Home case law Section 91 of Trade Marks Act, 1999

Section 91 of Trade Marks Act, 1999

October 18, 2024

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This article is written by Arkadyuti Sarkar. This article discusses Section 91 of the Trade Marks Act, 1999, which entails the provisions concerning appeals to the Appellate Board against the orders or decisions of the Registrar of the Trademark. This article provides an in-depth explanation of Section 91 of the Trade Marks Act, 1999. The article includes the establishment and composition of the Intellectual Property Appellate Board, grounds for appeal, the limitation period for filing an appeal, and explains the appellate jurisdiction of the High Court under the Act. Further, it also discusses relevant case laws under this section.

Table of Contents

Introduction

Rakesh has planned to start his salon in the Park Street Area of Kolkata under the name “Hairesh.” He decided to file for the trademark on a proposed-to-be used basis, i.e., filing for registration before starting its actual use. On 20th February 2020, he filed the trademark through a renowned attorney. However, in March, the Union Government declares the lockdown and everything comes to a standstill. However, in 2021 when things improved a bit, Rakesh started his salon business by the name of “Hairesh” in March, during which he built the website, printed invoices containing the brand and logo, and even advertised in newspapers. The registry had been in stagnation due to the pandemic but finally, by the end of 2021, it issued an examination report to Rakesh conveying that the mark is non-registrable as per the provisions of Section 9 of the Trade Marks Act, 1999. Rakesh filed the reply through his attorney and the registry, still not satisfied, calls for a hearing, which is scheduled for April 2022. Before the hearing, Rakesh furnished all the necessary documents, through his attorney, to the registry showing his usages since March 2021, showing continuous and uninterrupted usage since 2021. However, the registry, still not satisfied with his contentions and the documents, rejected the Mark. Rakesh, now aggrieved by the refusal order, enquires from his attorney about the available options, who mentions the review and the appeal.

When it comes to trademark registration, trademark licensing, assignment, etc., most of them are long and time-consuming processes that pass through multiple stages before the Trademark Registry as in the situation mentioned above, until their acceptance or refusal. Moreover, it is not uncommon for the Registrar of Trademarks to refuse the registration of any mark or pass some adverse order concerning any trademark-related matter pending before the Trademark Registry. When the registrar passes any adverse order or decision, there are only two options left for the applicant/owner, i.e., either filing a review before the concerned Trademark Registry or appealing against the decision of the registrar.

In this article, we will discuss the provisions concerning such appeals against the orders or decisions of a registrar under the Trade Marks Act, 1999. Until 2021 such appeals lay before the Appellate Board, also known as the Intellectual Property Appellate Board for appeals concerning all intellectual property matters. However, vide Tribunal Reforms Act, 2021 the Intellectual Property Appellate Board was abolished, and the matters pending before them and all future appellate matters were transferred to the High Courts, under whose jurisdiction a concerned Trade Mark Registry lies. We will discuss that as well, but for now, let us go through the appellate provisions under Section 91 of the Trade Marks Act, 1999. Before that, however, let us understand what used to be the provision for the constitution of the Intellectual Property Appellate Board.

The Intellectual Property Appellate Board

The Intellectual Property Appellate Board (hereinafter referred to as “the IPAB”) was a quasi-judicial appellate body that was established on 15th September 2003 by the Indian Government for hearing and resolving appeals against the Registrar of Trade Marks under the Trade Marks Act, 1999 and the Geographical Indications of Goods Act, 1999. On 2nd April 2007, the IPAB was further authorised to hear appeals against the Patent Controller under the Patents Act, 1970 and the Copyright Board under the Copyright Act, 1956, as well.

Establishment and composition of the Appellate Board

Establishment

According to Section 83 of the Trade Marks Act, 1999, the Union Government established the Intellectual Property Appellate Board to exercise the jurisdiction, powers, and authority vested in it or under the Act.

Composition

Section 84 of the Trade Marks Act, 1999, provides for the composition of the IPAB.

The IPAB shall consist of a chairman, vice chairman, and other members as the Union Government may consider appropriate. Subject to other provisions of the Act, the power, jurisdiction, and authority of the IPAB may be exercisable by the benches.
Depending on other provisions under this Act, an IPAB Bench shall have one judicial member and one technical member who shall sit at a place that the Union Government may notify in the Official Gazette.
Not being affected by anything under Section 84(2) of the Act of 1999, the chairman may:

Discharge the functions of the judicial member or technical member of any other bench in addition to discharging the functions of the judicial or technical member of the bench of his appointment;
Transfer one member from a bench to another;
Authorise the vice chairman, the judicial/the technical member appointed to one bench, to discharge the functions of members from another bench.

