This article discusses Section 91 of the Trade Marks Act, 1999. It covers the process of appealing to the Appellate Board against decisions made by the Trademark Registrar. This article gives a detailed overview of Section 91, including the structure of the Intellectual Property Appellate Board, reasons for appeal, time limits for filing an appeal, and the High Court’s role under this Act. Additionally, it reviews important case laws related to this section.
Introduction
Imagine Rakesh, who wants to open a salon named “Hairesh” in Kolkata’s Park Street. He decides to secure a trademark before launching his business. On February 20, 2020, he works with a reputable attorney to file for trademark registration, hoping to use it later. However, just as plans unfold, the government announces a lockdown due to the pandemic. By 2021, Rakesh finally opens his salon after creating a website, designing branded invoices, and advertising his services. Yet, the trademark registry, delayed by the pandemic, ultimately issues a report stating that the mark cannot be registered. Undeterred, Rakesh responds and prepares for a hearing scheduled for April 2022, demonstrating his salon’s continued operation since March 2021.
To Rakesh’s surprise, despite presenting the necessary documentation, the trademark office declines his application. Upset about the rejection, he consults his attorney, exploring options for a review or appeal.
Applying for trademark registration can be lengthy and complex, often requiring multiple steps and interactions with the trademark registry, as evidenced by Rakesh’s experience. It’s not unusual for the Registrar of Trademarks to refuse trademark registrations or make adverse rulings related to trademark matters. If a decision goes against an applicant, the only avenues left are to file for a review with the trademark office or appeal the ruling.
This article delves into the mechanics of appealing against a registrar’s decisions under the Trade Marks Act of 1999. Until 2021, these appeals were made to the Intellectual Property Appellate Board (IPAB) for all matters associated with intellectual property. However, following the Tribunal Reforms Act, 2021, the IPAB was dissolved, transferring all pending and future appellate matters to the relevant High Courts. We will explore these changes but first, let’s look at the previously established provisions governing the IPAB.
The Intellectual Property Appellate Board
The Intellectual Property Appellate Board (IPAB) was set up by the Indian government on September 15, 2003. Its mission was to hear and resolve appeals against decisions made by the Trademark Registrar under the Trade Marks Act, along with other regulations concerning intellectual property.
Establishment and Composition of the Appellate Board
Establishment
According to Section 83 of the Trade Marks Act, 1999, the IPAB was formed to exercise powers vested in it under the Act and to address intellectual property disputes.
Composition
The composition of the IPAB is laid out in Section 84 of the Trade Marks Act, 1999, which specifies that:
- The IPAB consists of a chairperson, a vice chairperson, and members appointed by the Union Government.
- Each IPAB bench includes one judicial member and one technical member based on the need and allocation defined by the government.
- The chairperson may also perform the functions of any member on another bench.
- The government can specify the distribution of business among different benches.
- The chairperson has the authority to determine whether a matter falls within the business allocated to a particular bench.
- Should there be differences of opinion among a bench’s members, the matter can be referred to the chairperson for clarification.
Understanding Section 91 of the Trade Marks Act, 1999
This section outlines the right to appeal against an order or decision made by the trademark Registrar. Specifically, Section 91 allows any individual aggrieved by a decision of the Registrar to submit an appeal within three months of being informed of that decision.
Grounds for Appeal Under Section 91
According to Section 91(1), anyone dissatisfied with a decision made by the Registrar under this Act or its associated rules may appeal to the Appellate Board within three months. This means that individuals can appeal if they feel wronged by a ruling from the Trademark Registrar. However, it’s important to submit this appeal within the stipulated three-month window, starting from when the individual receives the decision.
Communication of the decision could be through traditional mail or electronically, meaning that Rakesh has the right to appeal against the refusal of his trademark application within three months from the date he received the refusal notice.
Limitation Period for Filing an Appeal
Section 91(2) states that if an appeal is filed after the three-month limitation period outlined in Section 91(1), the IPAB will not accept it. Though, if the IPAB finds valid reasons for the delay, it may allow the appeal to be heard. For example, if Rakesh’s attorney miscommunicates the refusal date, leading to a late appeal, the IPAB could choose to exercise discretion and entertain the appeal provided justifiable reasons are presented.
Required Forms, Fees, and Documentation
Section 91(3) mandates that an appeal submitted to the IPAB must be in a specific format and verified according to the rules. The appeal must include a copy of the Registrar’s order and the applicable fee must be paid.
