tribunal therein was on account of the expression “tribunal” being previously used in the Trade Marks Act and defined in Section 2(ze), which was deleted under Act 33 of 2021. 14/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
10. As regards the powers of the Registrar, he placed reliance on paragraphs 20 to 22 of the judgment of the Hon'ble Supreme Court in Jagatjit Industries Ltd. v. Intellectual Property Appellate Board and Others, (2016) 4 SCC 381.
11. With regard to the contention that only officers up to the rank of Assistant Registrar of Trade Marks and GI may refuse an application for registration, learned ASGI submitted that no such restriction can be traced to the Trade Marks Act and that, as per sub- sections 4 and 5 of Section 18, both the power of acceptance and refusal are conferred on the Registrar. Learned ASGI further contended that such power may be delegated to any officer appointed to exercise the powers of the Registrar under sub-section 2 of Section 3, irrespective of their designation. By referring to Rule 33 (8) of the Trade Mark Rules, 2017 (the Trade Marks Rules), learned ASGI submitted that sub-rule 8 empowers the Registrar to pass an appropriate order without limiting such order to an order of 15/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 acceptance. After pointing out that such order may be appealed against by following the procedure prescribed in Rule 36, learned ASGI relied on sub-rule 2 of Rule 115 to underscore the fact that any officer may exercise the power of the Registrar with regard to hearing matters under the Trade Marks Act.
12. By way of rejoinder, Mr.Sathish Kumar submitted that the power of the Senior Examiner to issue the impugned order cannot be presumed and that the respondents have failed to discharge the burden of establishing that the Senior Examiner concerned was empowered, under the respective appointment order of the Central Government, to exercise the function of not only accepting an application for registration but also refusing such application. Mr.Shukumar submitted that the acceptance of an application for registration is an administrative function, whereas rejection is a quasi-judicial function. By relying upon the judgment of the Delhi High Court in Mount Everest Mineral Water Ltd. v. Bisleri International 16/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 Pvt. Ltd., MANU/DE/0410/2010, particularly paragraphs 15 to 17 thereof, Mr.Shukumar submitted that the Delhi High Court held that the Senior Examiner of Trade Marks cannot appear in legal proceedings pursuant to Section 98 of the Trade Marks Act unless the order of appointment of the Central Government authorized him to do so and the Registrar delegated such function to him. By further relying on the manual issued in respect of GI proceedings, learned counsel submitted that only the Joint Registrar is entitled to refuse an application for registration of GI.
13. Upon considering the contentions of the contesting parties, it is evident that this case hinges on the interpretation of Section 3 of the Trade Marks Act. Section 3 is set out below:
“3. Appointment of Registrar and other officers.— (1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.17/29
https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 (2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge.” From sub-section 1 of Section 3, the conclusion that follows is that the CGPDTM is the Registrar of Trade Marks for the purposes of the Trade Marks Act. The CGPDTM, who is at the hierarchical apex, is in charge of the offices dealing with patents, designs and trade marks. It follows that the Registrar, as defined in Section 3(1), cannot exercise all the powers vested on him under the Trade Marks Act. Thus, the design and scheme of the Act makes delegation by the Registrar imperative for carrying out the functions prescribed under the Act. Such delegation is enabled by sub-section 2 of Section 3. In response to a question, both learned counsel for the respective petitioner and learned ASGI concurred that there is no other provision in the Trade Marks Act that enables delegation.
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14. In order to determine the issues raised in these writ petitions, it is pertinent to break-up sub-section 2 of Section 3 into its constituents and analyse the same closely. I set out below my analysis of sub-section 2 of Section 3:
(i) The use of the expression “other officers” indicates that these are officers other than the Registrar/CGPDTM, albeit the word “officers” indicates that they should be from the cadre of officers.
(ii) The appointment of other officers by the Central Government should be for purposes of discharging the functions of the Registrar under the Trade Marks Act. This is clear from the expression “for the purpose of discharging... such functions of the Registrar under this Act”.
(iii) The use of the expression “with such designations as it thinks fit” indicates that there are no fetters or limitations with regard to the designation of the officers appointed by the Central Government for the above purpose. Consequently, the Central Government may appoint officers of any designation to perform the 19/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 functions of the Registrar. In effect, this means that even officers with the designation of Senior Examiner or Examiner may be appointed for the purpose of discharging the functions of the Registrar.
(iv) sub-section 2 prescribes the requirement that the other officers appointed to discharge the functions of the Registrar are required to function under the superintendence and direction of the Registrar. This leads to the question whether quasi-judicial functions can be exercised by an officer of the Trade Mark Registry under the superintendence and direction of the Registrar/ CGPDTM. The obvious answer is that quasi-judicial functions are required to be performed independently and not subject to the superintendence and direction of any other person, including the Registrar. It could be contended, on such basis, that sub-section 2 of Section 3 is only intended to empower the delegation of administrative powers and not quasi-judicial powers. If the Trade Marks Act had incorporated any other provision relating to delegation of quasi-judicial powers, such interpretation could have been countenanced. In the absence of any other provision enabling delegation of power in the Trade Marks Act, such interpretation would result in the break down of 20/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 the Trade Marks Act especially in view of the fact that the Registrar is defined as the CGPDTM and one individual certainly cannot perform all the quasi-judicial functions under the Trade Marks Act. Therefore, the only reasonable interpretation of the expression “under the superintendence and direction of the Registrar” is that this would apply to all administrative functions undertaken by officers, other than the Registrar, but not to quasi-judicial functions.
(v) The use of the expression “as he may from time to time authorise them to discharge” in sub-section 2 of Section 3 indicates that the other officers, who are appointed by the Central Government to exercise the functions of the Registrar, should undertake such functions only if they are authorized by the Registrar.
