We had recently written about an order that was passed by the Controller General of Patent, designs and Trademarks restricting the amendments that can be made to a trademark application and hoped that IPAA would appeal this matter. It has come to our notice that IPAA in fact took up this matter before the Delhi High Court and the Court quashed the order passed by the Controller General of Patent, Designs and Trademarks on October 9, 2014.

The petitioners argued that by virtue of Section 22 of the Trademarks Act, Amendments to trademark – Orderthe nature of amendments to applications for registration of trademarks cannot be limited by the Controller General (CG). However, the Court dealt with a different question and suggested that what needs to be looked into is whether CG can direct that amendments will not be allowed when the statute grants power to the Registrar of Trademarks to amend or correct ‘any error’.  They cited judicial precedents stating that quasi-judicial bodies are not required to act under the guidelines or directives and if these guidelines are administrative in nature, the CG may issue such guidelines.

The Court also laid down the powers exercised by the Registrar under Section 22 of the Act in order to come to the conclusion that the office is a quasi-judicial one. They made reference to the definition of the Registrar as per Section 2 (ze) as a Tribunal, powers of the civil court entrusted in the Registrar, discretionary powers under Section 128, power to grant remedy in an appeal and lastly, powers vested in the Registrar by virtue of Section 22.

Through this the Court came to the conclusion that the Registrar is a quasi-judicial and not administrative or adjudicatory authority. In furtherance to this, they stated that the Registrar has the power to give opportunity to the parties to be heard and decide based on objective considerations.

On the point of whether the CG can make such orders, the Court opined that since the Registrar is a quasi-judicial body, it cannot take dictates from anyone, even if it is a person in a superior position. They made reference to the case of The Joint Action Committee of Airlines Pilots Associations of India Vs. The Director General of Civil Aviation where it was held that even in a democratic set-up, people in key positions cannot take decisions and expect them to be carried out if those commands have no sanctity in law. Drawing an analogy to the present petition, they stated that if such decisions are acted upon by a statutory authority (the Registrar in this case), it would be patently illegal.

They called into question the argument made by the Respondent that there is no bar on the rights of the applicants because they can abandon their application and file a fresh application with the proposed amendments. The Court drew an analogy from a judicial precedent and raised a question on whether the Chief Justice can issue a general directions to the High Court judges as to what kind of pleadings and amendments should be allowed. They answered in the negative and accordingly stated that the order of the CG was on the same footing and that it cannot stand.

The last para of the decision which sums up the case in point states as follows:

The Registrar of Trademarks has to, on case to case basis, decide whether the amendment claimed, even if to prepone the date of commencement of use of trademark sought to be registered, is as an afterthought, to meet the objection filed to registration and thus in abuse of the procedure for amendment or bona fide and there can be no general order that no such amendment shall be allowed.

I’m sure this decision of the Delhi High Court comes as a relief to trademark lawyers in India who have been anxious to know the fate of pending amendments in the trademarks applications filed by them. We only hope that the Registry deals with these amendments in a swift manner and these amendments (if allowed by the Registry) see the light of day!

This article has been authored by Nikita, an IP Law practitioner.