Recently, Clause No. 3 of a notification issued by the
Controller of Patents, Designs and Trade Marks (Controller General)
relating to amendment in application for registration of trade mark
was challenged before the Hon'ble Delhi High Court in
Intellectual Property Attorneys Association vs. Union of India
& Anr. The Hon'ble Court was pleased to set aside the
impugned Clause No.3 of the notification and held that statutory
discretion vested in quasi-judicial bodies cannot be interfered
with by higher executives. A copy of the order can be found here.
A writ petition was filed by the Petitioner challenging the
validity of Clause No. 3 of the Office Order No.16 of 2012-2013
dated 8th June, 2012 issued by the Controller General, the relevant
part of which states that "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."
The Petitioner commenced its arguments by contending that the
impugned Clause is in the nature of a 'general order' as to
which amendments to the application for registration of a trade
mark are not to be allowed. However, the court pointed out that the
real controversy which arises is that when the Statute confers on
the Registrar, the power to permit 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; and whether the power
exercised by the Registrar under Section 22 of the Act would be
quasi-judicial power or administrative power? The reason for the
same being that if Registrar's powers are quasi judicial in
nature, the Controller General even though higher in hierarchy than
the Registrar, cannot dictate to the Registrar the manner in which
the quasi-judicial power are to be exercised.
The Petitioner contended that the nature of power exercised by
the Registrar under Section 22 would be quasi-judicial in nature
since as per Section 2(ze) of the Act, Registrar is a tribunal;
Registrar has all powers of a civil court for the purpose of
receiving evidence, administering oaths, enforcing attendance of
witness, compelling discovery and production of documents and
issuing commission for examination of witnesses; Registrar before
exercising any discretionary or other powers vested in him to a
person is required to give such a person an opportunity of being
heard; Registrar's order or decision under the Act provides for
a remedy of appeal; and an order under Section 22 of the Act in the
course of registration of trademarks under Section 9 and 11 of the
Act is in exercise of a quasi-judicial power.
The Respondents argued that it is not as if the applicant is
barred from seeking registration on the basis of particulars which
he seeks to change and it is open to the applicant to abandon the
application in which amendment is sought and to file a fresh
application with changed particulars.
The court held that the power exercised by the Registrar of
Trademarks is a quasi judicial power and not an administrative
power and thus, the impugned Clause No.3 of the said Office Order
issued by the Controller General was struck down by the Hon'ble
Court. The Hon'ble Court further held that the Registrar shall
decide the applications for amendment to the application for
registration of trade mark on case to case basis.
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