Trademark Registration in Cochin – Appointment of Registrar and other officers what we are going to discuss here.

Corresponding Act

This section corresponds to section 4 of the Trade and Merchandise Marks Act, 1958. This 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 any 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 has appointed a controller General under the relevant provisions of the replaced 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 have the right to appoint such other officers with such positions as it thinks fit for the purpose of discharging or withdrawing, under the superintendence and direction of the Registrar, such responsibilities of the Registrar under this act as he may from time period to time period authorize them to discharge or withdraw. The hierarchy in the Trademarks Registry consists of Registrar, Senor 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 Assistant 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 interpreted  as including a reference to any officers when discharging the functions of the Registrar in accordance 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 this authorization. Therefore, the law confers the Registrar with the power of “superintendence and directions” 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 the Registrar under section 3(2) of the Act, such official is performing functions. In 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 authority. Although the government may have appointed it, may be paying it and may have the right to take disciplinary actions 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 control the functioning of 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 Trademark Registry is essential to ensure, so that in the matter of administration of 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 statue – 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 the trademark registration process. This would render the office practice more transparent and check arbitrariness in exercise of discretion by any of the functionaries.

Powers and functions of Registrar

The Registrar must have the powers and functions as mentioned below:

The Registrar has right to:

1. registration of appeals, petitions and applications;
2. Get applications for amendment of appeal or the petition or Trademark application or subsequent proceedings.
3. receive applications for fresh summons or notices and regarding services thereof;
4. transmission of a direction/ order to the civil court as directed by Tribunal with the prescribed certificate(s) for execution etc.; and such other incidental/matters as the Chairperson may direct from time to time;
5. receive applications for fresh summons or notice and for short date summons and notices;
6. receive applications for substituted service of summons or notices;
7. Withdraw or transfer cases etc.
8. Receive applications for seeking orders concerning the admission and also inspection of documents.

Registrar is a tribunal

Section 2(1) (ze) defines tribunal as meaning the appointment of 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 and Merchandise Marks Act, 1958, the appeals were to the “High Court” having jurisdiction. The phrase before which the proceeding concerned is pending conveys the idea that if the proceeding is pending before the High Court (the Appellate Board under the 1999 Act) then it has to be treated as tribunal.

Tribunal not to be constituted by civil servants

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 including of the ordinary Courts of civil Jurisdiction. 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 the Court and Tribunal has been pointed out, and made pointed reference to the case of Harinagar Sugar Mills Ltd., versus Sham Sundar Jhunihunwala, and the case of Associated Cement Companies Ltd 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 Trademark registration system in India, the court held that: “But in India, unfortunately tribunals have not achieved full independence. When the Tribunals are formed, they are mostly dependent on their sponsoring department for funding, infrastructure and even space for functioning. The statutes comprising the tribunals frequently give for members of civil services from the sponsoring departments becoming members of the tribunal and carrying their lien with their parent cadre. Unless wide ranging reforms as were implemented in United Kingdom and as were suggested by Chandra Kumar is brought about, tribunals in India will not be considered as independent”.

It was formulated by the Apex Court that: “We have already held that the legislature has the competence to transmit 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 or 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 carried with members who are basically expert from the civil services and who continue to be employees of different ministries or government departments by keenly carrying the lien over their respective concerned 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, 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 in 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 the 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 officers under Section 3(2)

The High Court was considering the validity of statement filed by the Senior Examiner of Trademarks 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 to discharge the functions under Section 98 of the Trademarks Act, 1999”. It was again formulated that “Absent the notification and authorization of particular trademark under section 3(2) of the Trademarks Act, 1999, an officer of the Trademarks Registry cannot be asked to file a statement under section 98(2) of the Trademarks 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 the 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 new appointment of officers. While Section 3(1) contemplates the issue of a notification in the official gazette about the appointment of the 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 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 case notice under section 57(4) issued by the Registrar in Bombay was without jurisdiction, since the application for trademark Registration was made in Delhi and all subsequent proceedings took place in Delhi. The Supreme Court noticed that “Under section 57(4) of the Act, the on the own motion can only be practiced by the Registrar himself, being the ‘tribunal, referred to sub-sections (1) and (2) of the already mentioned section. Section 3 of the Trademarks Act, 1999 is apposite”. From the above discussion you should get a clear idea about the appointment of the Registrar and other officers.

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