In the case Visa International Ltd. v. Visa International Service Association & Anr., the Calcutta High Court dealt with three interconnected appeals that questioned the authority of Associate Managers in the Trade Marks Registry to issue quasi-judicial orders. The appellant, Visa International Ltd., challenged orders issued in opposition proceedings against trademark applications, asserting that the Associate Managers, who were engaged on a contractual basis, lacked the legal authority to adjudicate such matters.
The cases—IPDTMA Nos. 82 and 83 of 2023, and IPDTMA No. 1 of 2024—were centered on the argument that the impugned orders, issued in September and October 2023, were passed by officials who were not only unauthorized under the Trade Marks Act, 1999 but their contracts had also expired before the orders were issued. The Appellant contended that the Associate Managers were not permitted under the law to exercise the quasi-judicial powers required for deciding opposition matters.
The court examined the statutory framework, including the relevant provisions of the Trade Marks Act and the organizational structure of the Trade Marks Registry. It noted that the Trade Marks Act permits the delegation of certain functions of the Registrar, but such delegation must be explicitly authorized. The court found that the Associate Managers, who were hired on a temporary, contractual basis, were not mentioned in the statutory or organizational hierarchy as having the authority to pass quasi-judicial orders.
The court finally ruled that the impugned orders were void, as they were issued by individuals who did not have the requisite legal authority. It quashed these orders and remanded the cases back to the Registrar of Trade Marks, directing that the matters be reassigned to a competent officer authorized to exercise quasi-judicial powers. The Registrar or the authorized officer was instructed to dispose of the matters within six months from the date of receipt of the court’s order.
Note: The Trademark Office is currently reviewing all orders passed by consultants to check and confirm their legal validity, and a notification has been issued in this regard. Thousands of orders had been passed by consultants and appointees not authorized, and the outcome of the review is awaited.
Orders by Quasi Judicial Authority
The paras that relate to the Court’s analysis of the legal authority to pass orders under the Trademarks Act are as follows:
“28. Section 2(2)(d) of the Trade Marks Act, 1999, reads as follows:
“2(2)(d). to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of Section 3.”
In the case of J.K. Medical Systems Pvt. Ltd (Supra), the Madras High Court has considered Sub-Section 2 of Section 3 of the Trade Marks Act, 1999 and held that:
(i) The use of the expression “other officers” indicates that these are officers other than the Registrar/CGPDTM, albeit the word “officers” indicates that they should be from the cadre of officers.
(ii) The appointment of other officers by the Central Government should be for purposes of discharging the functions of the Registrar under the Trade Marks Act. This is clear from the expression “for the purpose of discharging… such functions of the Registrar under this Act”.
(iii) The use of the expression “with such designations as it thinks fit” indicates that there are no fetters or limitations with regard to the designation of the officers appointed by the Central Government for the above purpose. Consequently, the Central Government may appoint officers of any designation to perform the functions of the Registrar. In effect, this means that even officers with the designation of Senior Examiner or Examiner may be appointed for the purpose of discharging the functions of the Registrar.
(iv) sub-section 2 prescribes the requirement that the other officers appointed to discharge the functions of the Registrar are required to function under the superintendence and direction of the Registrar. This leads to the question whether quasi- judicial functions can be exercised by an officer of the Trade Mark Registry under the superintendence and direction of the Registrar/ CGPDTM. The obvious answer is that quasi-judicial functions are required to be performed independently and not subject to the superintendence and direction of any other person, including the Registrar. It could be contended, on such basis, that sub-section 2 of Section 3 is only intended to empower the delegation of administrative powers and not quasi- judicial powers. If the Trade Marks Act had incorporated any other provision relating to delegation of quasi-judicial powers, such interpretation could have been countenanced. In the absence of any other provision enabling delegation of power in the Trade Marks Act, such interpretation would result in the breakdown of the Trade Marks Act especially in view of the fact that the Registrar is defined as the CGPDTM and one individual certainly cannot perform all the quasi-judicial functions under the Trade Marks Act. Therefore, the only reasonable interpretation of the expression “under the superintendence and direction of the Registrar” is that this would apply to all administrative functions undertaken by officers, other than the Registrar, but not to quasi- judicial functions.
(v) The use of the expression “as he may from time to time authorise them to discharge” in sub-section 2 of Section 3 indicates that the other officers, who are appointed by the Central Government to exercise the functions of the Registrar, should undertake such functions only if they are authorized by the Registrar.
The Madras High Court has also considered Sub-Sections 4 and 5 of Section 18 of the Trade Marks Act, 1999 and held that:
“(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
(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.
Sub-section 4 prescribes that the Registrar is empowered to refuse, accept absolutely or conditionally any application for registration of a Trade Mark subject to the provisions of the Trade Marks Act. When read with sub- section 2 of Section 3, as interpreted earlier, this power of the Registrar may be delegated to any officer appointed by the Central Government to exercise the powers of the Registrar, provided the Registrar, in turn, authorizes such officer to exercise such powers. Since sub-section 2 of Section 3 also empowers the Central Government to appoint and authorize an officer of any designation as it thinks fit, the inference that follows is that the Senior Examiner may be appointed and authorized to exercise the functions of the Registrar under Section 18.
