This article was written by Pruthvi Ramakanta Hegde. This article covers in depth view of Section 123 of the Trade Marks Act, 1999. The article further covers an overview of Trade Marks Act, meaning and the scope of public servant as per Section 2(28) of the Bharatiya Nyay Sanhita. The various kinds of public servants under the Trade Marks Act and with their roles and duties are covered under this article.

Introduction

In India, public servants have the responsibility to act in the public’s best interest. Within the framework of various laws in India, certain individuals are designated as public servants. The Trade Marks Act, of 1999, (hereinafter called as “Act”) is a  law that provides protection towards trademarks. Section 123 of this Act says that anyone appointed under this law is considered a public servant under the meaning given in Section 21 of the Indian Penal Code, 1860 (hereinafter referred to as IPC). With the Bharatiya Nyay Sanhita (BNS), 2023 now in effect, Section 2(28) of the BNS defines public servants in alignment with this provision. 

The definition of public servant in BNS is the same as it was in IPC. Apart from the change in provision number, no change is brought by BNS in the definition of public servant. This change in law is affirmed by Section 8 of the General Clauses Act, 1897. This Section states that any amendments or changes in a law will automatically apply to other provisions that reference the original law, even if those provisions have not been explicitly amended to reflect the change. Thus, reference to Section 21 of IPC in Section 123 of Trade Marks Act will be construed as Section 2(28) of BNS. Within the provision of Section 123 anyone appointed means any officers and employees who help to enforce trademark laws have the same duties and are held to the same standards as other public servants in India. 

Overview of Trademark and Trade Marks Act, 1999

Trademarks always help to protect business brands from misuse by someone. Customers can identify different products and services without any confusion with the help of proper trademark because it represents a company’s products and services. It can be in any form like a unique symbol, name, logo, or any signatures. Trademarks can be considered as a brand’s identity that will help customers to differentiate  one company’s goods from another company. According to the Trade Marks Act, 1999, a trademark must be a “mark.” The term “mark” is defined in Section 2(1)(m) of the Act. 

This section provides that a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours, or any combination. In India, there was not a specific law for trademarks till 1940. In 1940 the first Trade Marks Act came into existence in India which was called Trade Mark Act, 1940. This Act was later replaced by the Trade Marks Act of 1958. The current law, the Trade Marks Act of 1999, came into effect in 2003. The Act is in alignment with the TRIPS agreement and Paris Convention.

Duties and liabilities of public servants as per BNS

Public servants are required to perform assigned duties, otherwise, they will face punishment as per these Sections:

Public servant disobeying the law with intent to cause harm

As per Section 196 of the BNS (in past it was Section 166 of IPC) if a public servant knowingly ignores any legal direction regarding how they should conduct themselves in their role, and intending to cause harm or knowing it is likely that their disobedience will cause harm to someone, they can be punished. The punishment could be simple imprisonment for up to one year, a fine, or both.

For instance, if an officer, who is legally required to seize property to satisfy a court order in favour of someone, deliberately disobeys this order, knowing that it might harm the person who is supposed to be benefited, the officer commits an offence under this Section.

Public servant disobeying specific legal directions

As per Section 197 of the BNS (Section 166A of IPC) a public servant who:

• Knowingly disobeys a law that prevents them from requiring someone to attend a place for investigation,
• Knowingly disobeys any other legal direction about how they should conduct an investigation, harming someone in the process, or
• Fails to record information about serious crimes such as assault, rape, or trafficking as required by law,

Then such a public servant shall face rigorous imprisonment for at least six months, which can extend to two years, along with a fine.

These duties and liabilities apply to the public servant under the Act, since it states that the public servant can be understood as per the meaning dealt in the BNS.

Section 123 of Trade Marks Act, 1999

Section 123 of the Trade Marks Act, 1999 prescribes the provisions for the public servants. Accordingly, the Section states that “Every person appointed under this Act shall be deemed to be a public servant within the meaning of Section 21 of the Indian Penal Code (45 of 1860).”

