Amendment of statement of use in trademark applications now possible


In a writ petition, Intellectual Property Attorneys Association v Union of India (WP (C) No 3679/2014 & CM No 7455/2014), a division bench of the High Court of Delhi has quashed Clause 3 of Office Order No 16, issued by the controller general of patents, designs and trademarks through the Indian Trademarks Registry, which stated that it is not permissible to request the amendment of the statement of use in a trademark application. The court directed the registrar of trademarks to decide on such requests on a case-by-case basis.

In an earlier order, the controller general had rejected a representation filed by the Intellectual Property Attorneys Association challenging Clause 3. The controller general had held that the representation could not be accepted on the following grounds, among others:

  1. The statement of use is the most vital element of a trademark application;

  2. Unscrupulous traders often concoct the statement of use of their trademark and seek to amend it afterwards to overcome office objections or with the ulterior motive of preventing the good-faith use of the marks by rivals in the trade;

  3. Traders are expected to ensure due diligence at the time of filing a trademark application; and

  4. There is the option of filing a fresh trademark application.

The question which arose before the court was whether the powers of the registrar of trademarks under Section 22 of the Trademarks Act 1999 (which pertains to amendments to trademark applications) is a quasi-judicial power or an administrative power. The court came to the conclusion that the power exercised by the registrar under Section 22 is quasi-judicial in view of the following reasons:

  1. Various provisions of the Trademarks Act provide that decisions should be taken by the registrar after hearing the party likely to be affected by the registrar's order and after complying with the principles of natural justice; and

  2. In Madan Mohan Lal Garg v Brijmohan Lal Garg (AIR 1971 Delhi 313), the court had held that the registrar’s powers under Section 22 are quasi-judicial.

The court, relying on the Supreme Court's decision in The Joint Action Committee of Airlines Pilots Associations of India v The Director General of Civil Aviation (2011 (5) SCC 435), stated that, as the registrar’s power had been found to be quasi-judicial, the registrar "cannot be made to work under the dictates of a superior authority" and, if any decision were to be taken by the registrar at the behest of the controller general as per Clause 3, such decision would be patently illegal.

Further, the court rejected the grounds set forth by the controller general when issuing his order under Clause 3 on the following basis:

  1. The controller general's grounds in issuing the order under Clause 3, even if in good faith, would still go against the abovementioned Supreme Court decision;

  2. The order was clearly an attempt by the controller general to influence a decision which the registrar alone was entitled to take;

  3. Uniformity in orders can be ensured by applying the doctrine of stare decisis ("to stand by that which is decided"); and

  4. The order was not justifiable, even if it expedites the registration process.

This decision will come as a huge relief to applicants whose genuine prior rights against subsequent users were jeopardised due to the absolute restriction on amending an erroneous statement of use.

Adheesh Nargolkar and Shailendra Bhandare, Khaitan & Co, Mumbai

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