Himalayan case: Delhi HC rules on ‘scope’ of TM Registrar’s role

The Delhi High Court recently decided a question on the role of the Registrar of Trade Marks, and defined the limits within which the office ought to operate, in a case involving two players in the mineral water industry – Bisleri International Pvt Ltd (“Bisleri”) and Mount Everest Mineral Water Ltd (“MEMW”). You can download the decision here.

We’ve covered disputes between these parties before – here and here. But while the suit for passing off, etc., remains alive in court, the case here tackles orders of the Intellectual Property Appellate Board (IPAB) dealing with the Registrar’s statement on certain TM registrations.
(Mount Everest’s image from here.)

A. The backstory –

MEMW holds three registrations for the mark `Himalayan‟ for mineral water issued by the Delhi TM Registry. MEMW sued Bisleri in the Delhi High Court in 2008 to restrain the latter from using “Himalayan” for mineral water, etc, which is still pending.

Around the same time, Bisleri filed rectification petitions at the IPAB against MEMW’s TMs. The IPAB then issued notice to the Registrar of Trade Marks under section 98, TM Act 1999 to submit a statement. In response, a Senior Examiner of Trade Marks, Mumbai submitted a statement (which reached the media before it reached the parties to the case!) The statement essentially said the TM registrations were prima facie not justifiable, and were wrongly remaining on the TM Register. Questions about the content of the statement, dates on which it was issued, recorded and forwarded, prompted MEMW to inspect relevant office records.

MEMW’s application under the Right to Information (RTI) Act at the Mumbai TM registry (since the statement originated from there) was responded to thus: that the TM office had “not given any opinion in such IPAB matters of Mumbai or any other branches”. The RTI instead got forwarded to the New Delhi TM registry, since the TMs were registered by that office. The New Delhi office, and rightly so, said the statement in question had not been issued by them.

Suspecting things to be amiss, MEMW asked the IPAB to strike off the Senior Examiner’s statement from the rectification proceedings, alleging it was filed in collusion with Bisleri, and that the Sr Examiner had overshot the scope of his role under Section 98. Rejecting these petitions, the IPAB said the Sr Examiner’s statement “seems to be like a report given by the Registry after registration”, and refused to examine whether the officer had the power to file such a statement at all. The statement had been filed upon directions from the IPAB, and therefore no illegality had been committed, and it need not be taken off the record. (Image from here.)

This order was challenged in the present case, a key contention being whether or not an officer from the Mumbai TM Registry could be sent where a notice is issued to the Registrar under section 98. The judgement was delivered by an old IP hand, Justice S Muralidhar.

B. The decision –

In a nutshell – Section 98(1) says the Registrar has a right to appear in rectification proceedings at the IPAB or where questions relating to practices of the Trade Marks Registry are raised. He shall appear “if so directed” by the IPAB. Section 98 (2) says the Registrar may, instead of appearing and deposing, submit a written statement, with such particulars as he thinks proper of the proceedings before him relating to the matter in issue.

The TM Act allows the Registrar to designate and appoint officials to represent him in matters. The defence sought by Bisleri was precisely this, i.e., that the Sr. Examiner was an officer-designate, and therefore, entitled to depose before or submit a written statement to the IPAB.

1. Who may appear, and when:

Contrary to Bisleri’s argument, the court interpreted S. 98 thus: the person who appears before the IPAB as Registrar or submits a written statement has to have some knowledge of the proceedings. This can be either personal knowledge or knowledge derived from the records of the case. Where the statement requires a clarification on the general practice of the TM Registry, a duly authorized officer of the TM Registry’s HQ (at Mumbai) may depose.

In this case, the notice issued clearly did not relate to the general practice of the Registry. The court noted that since the Registrar was not himself going to depose, “he should have ideally authorised an officer from the Delhi Branch to submit a statement”, since the Delhi office had granted the marks which were challenged.

Rapping the IPAB in equal measure, the court held that the Board should, as regular practice, highlight the purpose for which it requires the Registrar to depose, i.e., whether it relates to TM Registry practice, or to a particular TM application.

2. Registrar’s statement must be neutral and objective:

The scope of the role of the Registrar or the authorised subordinate officer is to depose based on personal knowledge (if matter handled personally) or on the basis of knowledge from records. According to the court, the Registrar/ officer may not use this as an opportunity to explain why a certain registration ought to have or ought not have been granted, i.e., this is not a forum/space to review or comment on the decision to grant a registration.

The court drew the boundaries of the role of the Registrar, i.e., that under this section, he was a “necessary” party and not a “contesting” party to the proceedings. He is a party only to the extent that he is to assist the IPAB in understanding what transpired in the run up to the registration and nothing more.

The court noted that the Sr Examiner’s statement in stating that MEMW’s registrations had been wrongly granted, ran “contrary to the legal requirement of the Registrar or his duly authorised subordinate having to strictly observe neutrality and objectivity in relation to the case on hand. Such a statement cannot be allowed to remain on the record of the rectification applications before the IPAB.”

The IPAB came under the hammer here for procedural delay — the decision of whether a statement should be accepted as evidence or not ought to have been taken at once, especially since the Sr. Examiner’s statement clearly exceeded the scope of the role of the Registrar. Pushing this decision to a later date, “would lead to avoidable wastage of time”.

C. My comments –

I find this an excellent interpretation of the section, which, apart from defining the scope of the Registrar’s role, removes the possibility of several loopholes in practice at the TM Registry, including the possibility of obtaining statements by officers who may not be in the best position to do so. Image from here.

In a circuitous way, the decision decentralises issues of accountability in post-registration matters, as procedure ought anyway to be. Now, the TM HQ need not bear the sole responsibility in post-registration matters any longer. The court has clearly observed that where issues relating to specific registrations are in contention, a deposition under S. 98 ought to be made by officers familiar with the file, rather than by any ole’ TM officer.

While the “Himalayan” case continues, do TM practitioners have any thoughts on the changes in Registry practice this decision may bring about?