Once so authorized, as per sub-section 4 of Section 18, the Senior Examiner may accept the application for advertisement, conditionally or absolutely, or refuse the application. Neither Section 18 nor Section 3 impose any restrictions with regard to the power of refusal by a Senior Examiner, who is appointed by the Central Government to exercise the power of the Registrar and is thereafter authorized by the Registrar to exercise powers under sub-section 4 of Section 18.”
29. In the case in hand, the impugned orders passed by Associate Managers. By a Public Notice dated 21st December, 2021, applications were invited from the eligible candidates for hiring as Hearing Officers purely on contract basis. In the said notice, it was also clarified that selected candidates are accepted to hear the contested matters (pending under opposition proceeding) related to Trade Marks applications and dispose the opposition by passing reasoned decision /order as per the provision of law. The candidates who have applied for the said post and who have been selected, the selected candidates were sent for training at RGNIIPM, Nagpur and on completion of training, they were appointed as Hearing Officers on contractual basis. On 13.04.2022, an Offer of Engagement was issued to Shri Shraman Chattopadhyay. In the said Offer of Engagement in clause (ix) it is mentioned that “No further continuation beyond the period of 31/02/2023 can be claimed”. On 27th May, 2022, Shri Shraman Chattopadhyay was engaged as Contract Hearing Officer along with others. Mr. Saurabh Dubey was engaged as Associate Manager on contractual basis on 14th June, 2023.
30. The Controller General of Patents, Designs and Trade Marks by an office order dated 28th November, 2022 under sub-section (2) of Section 3 of the Trade Marks Act, 1999 delegated the various functions of Registrar through e-module of the Trade Marks Registry System upon the directions of the Registrar by the System Administrator. On 24th May, 2023, the Head Offices of the Trade Marks Registry are authorized to allocate/assign works to contractual manpower deployed at their locations through Quality Council of India (QCI).
31. By an order dated 14th June, 2023, Mr. Saurabh Dubey has been engaged as Associate Manager on contractual basis.
32. In the case of Intellectual Property Attorneys Association -vs- Union of India & Ors. reported in 2014 SCC OnLine Del 1912, the Division Bench of the Delhi High Court held that the power vested in the Registrar of the Trade Marks under the Trade Marks Act is a quashi judicial power.
33. The expression “other officers” in sub-section (2) of Section 3 of the Trade Marks Act indicates that the officers other than the Registrar/Controller General of Patents and Designs and Trade Marks, the word “officers” indicates that they should be from the cadre of officers. The appointment of other officers by the Central Government should be for the purpose of discharging the functions of Registrar under the Trade Marks Act, 1999, this is clear from the expression for the purpose of discharging, under the superintendence and direction of Registrar under this Act.
34. The use of expression with such designation as it thinks fit indicates that there are no fetters or limitation with regard to designations of the officers appointed by the Central Government for the said purpose. The Central Government may appoint officers of any designation to perform the functions of the Registrar. Sub-Section (2) of Section 3 prescribes the requirement that the other officers appointed to discharge the functions of the Registrar are required to function under the superintendence and direction of the Registrar. The quashi judicial functions are required to be performed independently and not subject to the superintendence or direction of any other person including the Registrar. Sub-Section (2) of Section 3 is only intended to empower the delegation of administrative power and not quashi judicial power.
35. In the present case, admittedly, the Registrar, Trade Marks has not passed the order. In IPDTMA No. 82 of 2023 and IPDTMA No. 83 of 2023, the impugned order is passed by Shri Shraman Chattopadhyay, who is the Associate Manager of the Trade Marks, who has been engaged purely on contract basis and as per his Offer of Engagement dated 13th April, 2022, it is mentioned that “no further continuation beyond the period of 31st May, 2023 can be claimed”. But the impugned orders in IPDTMA No. 82 of 2023 and IPDTMA No. 82 of 2023 are passed on 16th September, 2023, and the respondents have not produced any order to establish that his engagement was extended beyond 31st May, 2023 and he was the Associate Manger on 16th September, 2023. In IPDTMA No. 1 of 2024, the impugned order was passed by one Shri Saurabh Dubey on 6th October, 2023 as Associate Manager.
36. The Learned Counsel for the appellants has produced the Recruitment Rules of the Trade Marks and geographical indication Registry (Registrars and Examiners), Recruitment Rules, 2011 wherein no Post of Associate Manager is available.
37. The Registrar dealing with an application under the Trade Marks Act is a quashi judicial and delegation of power under sub-section (2) of Section 3 is an administrative power and as such the Associate Managers appointed under sub-section 2 of Section 3 are not empowered to pass quashi judicial orders. In addition to this, on 16th September, 2023, Mr. Shraman Chattopadhyay was even not holding the Post of Associate Manger in terms of the offer of engagement dated 13th April, 2022.
38. In view of the above, the impugned orders passed by Mr. Shraman Chattopadhyay dated 16th September, 2023 and the order passed by Saurabh Dubey dated 6th October, 2023 are set aside and quashed.”
Citation: Visa International Ltd. v. Visa International Service Association & Anr., IPDTMA Nos. 82 & 83 of 2023, and IPDTMA No. 1 of 2024 (H.C. Calcutta Aug. 2, 2024). Available at: http://indiankanoon.org/doc/109847999/, Visited on: 26/08/2024.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: contact@bananaip.com or 91-80-26860414/24/34.