15. Against this backdrop, the contention of learned counsel for the respective petitioner that officers below the rank of Assistant Registrar are not authorized to reject applications for registration of Trade Marks should be addressed. The said contention was raised by relying on the information booklet published by the Registrar of 21/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 Trade Marks. The information booklet specifies the functions and duties of the officers of the Trade Marks offices. Learned counsel relied on the fact that only officers up to the rank of Deputy Registrar are categorized as tribunal and that only officers up to the rank of Assistant Registrar are authorized to issue speaking orders as per the information booklet. As a corollary, learned counsel contended that officers below the rank of Assistant Registrar cannot refuse an application for registration because sub-section 5 of Section 18 of the Trade Marks Act mandates that an order of refusal shall record in writing the grounds for refusal.
16. In order to determine the validity of the above contention, it is necessary to set out sub-sections 4 and 5 of Section 18, which are as under:
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.22/29
https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 (5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
Sub-section 4 prescribes that the Registrar is empowered to refuse, accept absolutely or conditionally any application for registration of a Trade Mark subject to the provisions of the Trade Marks Act. When read with sub-section 2 of Section 3, as interpreted earlier, this power of the Registrar may be delegated to any officer appointed by the Central Government to exercise the powers of the Registrar, provided the Registrar, in turn, authorizes such officer to exercise such powers. Since sub-section 2 of Section 3 also empowers the Central Government to appoint and authorize an officer of any designation as it thinks fit, the inference that follows is that the Senior Examiner may be appointed and authorized to exercise the functions of the Registrar under Section 18. Once so authorized, as per sub-section 4 of Section 18, the Senior Examiner may accept the 23/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 application for advertisement, conditionally or absolutely, or refuse the application. Neither Section 18 nor Section 3 impose any restrictions with regard to the power of refusal by a Senior Examiner, who is appointed by the Central Government to exercise the power of the Registrar and is thereafter authorized by the Registrar to exercise powers under sub-section 4 of Section 18.
17. The contention that the information booklet does not specify that a Senior Examiner may issue a speaking order and that, therefore, he cannot refuse an application is clearly fallacious for more than one reason. First, the information booklet does not qualify as law. Secondly, if this contention were to be accepted, officers below the rank of Assistant Registrar cannot also accept an application conditionally because Section 18(5) prescribes that reasons should be recorded in that situation, whereas the contention of learned counsel for the respective petitioner was that officers below the rank of Assistant Registrar may accept an application. 24/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022
18. Thirdly, and, most importantly, as is evident from the judgments relied upon by learned counsel for the petitioner, such as Indian National Congress, the decision of the Senior Examiner in refusing an application for registration of a Trade Mark is undoubtedly a quasi-judicial decision because a substantive right, i.e. a proprietary/property claim, is being decided. As a consequence, the officer issuing the quasi-judicial order is required to record reasons and the obligation to do so is inherent or implicit in the exercise of quasi-judicial powers. In the context of the Trade Marks Act, the obligation to record reasons in case of refusal or conditional acceptance finds statutory expression in sub-section 5 of Section 18. Put differently, whether the information booklet specifies that an officer of the Trade Marks office is empowered to issue speaking orders or not, the obligation flows both from statute and from the nature of functions exercised by a quasi-judicial authority. The conclusion that emerges is that any Senior Examiner who refuses or 25/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 conditionally accepts an application for registration of a Trade Mark may do so only by complying with the mandatory obligation of recording in writing the grounds for refusal or conditional acceptance and by referring to the materials used by him in arriving at such decision.
19. Although I concluded that the Trade Marks Act does not impose fetters on the power of the Central Government to appoint and authorize officers of any designation to undertake quasi-judicial functions, I am constrained to observe that, more often than not, officers of the Trade Marks offices do not record reasons for refusing applications for registration. Indeed, it is fairly common to find completely unreasoned copy and paste decisions merely referring to Sections 9 and 11 of the Trade Marks Act. Upon application by the party concerned under Rule 36(1) of the Trade Marks Rules, 2017, the grounds of decision are provided subsequently, quite often after considerable delay. Such practices are clearly not in consonance with 26/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 the statutory prescription under sub-section 5 of Section 18. Therefore, immediate remedial measures shall be undertaken by the Registrar of Trade Marks to ensure compliance with the statutory mandate.
20. Subject to the above direction, these writ petitions are disposed of without any order as to costs. Consequently, connected miscellaneous petitions are closed.
13.10.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation : Yes / No
kal
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W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 To
1.Union of India Represented by the Secretary, Department for Promotion of Industry & Internal Trade (Ministry of Commerce & Industry) Udyog Bhawan, New Delhi – 110 011.
2.The Controller General of Patents, Designs & Trade Marks Office of the Trade Marks Registry, Boundhik Sampada Bhawan, Near Antop Hill Head Post Office, S.M.Road, Antop Hill, Mumbai-400 037.
3. The Assistant Registrar, Office of the Trade Marks Registry, Intellectual Property Rights Buildings, GST Road, Guindy, Chgennai-600 032.
4. The Senior Examiner of Trade Marks Office of the Trade Marks Registry, Intellectual Property Rights Buildings, GST Road, Guindy, Chennai-600 032.
5. The Senior Examiner of Trade Marks (Mr.Devender Kumar) Office of the Trade Marks Registry, Intellectual Property Rights Buildings, GST Road, Guindy, Chennai-600 032.
28/29 https://www.mhc.tn.gov.in/judis W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 SENTHILKUMAR RAMAMOORTHY,J kal Pre-delivery order made in W.P.Nos.3364 & 3366 of 2020 & 10461 of 2021 & 15279 of 2022 & WMP Nos.3909 & 3910 of 2020 & 14454 of 2022 13.10.2023 29/29 https://www.mhc.tn.gov.in/judis