As per the above Section of the Act, 1999, anyone who is appointed under this Act is considered to be a public servant. Previously, the provision applied to both individuals appointed under the Act and members of the Appellate Board. The Appellate Board was constituted under Section 83 of the Trade Marks Act, 1999. However, with the enactment of the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, the Appellate Board was abolished. As a result, the reference to the Appellate Board has been omitted. The functions of the Appellate Board have now been transferred to the Commercial Courts and High Courts, which will handle matters that were previously under the jurisdiction of the Appellate Board.

At present Section 2(28) of the BNS defines who qualifies as a public servant, by covering various categories of people in government positions. 

Meaning and scope of the public servant as per Indian Penal Code, 1860

Public servants under the Trade Marks Act need to be understood as per the definition provided in Section 2(28) of the BNS. Following are several categories of people who fall under this definition.

• Commissioned officers: Officers in the Indian military, Naval, or Air Forces are considered public servants.
• Judges: Every judge, which includes anyone who has the legal authority to carry out decisions or judgments, is considered to be a public servant.
• Court officers: Every officer working in a court, such as a liquidator, receiver, or commissioner, who has duties like investigating, reporting, handling documents, managing property, or maintaining order in court, is considered as a public servant. This also includes anyone specially authorised by the court to perform these duties.
• Jury members and panchayat assistants: Every jury member, assessor, or member of a panchayat who assists the  court or public servant is considered as a  public servant.
• Arbitrators and referees: Every person who has provided a matter to decide or decided matters reported by any court of justice or another public authority is considered a public servant.
• Officers with confinement powers: Anyone who holds a position that gives them the authority to place or keep someone in confinement is a public servant.
• Government officers: Every government officer whose job is to prevent crimes, report offences, bring criminals to justice, or protect public health, safety, or convenience is a public servant.
• Officers handling government property: Every officer responsible for taking care of, managing, or spending government property, or dealing with matters related to government finances, is considered as a public servant.
• Officers handling local property: Every officer who manages property, levies taxes, or deals with documents that determine the rights of people in a village, town, or district is a public servant.
• Election officers: Every person who is responsible for preparing, publishing, or revising an electoral roll, or conducting an election, is considered as a public servant.
• Government or public service employees: Anyone who is working for the government or getting paid by the government to perform public duties is a public servant. 

Therefore, any people who fit into any of these categories are considered as public servants. 

From the definition provided in Section 2(28) of the BNS, public servants under the Act fall into the “government or public service employees list”. The officers and members under the Act, like those who handle trademark registrations, disputes, and enforcement, are performing public duties. Since they are either appointed by the government or paid by the government to carry out these functions, they fall under the category of “government or public service employees.”

According to the Section 2(28) of the BNS, anyone performing public duties or serving the government, whether directly employed or working for a government body, is termed as a public servant. 

Public servants under the Trade Marks Act

The officers and officials, appointed under the Act, are considered public servants as per the meaning of Section 123 of the Trade Marks Act. They are as follows:

Appointment and roles of the registrar and other officers

• Under Section 3(1) of the Act, the Central Government can appoint a person as the Controller-General of Patents, Designs, and Trademarks. This person acts as the Registrar for this Act and also acts as the Controller for the Indian Patents and Designs Act, 1911. Central government appoints the registrar by notification in the Official Gazette. 
• Under Section 3(2) of the Act, the Central Government has the authority to appoint other officers with various titles to assist the Registrar. These officers perform functions authorised by the Registrar and work under his supervision and direction.

Officers at the trademarks registry 

Sections 5 and Section 6 of the Act contain the provisions for the Trade Marks Registry. The officers at the head office and branch offices work to facilitate the registration of trademarks. The Central Government specifies the locations and territorial limits for these offices, and the officers determine the Registry’s functions.

Duties of the registrar

As per Section 6, the Registrar is responsible for maintaining the register of Trade Marks. This register contains all registered trademarks details that covers names, addresses of the proprietors, notifications of assignments, conditions, and other relevant information. The Registrar needs to manage this register under the control and direction of the Central Government. 

