This legal article explores the issue of whether orders passed by the administrative Panel of the World Intellectual Property Organization (WIPO) are appealable under Section 91 of the Trade Marks Act, 1999. Section 91 of the Trademarks Act 1999 provides the right to appeal for any person aggrieved by an order or decision of the Registrar under the Act or the rules made thereunder. The question in this case was whether the administrative Panel of WIPO can be considered as the Registrar under the meaning of the Trademarks Act 1999, thereby allowing appeals under Section 91 against its orders.

The Appeal:
This appeal has been filed under Section 91 of the Trade Marks Act, 1999, challenging an order passed by the administrative Panel of the World Intellectual Property Organization (WIPO).

Background:
The Trade Marks Act, 1999 is a comprehensive legislation in India governing trademark registration, protection, and enforcement. The Act aims to provide statutory protection to trademarks and prevent unauthorized use or infringement of these marks. It also establishes the office of the Registrar of Trademarks responsible for trademark registration and related matters.

The World Intellectual Property Organization (WIPO) is an international organization responsible for promoting intellectual property rights globally. Among its functions, WIPO operates a dispute resolution service for resolving domain name disputes, known as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is not specific to India but is applied worldwide to resolve disputes related to domain names incorporating trademarks.

Issue:

1. The central issue in this legal matter was whether an order passed by the administrative Panel of WIPO, functioning under the UDRP, could be considered equivalent to an order of the Registrar under the Trade Marks Act, 1999, thus allowing appeals under Section 91 of the Act.

Decision:
The Hon'ble High Court of Delhi ruled that the administrative Panel of WIPO is not equivalent to the Registrar as defined under the Trade Marks Act, 1999. Therefore, appeals under Section 91 of the Act cannot be entertained against orders passed by the WIPO administrative Panel.

Analysis:
Section 91 of the Trade Marks Act, 1999 provides the right to appeal to "any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder." To understand the applicability of Section 91, it is crucial to interpret the term "Registrar" as used in the Act.

The Act defines "Registrar" as the person appointed by the Central Government to perform the duties of the Registrar of Trademarks under the Act. The Registrar is responsible for registering trademarks, maintaining the trademark registry, and deciding various matters related to trademarks.

WIPO's administrative Panel, on the other hand, is a specialized body that deals with domain name disputes under the UDRP. The UDRP is a distinct mechanism, not governed by Indian law, and is intended to address domain name issues, mainly concerning cybersquatting and trademark infringement in domain names.

The Hon'ble High Court of Delhi's decision essentially rested on the distinction between the roles and functions of the Registrar under the Trade Marks Act and the administrative Panel of WIPO under the UDRP. The court concluded that the administrative Panel does not possess the same authority and legal standing as the Registrar, and, therefore, its orders cannot be challenged under Section 91 of the Trade Marks Act, 1999.

Conclusion:
In conclusion, the Hon'ble High Court of Delhi's decision clarified that orders passed by the administrative Panel of the World Intellectual Property Organization (WIPO) under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) are not appealable under Section 91 of the Trade Marks Act, 1999. As the administrative Panel is not considered the Registrar as defined in the Act, parties dissatisfied with its decisions must seek alternative remedies, if available, to challenge such orders. This ruling emphasizes the importance of understanding the scope and jurisdiction of different dispute resolution mechanisms while protecting intellectual property rights, both at the national and international levels.

The Case Law Discussed:
Case Title:Aswa Ghosh Vs VIZRT AG
Date of Judgement:19.07.2023
Case No.FAO IPD 5 of 2023
Neutral Citation:NA
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.

Disclaimer
Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539