The Delhi High Court (“Court”), on October 16th 2019, held that the Registrar of Trademarks (“Registrar”) is bound to furnish to the applicant, a copy of the order recorded by it detailing the grounds for refusal of the application and any materials used by the Registrar in arriving at such decision. In arriving at this decision, the Single Judge Bench found Rule 36 of the Trademarks Rules, 2017 (“2017 Rules”), to be arbitrary, unreasonable and inconsistent with Section 18(5) 0f the Trademarks Act, 1999 (“Act”).
Rule 36, Trademarks Rules, 2017
Rule 36 of the 2017 Rules lays down that the decision of the Registrar is required to be communicated to the applicant, in writing, at the address furnished by him or her. Where the applicant intends to file an appeal against this decision, he or she may apply to the Registrar, in Form TM-M, requesting that the Registrar provide details regarding the grounds for the decision as well as any materials utilized by the Registrar in arriving at such decision.
Section 18(5) of the Trademarks Act, 1999
Section 18 of the Act lays down the process for filing an application for registration of a trademark in India. As per clause (5), the Registrar is required to record reasons for refusal or conditional acceptance of an application, and the materials relied upon while arriving at such a decision.
Observations of the Court
This writ petition was instituted by the Intellectual Property Attorneys Association, aggrieved by the repeated orders of the Registrar, which failed to provide reasons for the decision, whether it was a rejection or a conditional acceptance of an application for trademark registration.
The petitioner contended that Rule 36 was in violation of Section 18(5) of the Act, as Section 18(5) mandated the provision of reasons for refusal or conditional acceptance of a trademark registration application, while Rule 36 put in place a mechanism for the applicant to gain access to such information if he or she seeks to file an appeal against the decision. The Court held that for an effective implementation of Section 18(5) to take place, the order containing the requisite details of the reasoning and ancillary documents relied upon would have to be furnished by the office of the Registrar within 2 weeks of passing the order.
Quick View
The principles of natural justice are at the core of the adjudicatory power of administrative authorities. The requisite of having a reasoned decision flows from the principles of natural justice and it is an essential aspect of any adjudicatory process. In the instant case, the Act lays down the framework for the manner in which registration of trademarks should proceed. It specifically states the requirement of ‘recording reasons for refusal or conditional acceptance’. As such, the decision of the Court imposing a timeline for providing a reasoned order, has attempted to clarify the confusion inherent in the conflicting provisions of the parent Act and the Rules framed thereunder. The next step is for the Parliament to bring about an amendment in the Rules to that effect, which should help make the registration process more transparent.
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Disclaimer: This post has been prepared for informational purposes only. The information/or observations contained in this post does not constitute legal advice and should not be acted upon in any specific situation without seeking proper legal advice from a practicing attorney.