INTELLECTUAL PROPERTY ATTORNEYS ASSOCIATION
v. UNION OF INDIA & ANR.
W.P.(C) No.3679 of 2014 in the High Court of Delhi at New Delhi
Date of decision: 9th October, 2014
Controller General of Patents, Designs and Trade Marks (Controller General), Government of India passed an office order dated 8th June, 2012. Clause 3 of the same read as follows:
“No request for amendment shall be allowed which seeks substantial alteration in the application for registration of trademark. The substantial amendment in the trademark, proprietor details, specification of goods/services (except deletion of some of the existing items), statement as to the use of mark shall not be permitted. However request for amendment in the proprietorship of the trademark on the basis of valid assignment or transmission; amendment in address of the applicant or in the applicant’s address for service; deletion or confinement of any item in the specification of goods/services, confinement/limitation in the area of sale of goods/rendering of service may be allowed.”
The consequence of the said Clause was, that once an applicant files an application for registration of a particular trade mark claiming a user from a particular, the said date cannot be changed at all. As a consequence, even if the applicant obtains registration and has documents to prove use from a date prior to the claimed use, he cannot change the said date. As a consequence, the date which the claimant has originally claimed as date of use, will be considered as his use and any evidence before it would be disregarded and will not be taken into account, thus affecting rights of the applicant/registered proprietor of a Trade Mark.
The reasoning of the Controller was, that the amendment seeking to amend the date of use to a prior date as claimed originally by the applicants is misused by the applicants to secure better rights.
The Present Writ Petition was thus filed, by an association of practitioners in the field of registration of trademarks, seeking quashing of the said Clause of the said order.
“When the Statute under Section 22 of the Trade Marks Act, 1999 confers on the Registrar of Trademarks the power to permit the correction of “any error‟ in or in connection with the application or to permit an amendment of the application, whether the Controller General by a general order in the nature of a guideline can direct as to which of such amendments shall not be allowed.”
The Hon’ble Court relied on Madan Mohan Lal Garg Vs. Brijmohan Lal Garg; AIR 1971 Delhi 313 and the Scheme of the Act to hold that while dealing with an application for amendment and in deciding whether or not to allow such amendment, the Registrar of Trade Marks acts quasi-judicially and thus the power is quasi-judicial and not administrative.
The Court further held that, once the power exercised by the Registrar under Section 22 is found to be quasi-judicial, the said power has to be exercised by the person yielding such quasi-judicial power and such person cannot be made to work under the dictates of his superior authority.
The Court further observed that, the Controller General, even if superior in hierarchy to the Registrar, has no statutory role to play in the matter of registration of trademark as provided in the Act and if any decision were to be taken by the Registrar of Trademarks at the behest of or on suggestion or on command of Controller General as the impugned Clause 3 purports to do, the same would be patently illegal.
“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 after thought, 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.”
Clause No.3 of the Office Order is quashed/struck down.