Where any benches are formed, the Union Government may provide for the distribution of the business of the IPAB amongst the benches and specify the matters to be dealt with by each bench.
The chairman shall hold the final authority to determine whether any matter falls within the purview of the business allocated to a bench. Moreover, “matter” includes an appeal referred to under Section 91 of this Act of 1999.
Upon a difference of opinion on any point, the members of a bench shall mention the point or points leading to such a difference and refer the same to the chairman, who shall hear them himself or refer the same for hearing by one or more members who shall decide the same based on majority.

Explanation of Section 91 of Trade Marks Act, 1999

This Section entails the provisions for an appeal against the order or decision of the trademark Registrar or the Trade Mark Rules before the IPAB within 3 months of receiving such an order or decision.

Grounds for appeal under Section 91

According to Section 91(1) of the Act of 1999, any person aggrieved by an order or decision of the registrar under this or the rules made thereunder may appeal before the Appellate Board within 3 months of the communication of such an order or decision to him. Therefore, it becomes abundantly clear that any person can appeal against the order or decision of the Trade Mark Registrar if such person is aggrieved by such order or decision. However, such an appeal must be made within three months of receiving such an order/decision. Now for receiving such an order/decision the word “communication” has been used, which leaves room for us to interpret that such communication includes communication from the registry by post or electronic medium. Therefore, Rakesh is entitled to appeal against the refusal order, as mentioned earlier, under this provision before the IPAB. However, the same must be done by him within three months from the date on which he receives the refusal order.

Limitation period for filing an appeal

According to Section 91(2) of the Act of 1999, no appeal shall be admitted if the same is preferred after the end of the period mentioned under Section 91(1). Simply put, if any appeal is preferred to the IPAB after the end of the three-month limitation period mentioned in Section 91(1), then such an appeal shall not be entertained by the IPAB. However, Section 91(2) also allows such an appeal by the IPAB if the board is satisfied that the appellant had sufficient cause(s) for failing to refer such an appeal within the limitation period of 3 months.

If Rakesh appeals after the expiration of the three-month limitation period mentioned earlier, then IPAB may refuse to entertain the appeal. Now, let us imagine a scenario where Rakesh’s attorney communicates the refusal order after a month and Rakesh miscalculates the same from the date of issuance files after the expiration of three months and mentions the reason for such delay. Then, IPAB may exercise its discretionary authority to permit such an appeal to be heard.

Prescribed form, fees, and documents

Section 91(3) of the Act of 1999 mentions that an appeal before the IPAB must be in the prescribed format and the same has to be verified in a prescribed manner. Moreover, such an appeal must contain a copy of the order or decision of the registrar against which the appeal is being preferred to the IPAB and the prescribed fees must be paid by the appellant for filing the appeal.

To appeal against the refusal order, Rakesh will have to fill out the necessary form, attach a copy of the refusal order, pay the required fees, and file the appeal before the IPAB.

Appellate jurisdiction of the High Court under the Act

Till now, we have discussed the provisions concerning an appeal before the IPAB. However, things have changed since 2021 although the same is not reflected in the statutory language of Section 91 of the Act of 1999. As we had mentioned earlier, the IPAB was dissolved on 4th April 2021 vide the Tribunal Reforms Ordinance 2021.

With the IPAB being abolished, the pending cases were transferred back to the High Courts. The IPAB was established in 2003 to reduce the burden on the High Courts by transferring appellate matters concerning intellectual property to the IPAB. However, IPAB was severely criticised for being understaffed and lacking the necessary resources to deal with the subjects under its adjudication. Moreover, even the decision of the IPAB could be appealed before the High Courts, thereby complicating the process. Afterwards, the jurisdiction of the High Courts was removed in 2019 to alleviate the processes but the same remained unfruitful.

In 2021, the IPAB was dissolved and the Appellate Authority returned to the concerned High Courts. This time, however, special and separate Intellectual Property Rights Division (“IPRD”) and Intellectual Property Rights Division Benches have been announced for dealing with various original and appellate matters arising from trademarks and other intellectual properties.

Delhi High Court, Bombay High Court, and Madras High Court already have operational IPRD and IPRAD benches, wherein the first is a single bench and the latter is the division bench. This time, the appellate process is expected to be faster than before, as special benches headed by specialized Judges shall be authorized to deal with intellectual property matters in the High Courts.

Relevant case laws surrounding Section 91 of Trade Marks Act, 1999

Ashwa Ghosh vs. Vizrt Ag and Others (2023)

Facts

In this case, an appeal was preferred under Section 91 of the Trade Marks Act 1999 against a decision involving domain names by the World Intellectual Property Organization’s (WIPO) administrative panel.

