Appointment of Registrar and other officers of Trademark Registration Process

Appointment of Registrar and other officers – Trademarks Act, 1999

This clause corresponds to section 4 of the Trade and Merchandise Marks Act, 1958 and provides for appointment of the Registrar and other officers.

Comments

This section corresponds to section 4 of the Trade and Merchandise Marks Act, 1958. The section provides for appointment of a person designated as the Controller General of Patents, Designs and Trademarks, who is to be the Registrar of Trademarks for the purposes of this Act. Under sub-section (2) of section 159, any notification or order issued by the Trade and Merchandise Marks Act, 1958, if in force at the commencement of this Act, shall continue to be in force and have effect, as if issued under the corresponding provisions of this Act. It, therefore, follows that if the Central Government had appointed a Controller General under the relevant provisions of the repealed Act of 1958, that appointment, if in force at the commencement of the Act, will continue to be operative without fresh notification or order. Under Sub-section (2), the Central Government is empowered to appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorize them to discharge. The hierarchy in the Trademarks Registry consists of Registrar, Senior Joint Registrar, Joint Registrar, Deputy Registrar, Assistant Registrar, Senior Examiners and Examiners of Trademarks, under the existing set up. The Registrar, by virtue of the powers vested in him under sub-section (2) has authorized officers up to the level of Asst. Registrar to perform generally the functions of the Registrar. In exigencies, Sometimes, Senior Examiners are also authorized to discharge some functions, such as hearings in respect of applications for registration of trademarks and other miscellaneous matters. Under sub-section (2) of Section 2, unless the context otherwise requires, any reference to the Registrar shall be construed as including a reference to any officers when discharging the functions of the Registrar in pursuance of sub-section (2) of Section 3. Although, technically there is only one Registrar under the Act, in practice there will be several officers functioning as Registrar, under his authorization. Therefore, the law confers the Registrar with the power of “superintendence and directions” in the discharge of the functions of the Registrar. It has been held that “superintendence and direction” refers to administrative superintendence and direction. The Registrar cannot possibly give directions to the officers as to how and in what manner they should decide a particular case.

While discharging the functions of Registrar under section 3(2) of the Act, such official is performing quasi-judicial functions. In the case of administrative or executive authorities, the Government could direct them to carry out their functions in a particular manner. But the same cannot be said of a quasi-judicial authority. Although the government may have appointed it, may be paying it and may have the right to take disciplinary action against it in certain eventualities, yet, in the very nature of thing, where the rule of law prevails, it is not open to the Government to control the functioning of quasi-judicial authority and to direct it to decide a particular matter before it in particular manner.” The principle, it would seem, equally applies to the Registrar, while he is exercising the power of ‘superintendence and directions’ over his subordinate formations.

Uniformity of practice of the Registry is essential to ensure, so that in the matter of administration of the Act, the Registrar is not seen to be functioning differently through the delegated functionaries. It is therefore that the practice of the Registry is given due recognition by the statute-see Section 98 of the Act. The power of superintendence and direction, it is submitted, may have to be extended to ensuring uniformity of practice through the Registry and the branch offices. Keeping this in view, the procedure and practice before the Registry should be codified in the form of a Manual of Procedure, accessible to the legal profession and all concerned with registration process. This would render the office practice more transparent and check arbitrariness in exercise of discretion by any of the functionaries.

Registrar is a ‘tribunal’

Section 2(1)(ze) defines “tribunal as meaning the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending”. The reference to the Appellate Board in place of ‘High Court’ in the law is consequential in the wake of creation of the Appellate Board to hear appeals against the orders and decisions of the Registrar under the Act. Under the repealed Trade & Merchandise Marks Act, 1958 the appeals were to the “High Court” having jurisdiction.

The phrase’ before which the proceedings concerned are pending’ conveys the ides that if the proceeding is pending before the Registrar, it becomes the tribunal. Similarly if the proceeding is pending before the High Court (the Appellate Board under the 1999 Act) then it has to be treated as the Tribunal.  

Tribunal not to be constituted by civil servants

In Union of india . R. Gandhi of Madras Bar Association, the Supreme Court explained ‘tribunals’ are very similar to courts, but not courts. It was held that ‘tribunals have the authority of law to pronounce upon valuable rights; they act in a judicial manner and even on evidence on oath, but they are not part of the ordinary Courts of Civil Judicature. They share the exercise of judicial power of the state, but they are brought into existence to implement some administrative policy or to determine controversies arising out of some administrative law. They are very similar to Courts, but are not Courts.’

