In the case Visa International Ltd. v. Visa International Service Association & Anr., the Calcutta High Court handled three interconnected appeals that questioned the authority of Associate Managers in the Trade Marks Registry to concern quasi-judicial orders. The appellant, Visa International Ltd., challenged orders issued in opposition proceedings in opposition to trademark purposes, asserting that the Associate Managers, who had been engaged on a contractual foundation, lacked the authorized authority to adjudicate such issues.

The circumstances—IPDTMA Nos. 82 and 83 of 2023, and IPDTMA No. 1 of 2024—had been centered on the argument that the impugned orders, issued in September and October 2023, had been handed by officers who weren’t solely unauthorized beneath the Trade Marks Act, 1999 however their contracts had additionally expired earlier than the orders had been issued. The Appellant contended that the Associate Managers weren’t permitted beneath the regulation to train the quasi-judicial powers required for deciding opposition issues.

The court docket examined the statutory framework, together with the related provisions of the Trade Marks Act and the organizational construction of the Trade Marks Registry. It famous that the Trade Marks Act permits the delegation of sure features of the Registrar, however such delegation should be explicitly licensed. The court docket discovered that the Associate Managers, who had been employed on a brief, contractual foundation, weren’t talked about in the statutory or organizational hierarchy as having the authority to move quasi-judicial orders.

The court docket lastly dominated that the impugned orders had been void, as they had been issued by people who didn’t have the requisite authorized authority. It quashed these orders and remanded the circumstances again to the Registrar of Trade Marks, directing that the issues be reassigned to a reliable officer licensed to train quasi-judicial powers. The Registrar or the licensed officer was instructed to get rid of the issues inside six months from the date of receipt of the court docket’s order.

Note: The Trademark Office is at present reviewing all orders handed by consultants to examine and make sure their authorized validity, and a notification has been issued on this regard. Thousands of orders had been handed  by consultants and appointees not licensed, and the final result of the evaluation is awaited.

Orders by Quasi Judicial Authority

The paras that relate to the Court’s evaluation of the  authorized authority to move orders beneath 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.Ok. Medical Systems Pvt. Ltd (Supra), the Madras High Court has thought of Sub-Section 2 of Section 3 of the Trade Marks Act, 1999 and held that:

(i) The use of the expression “other officers” signifies that these are officers apart from the Registrar/CGPDTM, albeit the phrase “officers” signifies that they need to be from the cadre of officers.

(ii) The appointment of different officers by the Central Government must be for functions of discharging the features of the Registrar beneath the Trade Marks Act. This is obvious 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” signifies that there are not any fetters or limitations with regard to the designation of the officers appointed by the Central Government for the above function. Consequently, the Central Government could appoint officers of any designation to carry out the features of the Registrar. In impact, because of this even officers with the designation of Senior Examiner or Examiner could also be appointed for the function of discharging the features of the Registrar.

(iv) sub-section 2 prescribes the requirement that the different officers appointed to discharge the features of the Registrar are required to perform beneath the superintendence and route of the Registrar. This results in the query whether or not quasi- judicial features might be exercised by an officer of the Trade Mark Registry beneath the superintendence and route of the Registrar/ CGPDTM. The apparent reply is that quasi-judicial features are required to be carried out independently and never topic to the superintendence and route of some other individual, together with the Registrar. It may very well be contended, on such foundation, that sub-section 2 of Section 3 is barely supposed to empower the delegation of administrative powers and never quasi- judicial powers. If the Trade Marks Act had included some other provision referring to delegation of quasi-judicial powers, such interpretation may have been countenanced. In the absence of some other provision enabling delegation of energy in the Trade Marks Act, such interpretation would end in the breakdown of the Trade Marks Act particularly in view of the proven fact that the Registrar is outlined as the CGPDTM and one particular person definitely can not carry out all the quasi-judicial features beneath the Trade Marks Act. Therefore, the solely affordable interpretation of the expression “under the superintendence and direction of the Registrar” is that this could apply to all administrative features undertaken by officers, apart from the Registrar, however to not quasi- judicial features.

(v) The use of the expression “as he may from time to time authorise them to discharge” in sub-section 2 of Section 3 signifies that the different officers, who’re appointed by the Central Government to train the features of the Registrar, ought to undertake such features provided that they’re licensed by the Registrar.

The Madras High Court has additionally thought of 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 could refuse the utility or could settle for it completely or topic to such amendments, modifications, circumstances or limitations, if any, as he might imagine match.

(5) In the case of a refusal or conditional acceptance of an utility, the Registrar shall file in writing the grounds for such refusal or conditional acceptance and the supplies utilized by him in arriving at his resolution.

Sub-section 4 prescribes that the Registrar is empowered to refuse, settle for completely or conditionally any utility for registration of a Trade Mark topic to the provisions of the Trade Marks Act. When learn with sub- part 2 of Section 3, as interpreted earlier, this energy of the Registrar could also be delegated to any officer appointed by the Central Government to train the powers of the Registrar, offered the Registrar, in flip, authorizes such officer to train such powers. Since sub-section 2 of Section 3 additionally empowers the Central Government to nominate and authorize an officer of any designation because it thinks match, the inference that follows is that the Senior Examiner could also be appointed and licensed to train the features of the Registrar beneath Section 18.

