Remedies to the Person against the Order of Registrar in Opposition Proceedings and Jurisdiction in Case of Rectification Proceedings

Remedies to the Person against the Order of Registrar in Opposition Proceedings and Jurisdiction in Case of Rectification Proceedings

Ms. Thabitha Marion Varghese

Any order or decision of the Registrar under Section 21 of the Act is appealable to the Appellate Board as per Section 91. Interlocutory orders passed, order granting extension of time under Section 21 or an order refusing the adjournment of the hearing or to take additional evidence is not appealable and hence does not come under the purview of Section 91. Section 91 of the Trademarks Act provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may invoke a writ petition for an order of Certiorari or Mandamus. Any person aggrieved by an order or decision of the registrar shall make an appeal to the Appellate Board within 3 months from the date on which the order or decision is being passed. Appeal is not allowed after the expiry of 3 months, provided the Appellant satisfies the Appellate Board about the sufficient cause for not making an appeal within the prescribed time.

Section 92 of the Act deals with procedures governing rectification by the Appellate Board. An appeal to the Appellate Board shall be in a prescribed form accompanied by a copy of the order or decision appealed and prescribed fees as prescribed. Appellate Board is not bound by the procedure laid down in the Civil Procedure Code but by the principles of natural justice and provisions of the Act. The Appellate Board has power to receive evidence, issue commissions for examination of witnesses, requisitioning any public record or any other matter prescribed. Certified copies of every order or judgment of the Appellate Board relating to the trademark should be communicated to the Registrar by the Board and the Registrar will give effect to such order as per Section 97(2) of the Act. This is the remedy available to the person against whom the order of Registrar in Opposition proceeding is made.

An application for rectification under Section 47 and under Section 57 can be made to the Appellate Board or to the Registrar at the option of the applicant. Section 57 enables an aggrieved person to apply to the Appellate Board or to the Registrar for cancelling or varying the registration of trademark on the ground of any contravention or failure to observe a condition entered on the register. In a suit for infringement of a registered trademark the validity of registration of the plaintiff’s trademark has been challenged by the defendant, then the application for rectification of the register to determine the issue of validity should be made to the Appellate Board. In a criminal proceeding on registered trademark under Section 101 or Section 102, if the accused pleads that the registration of the mark is invalid, then an application for rectification of the register must be filed before the Appellate Board.