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.
Facts
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."
Contentions
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.
Judgment
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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