Once so licensed, as per sub-section 4 of Section 18, the Senior Examiner could settle for the utility for commercial, conditionally or completely, or refuse the utility. Neither Section 18 nor Section 3 impose any restrictions with regard to the energy of refusal by a Senior Examiner, who’s appointed by the Central Government to train the energy of the Registrar and is thereafter licensed by the Registrar to train powers beneath sub-section 4 of Section 18.”

29. In the case in hand, the impugned orders handed by Associate Managers. By a Public Notice dated twenty first December, 2021, purposes had been invited from the eligible candidates for hiring as Hearing Officers purely on contract foundation. In the stated discover, it was additionally clarified that chosen candidates are accepted to listen to the contested issues (pending beneath opposition continuing) associated to Trade Marks purposes and dispose the opposition by passing reasoned resolution /order as per the provision of regulation. The candidates who’ve utilized for the stated submit and who’ve been chosen, the chosen candidates had been despatched for coaching at RGNIIPM, Nagpur and on completion of coaching, they had been appointed as Hearing Officers on contractual foundation. On 13.04.2022, an Offer of Engagement was issued to Shri Shraman Chattopadhyay. In the stated Offer of Engagement in clause (ix) it’s talked about that “No further continuation beyond the period of 31/02/2023 can be claimed”. On twenty seventh May, 2022, Shri Shraman Chattopadhyay was engaged as Contract Hearing Officer together with others. Mr. Saurabh Dubey was engaged as Associate Manager on contractual foundation on 14th June, 2023.

30. The Controller General of Patents, Designs and Trade Marks by an workplace order dated twenty eighth November, 2022 beneath sub-section (2) of Section 3 of the Trade Marks Act, 1999 delegated the numerous features of Registrar via e-module of the Trade Marks Registry System upon the instructions of the Registrar by the System Administrator. On twenty fourth May, 2023, the Head Offices of the Trade Marks Registry are licensed to allocate/assign works to contractual manpower deployed at their places via Quality Council of India (QCI).

31. By an order dated 14th June, 2023, Mr. Saurabh Dubey has been engaged as Associate Manager on contractual foundation.

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 energy vested in the Registrar of the Trade Marks beneath the Trade Marks Act is a quashi judicial energy.

33. The expression “other officers” in sub-section (2) of Section 3 of the Trade Marks Act signifies that the officers apart from the Registrar/Controller General of Patents and Designs and Trade Marks, the phrase “officers” signifies that they need to be from the cadre of officers. The appointment of different officers by the Central Government must be for the function of discharging the features of Registrar beneath the Trade Marks Act, 1999, that is clear from the expression for the function of discharging, beneath the superintendence and route of Registrar beneath this Act.

34. The use of expression with such designation because it thinks match signifies that there are not any fetters or limitation with regard to designations of the officers appointed by the Central Government for the stated function. The Central Government could appoint officers of any designation to carry out the features of the Registrar. Sub-Section (2) of Section 3 prescribes the requirement that the different officers appointed to discharge the features of the Registrar are required to perform beneath the superintendence and route of the Registrar. The quashi judicial features are required to be carried out independently and never topic to the superintendence or route of some other individual together with the Registrar. Sub-Section (2) of Section 3 is barely supposed to empower the delegation of administrative energy and never quashi judicial energy.

35. In the current case, admittedly, the Registrar, Trade Marks has not handed the order. In IPDTMA No. 82 of 2023 and IPDTMA No. 83 of 2023, the impugned order is handed by Shri Shraman Chattopadhyay, who’s the Associate Manager of the Trade Marks, who has been engaged purely on contract foundation and as per his Offer of Engagement dated thirteenth April, 2022, it’s talked about 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 handed on sixteenth September, 2023, and the respondents haven’t produced any order to determine that his engagement was prolonged past thirty first May, 2023 and he was the Associate Manger on sixteenth September, 2023. In IPDTMA No. 1 of 2024, the impugned order was handed by one Shri Saurabh Dubey on sixth 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 whereby no Post of Associate Manager is obtainable.

37. The Registrar coping with an utility beneath the Trade Marks Act is a quashi judicial and delegation of energy beneath sub-section (2) of Section 3 is an administrative energy and as such the Associate Managers appointed beneath sub-section 2 of Section 3 should not empowered to move quashi judicial orders. In addition to this, on sixteenth September, 2023, Mr. Shraman Chattopadhyay was even not holding the Post of Associate Manger by way of the supply of engagement dated thirteenth April, 2022.

38. In view of the above, the impugned orders handed by Mr. Shraman Chattopadhyay dated sixteenth September, 2023 and the order handed by Saurabh Dubey dated sixth October, 2023 are put 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 observe/s on this weblog submit have been written by IP Attorneys at BananaIP Counsels primarily based on their evaluation and understanding of the Judgments. It could also be famous that different IP attorneys and specialists in the discipline could have totally different opinions about the circumstances or arrive at totally different conclusions therefrom. It is advisable to learn the Judgments earlier than making any choices primarily based on the case notes.

If you might have any questions, or if you happen to want to converse with an IP expert/attorney, please attain us at: [email protected] or 91-80-26860414/24/34.