Issues

Whether a decision by the WIPO Administrative Panel is fit to be appealed under Section 91 and deemed the decision of the Registrar?

Decision

The Delhi High Court held that no appeal lies under Section 91 of the Act of 1999 against the orders passed by the Administrative Panel of WIPO because the Section provides for appeals against the orders or decisions passed by the registrar.
The term registrar has been defined under Section 2(y) of the Act. Section 3 of the Act provides for the appointment of a specific officer as the Controller General of Patents, Designs, and Trade Marks by the Union Government after notifying the same through the Official Gazette.
Therefore, the Delhi High Court held that since the decision was not made by the Registrar of Trade Marks and that the WIPO Administrative Panel does not come under the purview of the Registrar under Section 3, the decision of the Administrative Panel cannot be appealed under Section 91.

Kamdhenu Ltd. vs. The Registrar of Trade Marks (2023)

Facts

In this case, the appellant, i.e., M/S Kamdhenu Ltd., had appealed under Section 91(1) of the Act of 1999 against an impugned order dated 23rd April 2019 by the respondent, i.e., the Registrar of Trade Marks, New Delhi, under Rule 124 of the Trademark Rules 2017.
The registrar stated that the primary reason for rejecting the grant of application was that the appellant had failed to provide evidence of the well-known status of the mark “KAMDHENU” through an affidavit.
Thus, the appellant preferred an appeal before the IPAB in 2019; however, the same was transferred to the Delhi High Court in 2021 after the dissolution of the IPAB vide Tribunal Reforms Act, 2021.

Issues

The question in this case is what is to be the nature of evidence and documents to be filed by an applicant with the registrar for determining a well-known trademark under Section 11 read with Rule 124 of the 2017 Rules.

Arguments by the petitioner

The appellant/petitioner submitted through its counsel that the respondent’s approach was erroneous because the primary reason for rejecting the application for a well-known mark was due to the non-filing of evidence through an affidavit.
The petitioner argued that it is not mandatory under Rule 124 to file evidence only through an affidavit and that the appellant had already filed multiple documents in support of their claim for “KAMDEHNU”.
The petitioner further relied upon Rules 45, 80, 86, 95, and 96 of the 2017 Rules and argued that these provisions specify the types of evidence that can be adduced and hence even if documentary evidence is filed in the present case, the same is sufficient for compliance under Rule 124, and the same must be examined by the registrar (“Respondent”).
The appellant also relied on the provisions of the Indian Evidence Act, 1872 (now Bharatiya Sakshya Adhiniyam 2023) and argued that evidence can be oral and documentary. Moreover, Section 1 of the Act of 1872 is not applicable to affidavits presented before a court or an officer. Hence, a mere affidavit by itself is not evidence and the rejection of the appellant’s application by the respondent is unsustainable.

Arguments by the respondent

The respondent’s counsel relied upon a public notice dated 22nd May 2017 issued by the Office of the CGPTDM, which requires the filing of evidence for the declaration of a well-known mark.
The respondent further submitted that, by the nature of the required evidence, it is implicit that the same needs to be filed through an affidavit, and non-filing of the same would mean that the application cannot be considered by the registrar.

Judgement

The Delhi High Court gave a detailed reading of the provisions of the Act of 1999, especially Section 29, along with the 2017 Rules and concluded that the registry should have given an opportunity to the petitioner to file an affidavit without going through the statement of the case if it had so opined that an affidavit was necessary and non-filing means dismissal of the application. Hence, the court allowed the appeal and provided an opportunity for the appellant to file the affidavit necessary to claim the well-known status.

Navaid Khan vs. Registrar of Trademarks Office (2023)

Facts

Here, the appellant had filed an application for registering his mark “CruzOil” on 21st February 2020 under Class 4 of the niche classification.
The Trade Mark Registrar issued an examination report on 4th May 2020 and objected to its registration under Section 9(1)(b) of the Trade Marks Act, 1999, such that the mark consists exclusively of words that may designate the intended purpose of goods in the trade.
On 29th May 2020, the petitioner replied to the abovementioned examination report and stated that the concerned mark should be considered as a whole and that the same lacks dictionary meaning nor has any common usage.
The respondent called for a hearing, to which the appellant appeared through his representative and made his submissions, and on 12th January the respondent passed a refusal order against the registration of the appellant’s mark.
Thus, the appellant filed this appeal under Section 91 of the Act of 1999.

Arguments by the petitioner

The petitioner’s counsel argued that the concerned mark is arbitrary and distinctive and does not relate to the goods, i.e., industrial lubricants.
The word ‘CruzOil’ has no dictionary meaning.
The petitioner further submitted that a device mark having a combination of words and devices needs to be considered in its entirety for registration.
The appellant also mentioned that he has made a disclaimer with regard to the exclusive right to use the word “Oil”.

