In the realm of trademark law in India, the Registrar of Trade Marks plays a pivotal role in administering and regulating trademark registration. Disputes often arise in the course of trademark proceedings, leading to appeals before higher judicial authorities. A significant legal issue in this context revolves around the applicability of Section 100A of the Code of Civil Procedure (CPC) in appeals from decisions of the Registrar of Trade Marks.

This article delves into the legal intricacies surrounding the application of Section 100A of the CPC in appeals from the Registrar of Trade Marks. It examines the distinction between the Registrar and a civil court, the historical context of appellate remedies, and the scope of Section 100A.

Registrar of Trade Marks Vs. Civil Court:
The first point of contention revolves around the nature of the Registrar of Trade Marks. It is crucial to recognize that the Registrar, while endowed with certain powers akin to those of a civil court, does not qualify as a civil court. This distinction is reinforced by judicial precedent, notably the decisions in Anglo-French Drug Co. and Khoday Distilleries. The "trappings of a court" test, as established in these cases, is not met by the Registrar, as it fundamentally lacks the essential attributes of a civil court.

Appellate Remedies under the 1999 Trade Marks Act:
Section 91 of the Trade Marks Act, 1999 (TM Act) governs the appellate remedy from decisions of the Registrar of Trade Marks. Importantly, this section does not prescribe that the appellate remedy must be governed by the provisions of the CPC.

This is a departure from previous trademark legislation, such as Section 76 of the 1940 TM Act and Section 109 of the 1958 TM Act, which explicitly provided for CPC's applicability. Additionally, the Indian Succession Act, 1925, on which the Full Bench relied in Avtar Narain Behal, further underscores this departure.

The Role of Section 100A of the CPC:
Section 100A of the CPC is at the heart of the debate surrounding the applicability of CPC to appeals from the Registrar of Trade Marks. This section empowers High Courts to frame substantial questions of law in appeals to be decided. However, it is vital to interpret Section 100A within the context of its intended application.

While the CPC undeniably could bar the remedy available under a Letters Patent Appeal (LPA), such provisions should be read in relation to causes and appeals governed by the CPC. It is doubtful that Section 100A of the CPC should be stretched to cover all appeals, especially those arising from special enactments. The intent of Section 100A appears to be focused on eclipsing the remedy of an intra-court appeal under the Letters Patent when it comes to matters governed explicitly by the CPC.

The Concluding Note:
In conclusion, the applicability of Section 100A of the CPC in appeals from the Registrar of Trade Marks raises complex questions of law. While the Registrar possesses certain powers similar to a civil court, it is not deemed a civil court in its entirety. Section 91 of the 1999 TM Act does not explicitly mandate CPC's application, marking a departure from earlier legislation. Section 100A of the CPC, while potent, should be interpreted with caution to avoid its overextension into matters not governed by the CPC.

Case Law Discussed:
Case Title: Promoshirt SM SA v/s Armassuisse and another
Date of Judgement:06.09.2023
Case No. LPA 136 of 2023
Neutral Citation No: 2023:DHC:6352-DB
Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma H.J.
Name of Court: Delhi High Court

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

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