Powers of the registrar 

The Act prescribes several powers to the registrar, that includes:

• As per Section 4 of the Act, the Registrar has the authority to withdraw any matter pending before an officer appointed under Section 3(2). The Registrar can do this by issuing a written order with reasons recorded in it. Once the matter is withdrawn, the Registrar can choose to handle it personally, either starting over or continuing from the stage it was withdrawn.
• Alternatively, the Registrar can transfer the matter to another officer appointed under Section 3(2). The officer receiving the transferred matter may continue with it either from the beginning or from the stage it was transferred, depending on any specific directions given in the transfer order.
• As per Section 50 of the Act, the Registrar has the power to vary or cancel the registration of a registered user. 
• As per Section 51 of the Act, Registrar has the authority to ask the registered owner of a trademark to provide confirmation, in writing, that the agreement between the owner and the registered user is still valid and active. If the registered proprietor fails to provide this confirmation within the specified time, the registered user’s rights to use the trademark will automatically cease, and the Registrar will officially note this change.
• Section 127 of the Act, prescribes several rights of the registrar. It includes:
  • As per Section 127(a) the Registrar has the same powers as a civil court has for the proceedings under the Trade Marks Act. These powers include:
    • Receiving evidence.
    • Administering oaths.
    • Enforcing the attendance of witnesses.
    • Compelling the discovery and production of documents.
    • Issuing commissions for the examination of witnesses.
  • As per Section 127(b) the Registrar can make orders regarding costs, as he considers reasonable, in line with any rules made under Section 157. These orders are enforceable as if they were decrees of a civil court.
  • However, the Registrar cannot award costs to or against any party in an appeal related to the refusal by the proprietor of a certification trademark to certify goods or services or to authorise the use of the mark.
  • As per Section 127(c) the Registrar has the authority to review his own decisions upon receiving an application made in the prescribed manner.
• As per Section 128, the Registrar provided with the discretionary powers under the Act. However, if any person is affected by the decision of the Registrar then the Registrar must give them a chance to present their case before making a decision that could negatively affect them.
• As per Section 129, in any proceeding before the Registrar, evidence is usually given through affidavits. The Registrar may also decide to take oral evidence instead of an affidavit.
• As per Section 130, if someone involved in any case under this Act dies while the case is still ongoing, in such circumstances the Registrar can allow the deceased person’s successor such as a legal heir to continue the case. However, this can only happen if the successor makes a request and provides enough evidence to show that they have taken over the deceased person’s interest or rights in the matter.
• As per Section 131, the Registrar has the authority to extend the time limit for completing certain actions required by the Act. Registrar authority is not confined if time limits are explicitly fixed by the Act itself.  However, to get this extension, the person must apply in the proper way, pay the required fee, and provide a valid reason for needing more time.

Conclusion 

Section 123 of the Act classifies the officers working under this Act as a public servant. The meaning of public servant under Section 123 is linked with Section 2(28) of the BNS. As a public servant, the officers have to carry the responsibility towards the public. Moreover, the officers always need to serve the public’s best interest. As a public servant under this Act, they have their own duties and responsibilities. However, if officers fail to perform those duties, it creates liabilities for them. 

Frequently Asked Questions (FAQs)

Who are considered public servants under Section 123?

Officers working under the Act, including the registrar and other appointed officers, are considered public servants according to Section 123 of the Act.

How does Section 2(28) of the BNS relate to Section 123 of the Trade Marks Act?

Section 2(28) of the BNS (Section 21 of IPC), aligns with the Section 123 of the Trade Marks Act, in a way that it defines who is considered as a public servant. Similarly, for the duties, responsibilities and liabilities of the public servant, Section 2(28) of the BNS is applicable.  

What is the corresponding Section in the BNS for Section 21 of the IPC?

The corresponding Section in the BNS for Section 21 of the IPC, which defines “Public Servant,” is Section 2(28) of BNS. No change is brought by BNS to the definition of public servant apart from changing the serial number of the provision.

References

• https://blog.ipleaders.in/the-trade-marks-act-1999/
• https://blog.ipleaders.in/what-is-a-trademark/

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