While refusing to extend the prohibition contained in Section 100A of the CPC to appeals filed under Section 91 of the Trademarks Act, 1999, the Calcutta High Court clarified that the Registrar has all the trappings of a Court, and a decision taken by him to either accept the registration request or to reject the same directly impacts and determines the applicant’s legal rights and liabilities and in a case of an opposition, the rights and liabilities of both the parties.
Such being an essential characteristic of a judicial function, the Court referred to Section 127 of the Trademarks Act, 1999, to observe that the Registrar of Trademarks has all powers, including the power to review its decision and to impose costs that a Civil Court has for the purposes mentioned in Section 127 of the 1999 Act. The order as to costs passed by the Registrar has been made executable as a decree of the Civil Court.
The Court pointed out that the issue of maintainability of a Letters Patent appeal against an order passed by a Single Judge in an appeal preferred against an order passed by the Registrar of Trademarks, had arisen for the first time over seven decades ago in the case of National Sewing Thread Co. Ltd. vs. James Chadwick & Bros. Ltd. [(1953) 1 SCC 794], when the first statuary trademark law of the country i.e. the Trademark Act, 1940 governed the field.
Reference was made to the decision of the Apex Court in the case of Kamal Kumar Dutta vs. Ruby General Hospital Limited [(2006) 7 SCC 613], which had extended the prohibition contained in Section 100A of the CPC to an order passed by the Company Law Board, also, on the ground that the same has “all trappings of a Court”. Accordingly, the Court upheld the Single Judge’s order and dismissed the letters patent appeal.
The Division Bench comprising Justice Arijit Banerjee and Justice Om Narayan Rai observed that the Trademarks Act, 1999, read with Trademarks Rules, 2017, makes it amply clear that the Registrar has almost all the trappings of a Court. Further, there is no provision in the 1999 Act whereby the proceedings before the Registrar has been held to be judicial proceedings within the meaning of the Code of Criminal Procedure (CrPC) or Indian Penal Code (IPC) as was there in respect of the erstwhile Intellectual Property Law Appellate Board under the pre-amendment 1999 Act or the Company Law Board (CLB) under the Companies Act, 1956.
However, the Bench emphasised that such a ceiling by itself would not be construed to mean that the Registrar has not all the trappings of a Civil Court for the purpose of deciding as to whether a mark should be registered in favour of a person or not. A decision to register makes the person concerned the exclusive owner of the registered trademark in terms of Section 28 of the 1999 Act, and such a decision is taken based on the evidence adduced by the person concerned and upon considering the opposition to the application, along with the evidence in support of the opposition.
Briefly, the Deputy Registrar of Trademarks, vide its order dated July 04, 2025, allowed an application for registration of the trade mark “DUNLOP” filed by the applicant, by overruling the objection raised thereto by the first respondent. When the first approached the High Court, the Single Judge disposed of the matter by setting aside the order passed by the Deputy Registrar and remanding the matter to the said respondent with a direction to reconsider the same after granting an opportunity of hearing to all the parties.
Case Relied On:
Kamal Kumar Dutta vs. Ruby General Hospital Limited [(2006) 7 SCC 613]
Cases Distinguished:
Resilient Innovations Pvt Ltd. vs. Phonepe Pvt Ltd. [2023 SCC OnLine Del 2972]
Promoshirt SM SA vs. Armassuisse [2023 SCC OnLine Del 5531]
Appearances:
Senior Advocate Jaydip Kar and Advocate Siddharth Dey, for the Appellant
Senior Advocate Debnath Ghosh, along with Advocates Biswaroop Mukherjee, Mini Agarwal, Siddhartha Lahiri, and SK Sariful Haque, for the Respondents