In the above case, the Supreme Court has referred to their earlier decisions wherein the difference between Court and tribunal has been pointed out, and made pointed reference to the case of Harinagar Sugar Mills Ltd. versus Shyam Sundar Jhunjhunwala, and the case of Associated Cement Companies Lid versus P N. Sharma. The Court, after reviewing the evolution of tribunals in England and in this country, observed ‘Only if continued judicial independence is assured, tribunals can discharge judicial functions. In order to make such independence a reality, it is fundamental that the members of the tribunal shall be independent persons, not civil servants. They should resemble courts and not bureaucratic boards. Even the dependence of tribunals on the sponsoring or parent department for infrastructural facilities or personnel may undermine the independence of the tribunal.’ Referring to the system in India, the Court held that: “But in India, unfortunately have not achieved full independence. The Secretary of the concerned ‘sponsoring department’ sits in the Selection Committee for appointment. When the Tribunals are formed, they are mostly dependent on their sponsoring department for funding, infrastructure and even space for functioning. The statutes constituting tribunals routinely provide for members of civil services from the sponsoring departments becoming members of the tribunal and continuing their lien with their parent cadre. Unless wide ranging reforms as were implemented in United Kingdom and as were suggested by Chandra Kumar are brought about, Tribunals in India will not be considered as independent.”

It was held by the Apex Court that: “We have already held that the legislature has the competence to transfer any particular jurisdiction from courts to tribunals, provided it is understood that the tribunals exercise judicial power and the persons who are appointed as President/Chairperson/Members are of a standard which is reasonably approximate to the standards of main stream judicial functioning. On the other hand, if a tribunal is packed with members who are drawn from the civil services and who continue to be employees of different Ministries or Government departments by maintaining lien over their respective posts, it would amount to transferring judicial functions to the executive which would go against the doctrine of separation of power and independence of judiciary.”

In this connection, the court in the above case had drawn attention to their earlier decision in R.K. Jain v. Union of India, where the Supreme Court held that “the personnel appointed to hold those offices (Tribunal) are called upon to discharge judicial or quasi judicial powers. So, they must have judicial approach and also knowledge and expertise in that particular branch of constitutional, administrative and tax laws. The legal input would undeniably be more important and sacrificing the legal input and not giving it sufficient weightage and teeth would definitely impair the efficacy and effectiveness of the judicial adjudication. It is therefore necessary that those who adjudicate upon these matters should have legal expertise, judicial experience and modicum of legal training as on many an occasion different and complex questions of law which baffle the minds of even trained judges in the High Court and Supreme Court would arise for discussion and decision.”

The appointment of Registrar and other officers who act for the Registrar and who exercise functions of a ‘tribunal’ under the Act, should be governed by the principles laid down by the Supreme Court. The Intellectual Property Appellate Board (IPAB) is undoubtedly covered by these principles.

“Appointment of such other officers” under section 3(2):

In Mount Everest Mineral Water Ltd. versus Bisleri International Pvt. Ltd.s the High Court was considering the validity of a statement filed by a Senior Examiner of Trade Marks before the IPAB under section 98 of the Act. The Statement contained an indication that the Statement was being filed under statutory authorization by the Registrar. The Court observed that: “if a Senior Examiner had to discharge the functions of the Registrar”, he would have to be appointed as such by the Central Government and then be duly authorized by the Registrar to discharge the functions under section 98 of the Trade Marks Act, 1999″ It was further held that “Absent the notification and authorization under section 3(2) of the Trade Marks Act, 1999, an officer of the Trade Marks Registry cannot be asked to file a statement under section 98(2) of the Trade Marks Act, 1999.

Authorization of officers by Registrar is generally made in respect of a class of officers as a whole and not individually for performing the functions of Registrar. Even in the case of appointment of new officers, the general authorization issued in favor of the class or grade of officers is considered to be applicable to the newly appointed officers.

While section 3(1) contemplates the issue of a notification in the official gazette about the appointment of Registrar under the Act, issue of such notification does not seem to be contemplated under section 3(2). In fact no such notification was issued at any time in the past in the case of officers other than the Registrar. The decision of the Hon’ble High Court may not be taken to be limited to the proceedings in the aforesaid case under section 98. It has its implications in the broader context of administration of the Act by officers for and on behalf of the Registrar generally. It would therefore appear to be necessary for the Central Government and the Registrar to secure compliance with the requirement of the High Court to ensure smooth functioning of the work of the Registry.

In Jagatjit Industries Limited versus Intellectual Property Appellate Board, the Supreme Court considered the question whether the show cause notice under section 57(4) issued by the Registrar in Bombay was without jurisdiction, since the application for registration of the trademark was made in Delhi and all subsequent proceedings took place in Delhi. The Supreme Court observed that “under section 57(4) of the Act, the suo moto power can only be exercised by the Registrar himself, being the ‘tribunal’ referred to sub-sections (1) and (2) of the said section. Section 3 of the Trade Marks Act, 1999 is apposite. For more clarification about Trademark Registration process kindly visit our site and feel free to contact us. Thanks for reading!!!!