Calcutta High Court: In a batch of three appeals filed under Section 91 of the Trade Marks Act, 1999 (‘Act’) against orders dated 16-09-2023 and 06-10-2023 passed by the Associate Managers of Trade Marks Registry, a Single Judge Bench of Krishna Rao, J. quashed and set aside the orders passed by the Associate Managers and held that since they were appointed under Section 3(2), hence, were not empowered to pass quasi-judicial orders.
Background
The Court had taken up all three appeals together for hearing because a similar question regarding the authority and competence of the Associate Managers to pass the impugned orders had been raised in all the matters.
The impugned orders in two 2023 matters were passed by Associate Manager 1 whereas, the third impugned order in the 2024 matter was passed by Associate Manager 2.
The appellants handed over a copy of the order dated 13-04-2022 wherein Associate Manager 1 had been appointed as Hearing Officer in Trade Marks Registry on a contract basis up to 31-03-2023 and clause (ix) in the said order mentioned that ‘no further continuation beyond the period of 31-03-2023 can be claimed’. The appellants contended that the contractual period of Associate Manager 1 was only up to 31-03-2023 but the impugned order was passed on 16-09-2023 which was beyond the period of his appointment and thus, the order could not be sustained and was liable to be set aside.
The appellants relied upon the order dated 09-06-2023 and submitted that by the said order only six officials of the Trade Mark Registry had been assigned the powers and duties to dispose of trade mark applications, conduct hearings, and pass speaking orders. However, Associate Manager had not been assigned any powers or duties through the said order.
The appellants also submitted the notification dated 17-02-2011 wherein the Trade Marks Registry had notified recruitment rules of several posts that showed the hierarchy of each post, and the said rules did not mention any post of ‘Associate Manager’.
Analysis and Decision
The Court stated that as per Section 3(1), the Controller-General of Patents, Designs, and Trade Marks is the Registrar of Trade Marks, and Section 3(2) indicated that the other officers, who are appointed by the Central Government to exercise the function of the Registrar, should undertake such functions only if they are authorized by the Registrar.
The Court noted that by a public notice dated 21-12-2021, applications were invited for hiring ‘Hearing Officers’ purely on contract basis. On 13-04-2022, an offer of engagement was issued to Associate Manager 1 and consequently, he was engaged as a Contract Hearing Officer along with others. Associate Manager 2 was engaged at this post on a contractual basis on 14-06-2023.
The Court noted that by an office order dated 28-11-2022, the Controller General of Patents, Designs, and Trade Marks delegated various functions of Registrar through an e-module of the Trade Marks Registry System upon the directions of the Registrar by the System Administrator. Consequently, on 24-05-2023, the Head Offices of the Trade Marks Registry were authorized to allocate/assign works to contractual manpower deployed at their locations through the Quality Council of India.
Further, the Court referred to Intellectual Property Attorneys Association v. Union of India 2014 SCC OnLine Del 1912 wherein the Delhi High Court held that the power vested in the Registrar of the Trade Marks under the Act is a quasi-judicial power.
The Court stated that the expression ‘other officers’ in Section 3(2) of the Act indicates that officers other than the Registrar/Controller General of Patents, Designs, and Trade Marks should be from the cadre of officers.
The Court said that Section 3(2) prescribes the requirement that the other officers appointed to discharge the functions of the Registrar are required to function under the superintendence and direction of the Registrar. However, the Court also said that the quasi-judicial functions are required to be performed independently and not subject to the superintendence or direction of any other person including the Registrar. The Court stated that Section 3(2) is only intended to empower the delegation of administrative power and not quasi-judicial power.
The Court stated that the Registrar dealing with the application under the Act had quasi-judicial powers and the delegation of powers mentioned in Section 3(2) is for administrative powers and thus, the Associate Managers appointed under Section 3(2) were not empowered to pass quasi-judicial orders.
Additionally, the Court stated that on 16-09-2023, i.e., the date on which the impugned order was passed, Associate Manager 1 was not holding the post in terms of the offer of engagement dated 13-04-2022. Thus, the Court quashed and set aside the impugned orders dated 16-09-2023 and 06-10-2023 passed by both the Associate Managers.
Lastly, the Court remanded the matters to the Registrar of Trade Marks to decide the matter afresh by a competent officer after giving an opportunity of hearing to all the parties since the Court had not gone into the merit of the matter and directed the matter to be disposed of within six months.
[Visa International Ltd. v. Visa International Service Association, 2024 SCC OnLine Cal 7238, Decided on 02-08-2024]
Advocates who appeared in this case :
For Appellants — Advocate Debnath Ghosh, Advocate Biswaroop Mukherjee, Advocate Vaibhavi Pandey, Advocate Rahul Poddar
For Respondents — Sr. Advocate Ranjan Bachawat, Advocate Soumya Ray Chowdhury, Advocate Pubali Sinha Chowdhury, Advocate Sagnik Bose, Advocate Mini Agarwal, Advocate Sunil Singhania, Advocate N.L. Singhania, Advocate Dibashis Basu, Advocate Arun Bandyopadhyay, Advocate Shuvasish Sengupta, Advocate Souvik Ghosh, Advocate Ranjan Kr. Sinha, Advocate Sanjukta Gupta
Buy Trade Marks Act, 1999 HERE