In Rakesh’s case, he needs to complete the appropriate forms, attach the refusal notice, pay the filing fee, and submit his appeal to the IPAB.
The Role of the High Court as the Appellate Authority
Having discussed appeals to the IPAB, it’s crucial to note the recent changes that have moved these appeals to the High Courts. This transformation, while not reflected in the statutory language of Section 91 of the Trade Marks Act yet, came after the IPAB’s dissolution on April 4, 2021.
Initially established to reduce the burden on the High Courts, the IPAB faced significant challenges, including understaffing and insufficient resources, which hampered its operations. Compounding this was the fact that decisions from the IPAB could be appealed before the High Courts, making the process more complicated. As of 2021, the responsibilities of the IPAB reverted to the High Courts, with a focus on establishing special Intellectual Property Rights Divisions (IPRD) to handle these cases more efficiently.
High Courts in Delhi, Mumbai, and Madras have already formed IPRD benches, which are expected to streamline the appellate process, allowing specialized judges to handle intellectual property issues promptly.
Relevant Case Laws Surrounding Section 91 of the Trade Marks Act, 1999
Ashwa Ghosh vs. Vizrt Ag and Others (2023)
Facts
- This case involved an appeal brought under Section 91 of the Trade Marks Act regarding decisions on domain names by the World Intellectual Property Organization’s (WIPO) panel.
Issues
- The question was whether a decision by WIPO was appealable under Section 91 as a decision made by the Registrar.
Decision
- The Delhi High Court ruled that no appeal could be made under Section 91 against WIPO’s decisions, stating that such decisions do not fall under the authority of the Registrar of Trade Marks as defined in the Act.
Kamdhenu Ltd. vs. The Registrar of Trade Marks (2023)
Facts
- In this case, Kamdhenu Ltd. appealed against a decision made on April 23, 2019, that denied their application for the trademark “KAMDHENU” based on insufficient evidence of its well-known status.
Issues
The core issue was related to the required type of evidence necessary to establish a well-known trademark.
Arguments by the Petitioner
- The appellant asserted that the Registrar’s rejection based on non-filing of an affidavit was erroneous as it was not mandatory under the rules.
Judgment
The Delhi High Court agreed with the appellant and noted that the Registrar should have allowed the petitioner an opportunity to submit the necessary affidavit instead of outright rejecting the application.
Navaid Khan vs. Registrar of Trademarks Office (2023)
Facts
- The appellant sought to register “CruzOil” under Class 4, but the Registrar objected, citing that it merely described the intended purpose of the goods.
Arguments by the Petitioner
- The appellant’s counsel argued that “CruzOil” was arbitrary and did not describe the goods.
Judgement
The Delhi High Court held that the Registrar treated the application improperly by analyzing the mark as a word mark only, rather than considering it comprehensively. The court ultimately ruled in favor of the appellant.
Conclusion
In examining Section 91 of the Trade Marks Act and recent landmark decisions, we see that it provides strong pathways for trademark owners to contest unfavorable decisions made by the Registrar. Though the language of the Act still denotes the IPAB as an appellate authority, the 2021 changes mean that individuals must now look to the High Courts for such matters. The establishment of specialized judges to handle cases in designated benches brings hope for timely resolutions. However, it is vital that the statutory provisions reflect current practices to prevent confusion. There is a pressing need for an effective appellate structure, especially considering how many registries’ decisions are influenced by inadequately trained staff.
Frequently Asked Questions (FAQs)
Who can appeal under Section 91?
Any individual who feels wronged by a decision from the Trademark Registrar can appeal according to Section 91. This may include the applicant, registered owner, license holder, or assignee.
Before whom does an appeal under Section 91 lie?
Previously, it was the Intellectual Property Appellate Board that dealt with such appeals, but now, the concerned High Court takes jurisdiction over these matters.
Does IPAB still exist?
No, the IPAB was abolished in 2021 as part of the Tribunal Reforms Ordinance 2021, with matters transferred back to the concerned High Courts.
Why was IPAB abolished?
The IPAB faced numerous issues, including delays and insufficient resources, impacting its efficacy in addressing appellate matters.
Is there a time limit for filing an appeal?
Yes, an appeal must be filed within three months of receiving the impugned order from the trademark office, as stipulated in Section 91.
What if I exceed the time limit?
If the time limit is exceeded, you must provide valid reasons to the High Court for the delay, and they may choose to accept your appeal at their discretion.
