Authored By - Swati Agrawal (Perusing BBA LLB From Amity University Madhya Pradesh)

Lack Of Transparency And Accountability in The Non-Speaking Orders of The Indian Trade Marks Registry.

Need For Reforms To Ensure Fair And Just Decision-Making Process In The Trade Marks Registry.

META DISCRIPTION

In this article, we will delve into the flaws and drawbacks of these non-speaking orders by analyse the relevant laws and court decisions. Additionally, we will explore the need for improved examination practices to ensure the efficiency and fairness of the trademark registration system in India.

  • INTRODUCTION

The Indian Trade Marks Registry was established in the year 1940 and since then, the same has been acting as a granter, regulator and facilitator of Trade Marks throughout the country. The Trade mark Registry, having been vested with the powers of a Quasi-Judicial Authority, is bound to act in conformity with the Principals of Natural Justice which forms the fundamental premise of working of any Quasi-Judicial Authority. One aspect that deserves criticism is the rampant use of non-speaking orders by the Hon'ble Trade Marks Registry and the same has been a matter of common concern amongst the trademark applicants, trademark agent/attorneys and opponents. The lack of detailed grounds and reasons for a decree or order passed by the Hon'ble Trade Marks Registry raises a question on the validity of such orders while questioning compliance of statutory provisions, all of which directly contravene the 3rd and indispensable rule of Natural Justice i.e., Reasoned Decision.

  • UNDERSTANDING NON-SPEAKING ORDERS

Non-speaking orders, as the term suggests, are orders that lack proper justification or reasoning and do not explicitly provide comprehensive grounds or reasons for the acceptance, refusal or conditional acceptance of a trademark application. The Trade Marks Act, 1999, specifically Section 18(5)1, mandates that the Registrar of Trade Marks must record in writing the grounds for refusal or conditional acceptance, along with the materials used in arriving at the decision. In the landmark judgement of Maneka Gandhi vs Union Of India2, Hon'ble Justice Y.V Chandrachud mandated to quote "The reasons, if disclosed being open to judicial scrutiny for ascertaining their nexus with the order impounding the passport, the refusal to disclose the reasons would equally be open to the scrutiny of the court; or else, the wholesome power of a dispassionate judicial examination of executive orders could with impunity be set at naught by an obdurate determination to suppress the reasons. Law cannot permit the exercise of a power to keep the reasons undisclosed if the sole reason for doing so is to keep the reasons away from judicial scrutiny"

  • JUDICIAL INTERPRETATION OF SECTION 18(5)

To shed light on the issue of non-speaking orders, various courts in India have examined the requirements of Section 18(5)1 of the Trade Marks Act. One such case is the Intellectual Property Attorneys Association v. The Controller General of Patents, Designs and Trademarks & Anr3, where the Delhi High Court analyzed Section 18 and Rule 364 of the Trade Marks Rules, 2017. A single judge bench ofJustice J.R. Midhaheld that "the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant.Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.

Further in the case of Metso Outotec Corporation vs the Registrar of Trade Marks, [Commercial Appeal (L) No. 18137 & 18138 of 2021], a Single Judge G.S. Patel, J. of the High Court of Bombay on October 6, 2021 held that "11. The real difficulty in my assessing this order is that it contains no reasons at all. None of these submissions are considered at all. The order only says that the Registrar has heard an Advocate who appeared and has gone through the records. But that process of analysis must surely reflect in the order itself. It is not permissible for the authority to merely note that submissions have been made and directly arrive at a conclusion with no findings or consideration of the submissions at all. 12. In any case, the form of this order, i.e. the total elision of all reasons, is contrary to the statutory mandate of Section 18(5) in Chapter III of the Trade Marks Act 1999. That Section requires written reasons if an application is rejected or only conditionally accepted. The grounds for the refusal or conditional acceptance and also, importantly for our purposes, the materials used by the Registrar must be reflected in the order."

  • THE CONSEQUENCES OF NON-SPEAKING ORDERS

The issuance of non-speaking orders by the Indian Trade Marks Registry has several adverse consequences which have been enumerated below:

  1. Violation of Principle of Natural Justice

That, by issuing orders without providing necessary reason or basis for the same directly denies applicants as well as the opponents, an opportunity to present their case efficaciously or appeal the decision if required. The lack of due process of law directly compromises essential elements of fairness and also poses a serious question on the integrity of the trademark registration system, often leading to arbitrary decisions.

