The Registrar, the Central Government and the Appellate Board

Law of Trademarks · Unit IV · Topic 14 of 16 · 6 min read

The Trade Marks Registry and the Registrar's administrative and quasi-judicial powers, the powers of the Central Government, the constitution, composition and powers of the Intellectual Property Appellate Board from 2003 to 2021, its abolition by the Tribunals Reforms Act, 2021 and the present appellate route to the High Courts.

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1. The Registry and the Registrar
2. Functions of the Registrar
3. Powers of the Registrar
4. Powers of the Central Government
5. The Intellectual Property Appellate Board (2003 2021)
6. Abolition and the present route
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

The examinable core. Unit IV asks for the powers and functions of the Registrar, the powers of the Central Government, and the constitution, composition, powers and functions of the Appellate Board. Write the Board's provisions as they stood, then explain that the Tribunals Reforms Act, 2021 abolished it and moved its work to the High Courts. An answer that describes the IPAB as if it still existed loses marks.

1. The Registry and the Registrar

The Central Government appoints the Controller General of Patents, Designs and Trade Marks as the Registrar of Trade Marks (s.3), and may appoint other officers to discharge the Registrar's functions under his superintendence. The Trade Marks Registry has its head office at Mumbai and branch offices at Delhi, Kolkata, Chennai and Ahmedabad (s.5); each office deals with applications from its territory. The Registrar keeps the register of trade marks, which may be kept wholly or partly on computer (s.6), and the Trade Marks Journal, now published online.

2. Functions of the Registrar

Administrative functions:

Examination of applications on absolute and relative grounds, with a search of earlier marks, and acceptance, conditional acceptance or refusal (s.18(4)).
Advertisement (s.20), registration and issue of the certificate (s.23), renewal and removal for non-payment of renewal fees (s.25).
Correction and amendment of entries in the register (s.58) and recording of assignments, transmissions and registered users (ss.45, 49).
Maintaining the classification of goods and services (the Nice Classification, in the Fourth Schedule to the Trade Marks Rules, 2017).
Determining, on request, that a mark is well known, and publishing the list (rule 124).
Acting as the office of origin and designated office under the Madrid Protocol (Chapter IVA).

Quasi-judicial functions:

Deciding oppositions (s.21), applications for honest concurrent use (s.12), removal for non-use (s.47) and rectification (s.57), concurrently with the High Court for the last two since 2021.
Approving assignments that would otherwise be invalid (ss.40, 41) and directing advertisement of assignments without goodwill (s.42).
Varying or cancelling registered user entries (s.50).
Giving an opinion to the police before search and seizure for offences (s.115(4)).

3. Powers of the Registrar

Powers of a civil court (s.127) in any proceeding: receiving evidence, administering oaths, enforcing attendance of witnesses, compelling discovery and production of documents, issuing commissions for examination of witnesses, and awarding costs, with power to review his own decision on application.
Discretion only after hearing (s.128): the Registrar shall not exercise a discretionary power adversely to an applicant without giving him an opportunity of being heard.
Extension of time, on application, for acts not otherwise fixed by the Act.
Preliminary advice on whether a mark is distinctive, on application before filing (s.133).
Rectification of his own motion, after notice to the parties (s.57(4)).

These powers are quasi-judicial, so the rules of natural justice apply. Courts have set aside orders of the Registry that refused applications without reasons or without a hearing, and have restored applications treated as abandoned where the examination report or notice was never properly served.

4. Powers of the Central Government

Appointments: the Registrar and other officers (s.3), and the establishment of branch offices (s.5).
Convention countries: notification of countries that give reciprocal treatment, so that priority can be claimed from applications there (s.154).
Rule-making (s.157): the Trade Marks Rules, 2017 and their amendments, including fees, forms, the classification and the Madrid procedures.
Directions on matters of policy and administration of the Registry, through the Department for Promotion of Industry and Internal Trade.
Appointments to the Appellate Board (until 2021), which was the main source of the constitutional objections to the Board.

5. The Intellectual Property Appellate Board (2003–2021)

Constitution. Chapter XI of the 1999 Act (ss.83 onwards) established the Appellate Board. It was constituted on 15 September 2003 with its seat at Chennai, and sat in benches at Chennai, Mumbai, Delhi, Kolkata and Ahmedabad.

Composition. A Chairman, a Vice-Chairman and such number of judicial and technical members as the Central Government thought fit. The Chairman had to be a retired High Court judge or a person with comparable experience; technical members were drawn from senior officers of the Trade Marks Registry or experienced trade mark agents. A bench consisted of one judicial and one technical member.

Powers and functions.

Hearing appeals from orders or decisions of the Registrar, within three months (s.91).
Hearing applications for rectification (s.57) and removal for non-use (s.47), original jurisdiction it shared with the Registrar.
Powers of a civil court for its proceedings, and freedom from the Code of Civil Procedure, guided by natural justice (s.92).
Exclusive jurisdiction: no court could entertain matters within its jurisdiction (s.93). Where an infringement suit was pending and the defendant pleaded invalidity, the court stayed the suit and the rectification went to the Board (s.124).

From 2007 the Board also heard patent appeals, and the Finance Act, 2017 merged the Copyright Board into it.

6. Abolition and the present route

The Board suffered long vacancies in the posts of Chairman and technical members, and for long periods could not sit at all. The Supreme Court's tribunal cases, ending with Madras Bar Association v. Union of India, 2021 INSC 332, struck down provisions of the Tribunals Reforms Ordinance, 2021 on tenure and conditions of service as contrary to the independence of tribunals. The Tribunals Reforms Act, 2021 abolished the IPAB with effect from 4 April 2021 and substituted the High Court for the Appellate Board in the Trade Marks Act. Now:

Appeals from the Registrar lie to the High Court within three months (s.91).
Rectification and removal for non-use lie to the Registrar or the High Court (ss.47, 57).
The stay procedure in an infringement suit under s.124 sends the rectification question to the High Court. In Patel Field Marshal Agencies v. P.M. Diesels Ltd., 2017 INSC 1157, the Supreme Court had held, under the earlier law, that the question of validity must be raised in rectification within the time allowed or it is abandoned.
The Delhi High Court's Intellectual Property Division (2021) and IPD Rules, 2022, and the Madras High Court's IP Division, hear these matters, together with infringement suits where possible.

Debate. Did abolition help? For: the High Courts sit regularly, have judges with IP experience in Delhi and Madras, and can hear validity and infringement together. Against: the IPAB had technical members and a national reach; the High Courts are already burdened, and most of them have no IP Division, so litigants outside Delhi and Chennai may face delay and inconsistent practice. The Parliamentary Standing Committee on Commerce, in its 2021 report reviewing the IPR regime, recommended that the abolition be reconsidered. An LL.M. answer should give both sides.

How this is examined

A 16-mark question on “powers and functions of the Registrar” or on the “constitution, composition, powers and functions of the Appellate Board”, or short notes on either. For the Registrar, use sections 2 and 3 with section numbers. For the Board, give the 1999 structure in section 5, then the abolition and the present route in section 6, and close with the debate.

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