Recently in the case of Visa International Ltd. v Visa International Service Association & Anr and Garden Silk Mills Private Limited v Rajesh Mallick & Ors., 2024 SCC OnLine Cal 7238 a Single Judge of the Calcutta High Court held that associate managers of the Trade Marks Registry (Associate Managers) appointed under Section 3(2) of the Trade Marks Act, 1999 (Act) were not empowered to pass quasi-judicial orders. A common judgment and order was passed in a group of three matters.
In the present cases, appeals were filed by Visa International Ltd and Garden Silk Mills Private Limited (Appellants) challenging the orders passed by Associate Managers in their respective trade mark opposition cases. While the said appeals challenged the orders on merits, the preliminary point raised by the Appellants was that the Associate Managers were not competent to pass such orders.
According to the Appellants, the Associate Managers were appointed only on a contractual basis. As per an order dated 9th June 2023 issued by Controller General of Patents, Designs and Trademarks (CGPDTM), six officials of the Trade Marks Registry (TMR) were assigned several powers and duties including hearing of show cause matters, dispose of trade mark applications, conducting hearings and pass speaking orders; however, Associate Managers were not assigned any power or duties to conduct hearings or adjudicate matters.
The Appellants also contended that the organizational structure of the TMR or the Recruitment Rules of the Trade Marks and Geographical Indication Registry (Registrar and Examiners), Recruitment Rules, 2011 did not mention any post of Associate Manager.
Reliance was placed on the case of Intellectual Property Attorneys Association v Union of India & Ors. 2014 SCC OnLine Del 1912, wherein the Division Bench of the Hon'ble High Court of Delhi observed that the power vested in the Registrar of Trade Marks under the Act is a quasi-judicial power.
The Court observed that the Registrar dealing with an application under the Act has quasi-judicial powers and delegation of power under Section 3(2) of the Act is an administrative power and as such Associate Managers appointed under Section 3(2) of the Act are not empowered to pass quasi-judicial orders.
Pursuant to the above, the Single Judge set aside and quashed the orders passed by the Associate Managers and remanded the matters to the Registrar of Trade Marks to decide the matters afresh.
In addition, a legal opinion was also sought by the Department for Promotion of Industry and Internal Trade (DPIIT) from the Additional Solicitor General (ASG) who suggested that all decisions made by the outsourced employees hired by CGPDTM through Quality Council of India (QCI) should be annulled since these decisions were in violation of the Act. The ASG also suggested that DPIIT should constitute a committee of officials statutorily authorised to make quasi-judicial decisions which could save some of the decisions from invalidation.
In view of the findings of the Court and the above suggestions made by the ASG, the office of CGPDTM issued an office order dated 13 August 2024 by virtue of which the office of CGPDTM will undertake a process to re-validate trade mark applications where a final decision was issued by officers hired through QCI. It would be important to mention here that the post of Associate Manager was hired through QCI and thus, the decisions / orders passed by the Associate Manager are presently under review and will be re-validated by a competent officer of the TMR.
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