  1. Inconsistent Decisions and Legal Uncertainty

Such orders which lack explanation, reasoning or justification often leave trademark applicants in a state of uncertainty which directly impedes their ability to protect their intellectual property rights effectively. Without understanding the reason or rationale behind such non-speaking orders, the trademark applicants are left without alternative remedy or recourse on how to rectify the deficiencies. Moreover, this vagueness often results to inconsistent rulings, where different decisions are given in similar cases thereby adding to the frustration, uncertainty and confusion. Not to mention that this erodes the credibility of the Trade Mark Registry and directly undermines its credibility.

  1. Lack of Transparency and Accountability

One of the primary problems with non-speaking orders of the Indian Trade Marks Registry is the entailment of lack of transparency and accountability as they fail to provide any explanation, justification or rationale for their decisions. Without providing proper reason, the Registry leaves the applicant in a grey area where it becomes challenging for the applicant to understand the basis of the rejection or acceptance of their trademark applications. This lack of transparency raises concerns about the fairness and objectivity of the decision-making process within the registry.

  1. Negative Impact on Business and Innovation

The inadequacy and non-transparency caused by the non-speaking orders are detrimental to innovation in business world. Excessive delay and uncertainty resulting from non-speaking orders can hamper innovation, hinder brand expansion plans, and discourage investments. More so, the inability to obtain clear cut reasons for particular decisions limits the ability of applicants to refine their trademark search and strategies therefore, limiting business innovation.

  1. Chances of Malpractices

Non-compliance of the principle of Reasoned Decision gives room for arbitrariness which opens the forum for malpractices and corruption. Non-speaking orders are one of the core reasons for the hike in corruption within the Trade Marks Registry as issuance of such non-speaking orders obliterates any scope of accountability.

  • WAY FORWARD

Given the significant drawbacks associated with non-speaking orders, it is imperative for the Indian Trade Marks Registry to implement the following reforms:

  1. Improving the Quality of Examination

To resolve the problems arising out of non-speaking orders, it is crucial to focus on stricter adherence to provisions of law and improving the quality of examination conducted by the Trade Marks Registry. A thorough and logical analysis of trademark applications is sin qua non to ensure that only marks which are in obedience with the provisions of law, get registration. The efficiency of the system can also be enhanced by basing the orders on relevant judicial pronouncements. Examiners should assess applications on a case-by-case basis, by taking account of the broad factors established in jurisprudence.

  1. Promoting Reasonable Restrictions

In order to ensure reasoned decisions, it is extremely important to ensure that the absolute and relative grounds of refusal on the registrability of trademarks remain reasonable and legitimate. The Trade Marks Act sets out various grounds for refusal, including the lack of distinctiveness and the use of marks or indications that describe the quality or intended purpose of the goods or services.

However, it is absolutely essential to ensure a balance by avoid overreaching and arbitrary restrictions. A nuanced approach out to be followed to prevent unnecessary burden on the courts and parties to a suit, while still upholding the integrity of Trade Marks Registry.

  • CONCLUSION

Non-speaking orders issued by the Indian Trademarks Registry pose a significant concern for trademark applicants and legal professionals. Such non-speaking do not follow the due process of law and are in complete violation of the principle of Natural justice. To address these problems, it is crucial to adhere to the statutory requirements and judicial precedents for refusal or acceptance of an application. By ensuring transparency, accountability, and adherence to established principles of trademark law, the Indian Trade Marks Registry can enhance its credibility, reliability and integrity and further contribute to protection of intellectual property rights.

Footnotes

1.18(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.

2. Maneka Gandhi vs Union Of India, 1978 AIR 597

3. Intellectual Property Attorneys Association v. The Controller General of Patents, Designs and Trademarks & Anr, 2019 (80) PTC 486[Del]

4. Decision of Registrar.- (1) The decision of the Registrar under rules 33, 34 or 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision. In a case where the Registrar makes any requirements to which the applicant does not object the applicant shall comply the said requirement before the Registrar issues a statement in writing under sub-rule (1). The date when the statement in writing under sub-rule (1) is received by the applicant, shall be deemed to be the date of the Registrar's decision for the purpose of appeal.

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