Arguments by the respondent

The respondent opposed the appeal and relied on the impugned order passed by it under Section 9(1)(b).
The respondent further submitted that the grounds for refusing the concerned mark of the appellant under Section 9(1)(b) are absolute and since the concerned mark is descriptive and designates the kind and intended purpose of the goods, the respondent has correctly refused the application for registering the same.

Judgement

The High Court of Delhi noted that the appellant had applied for registering a composite device mark containing the word “CruzOil” along with other elements. However, the respondent’s impugned order proceeded on the basis that the mark is a word mark and treated it as such.
The court opined that a mark having a combination of words and devices must be considered as a whole for granting registration.
The court further noticed that the impugned mark contained several unique and arbitrary elements, like a tagline, a yellow background with two purple rings, and unique semi-circular patterns with images of 4 stars on alternative sides with a pattern of slanting parallel lines.
The court relied on Abu Dhabi Global Market vs. Registrar of Trademarks (2023), wherein this court had interpreted Section 9(1)(b) and had opined that “composite marks ipso facto stand excluded from the purview of Section 9(1)(b) of the Act, even if parts of the same consist of marks or indications that may come under the absolute grounds for restriction under Section 9(1)(b).
The court observed that only if the entire mark exclusively falls within one of the excepted categories under Section 9(1)(b) can the mark be treated as statutorily proscribed.
Hence, the court held that the respondent had erred by dissecting the subject mark into individual parts while considering it for registration. The court further noted that the appellant had provided a disclaimer with regard to the exclusive right to use the word “Oil”.
Thus, the court allowed the appeal to set aside the respondent’s refusal order and further directed the respondent to proceed with the journal publication of the mark under Section 20 of the Act.

Conclusion

After analyzing the provisions of Section 91 of the Trade Marks Act and reading some recent landmark judgements we can conclude that Section 91 provides a great opportunity for an applicant/trademark owner to oppose any order/decision of the Trademark Registrar and appeal the same before the concerned High Court.

The statutory language of Section 91 of the Act of 1999 still mentions the Appellate Board, i.e., the IPAB, as the appellate authority against the decisions of the Trademark Registrar, although the same was abolished about 3 years ago vide Tribunal Reforms Act, 2021. The IPAB failed to perform its objectives from its very inception and thus appellate authorities concerning intellectual property matters were returned to the High Courts. However, this time, separate benches for dealing with intellectual property matters are being established and the same brings hope for speedy resolution to the cases concerning intellectual properties.

Section 91, along with several other provisions of the Trade Marks Act, needs to be amended as soon as possible; otherwise, confusion may occur for the applicants as well as the practitioners concerning the current appellate authority. The need for having an effective appellate mechanism further arises because most trademark registries are operating through the employment of contractual employees who have a severe lack of specialised knowledge of intellectual properties and trademark law in India. These contractual employees render orders and judgements based on their whims and fancies rather than the provisions of the Trade Mark Act.

Frequently Asked Questions (FAQs)

Who can appeal under Section 91?

Any person aggrieved by the order/or decision of the Registrar of Trade Marks, i.e., the Trademark Registry, can appeal before the Intellectual Property Appellate Board (now the High Court) as provided by Section 91. Such person may be the applicant, registered owner, registered licensee, registered assignee and others.

Before whom does an appeal under Section 91 lie?

Previously, it lay before the Intellectual Property Appellate Board, but now it lies before the concerned High Court, within whose jurisdiction the concerned Trade Mark Registry is located.

Does IPAB exist anymore?

No. It was abolished in 2021 vide the Tribunal Reforms Ordinance 2021 and the matters have been transferred to the concerned High Courts. In some High Courts like the High Courts of Delhi, Mumbai, and Madras, there are dedicated benches for dealing with the IP appellate and other related matters. For others, the commercial bench deals with the IPR appellate and related matters.

Why was IPAB abolished?

IPABs were established to deal with appellate matters against the orders or decisions of the registrar of trademarks. However, from their very inception, the appellate bodies suffered from issues like delay, lack of trained staff, lack of office spaces and necessary resources, etc.

Is there any time limit for referring an appeal before IPAB?

Yes, an aggrieved person, i.e., the appellant, must prefer the appeal before the IPAB (now the concerned High Court) within three (3) months of being communicated with the impugned order by the Trademark Registry.

What should I do if the time limit has been exceeded?

The appellant must satisfy the High Court with reasons for such a delayed filing and the IPAB (now the concerned High Court) may allow such a delayed appeal subject to its discretion.

References

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Section 91 of Trade Marks Act, 1999

Introduction

The Intellectual Property Appellate Board