Applying Section 100A No More?: Delhi High Court Allows Letters Patent Appeal Against Single-Judge Orders Passed Against Trademark Registrar’s Decisions

In another noteworthy order concerning letters patent appeals in trademark disputes, a division bench of the Delhi High Court has clarified that such appeals will be permitted against the Single Judge’s order if the order is passed in an appeal against an order by the Trademark Registrar. Discussing this development further, we are pleased to bring to you a post by SpicyIP intern Tejaswini Kaushal. Tejaswini is a 3rd-year B.A. LL.B. (Hons.) student at Dr. Ram Manohar Lohiya National Law University, Lucknow. She is keenly interested in Intellectual Property Law, Technology Law, and Corporate Law.

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Applying Section 100A No More?: Delhi High Court Allows Letters Patent Appeal Against Single-Judge Orders Passed Against Trademark Registrar’s Decisions

Tejaswini Kaushal

On 6 September, 2023, the Delhi High Court delivered a significant ruling, asserting that the bar on the High Court to hear a letters patent appeal, under Section 100A of the Code of Civil Procedure (“CPC”), will only extend when the first order was passed by a civil court and not the Trademarks Registry. As a quick background, there are a few things to note here- Letters Patent Appeals refer to the appeal against an order passed by the High Court before another bench of the same High Court. Section 100A bars such appeals against an order of a Single Judge of the High Court when passed in an appeal against an original or appellate order. In the present case, the court has thus clarified that a letters patent appeal can be heard against a Single Judge’s order which was passed in an appeal from the Trademark Registry’s order. The case in point: Promoshirt v. Armsuisse, where the court rendered these observations while addressing two Letters Patent Appeals (“LPAs”) challenging a single judge’s order against registration granted to the Swiss army mark to promo shirt which was appealed by Armsuisse.

The true import of this ruling lies in its implication, as the court clarified that a subsequent appeal against the order passed by the Trademark Registrar can be filed before the High Court. The order consolidates the Delhi High Court’s recent stance in RIPL v. PhonePe (discussed here) and is set to exert a substantial influence on future trademark infringement appeals. Whether this impact will ultimately prove beneficial or detrimental is the core matter of discussion in this post.

Key Facts and Armasuisse’s Arguments

The controversy stems from the Registrar’s order allowing the registration of the “Swiss Military” mark by Promoshirt. This registration was challenged by Armasuisse, the federal agency of Switzerland, before the single judge, who ruled that the “Swiss Military” marks would be ineligible for trademark registration in clothing and textiles. Later, Promoshirt appealed against this order before the division bench of the Delhi High Court, but Armasuisse argued that the appeal must not be allowed under section 100A of the CPC. Armasuisse’s argument on the applicability of section 100A CPC can be dissected into two main limbs:

Firstly, they contended that since the learned Single Judge acted in an appellate capacity, the unequivocal language of section 100A CPC bars any subsequent appeal. This provision’s explicit wording is designed to supersede any contrary provisions found in the Letters Patent of any High Court.

Secondly, Armasuisse pointed out a difference between the current Trade Marks (“TM”) Act, 1999, and its predecessor, the Trade and Merchandise Marks Act of 1958. Unlike the previous law, the current enactment lacks a provision akin to section 109(5), which previously allowed for further appeals against the Single Judge decisions passed while exercising appellate jurisdiction. Armasuisse argued that this absence indicates a deliberate legislative intent to eliminate the right of further appeal in such cases.

Court’s Ruling and Legal Reasoning

The Delhi High Court division bench emphasized that the restriction on pursuing additional appeals would remain in effect, regardless of any provisions found in the Letters Patent of a High Court or any other prevailing legal statutes. However, the court clarified that this rule can apply on appeal against orders of the “civil court” and since the Trademarks Registry is not a civil court, Section 100A will not bar an LPA against the Single Judge order passed in an appeal from the order of the Registry.  

On the first contention, the court clarified that Section 100A of the Code appears to limit intra-court appeals under the Letters Patent in cases governed by the Code, despite the Code’s aim to consolidate civil procedure laws. Nonetheless, Sections 4 and 104 of the Code preserve the Letters Patent powers of High Courts. 

On the second contention, the court acquiesced that while the 1940 and 1958 Trademarks Acts explicitly incorporated the CPC for appeals filed before the High Court, Section 91 of the 1999 Trademarks Act lacks such a provision. Nevertheless, the court firmly held that the LPA remedy would not be precluded when a special statute mandates that the appeal process must adhere to the rules specified in the CPC. The court also noted that even if the TM Act, 1999 empowers the Registrar with some powers typically conferred on a civil court, this alone will not qualify the authority as a civil court under the “trappings of the court” test, referring to the Nahar Industrial Enterprises Ltd. v. Hong Kong and Shanghai Banking Corporation. The court distinguished between a tribunal, and a civil court in this context, where the latter includes the former but not vice versa. The key difference lies in the finality of decisions: courts provide final decisions, whereas tribunals may not. A tribunal, authorized to gather evidence from witnesses, is considered a court under Evidence Act, 1872, but resembling a court does not inherently confer court status. To be considered a civil court, a tribunal must have the capacity to issue decrees and conduct full-fledged trials following the procedures outlined in the CPC and the Evidence Act. The jurisdiction of separate tribunals is determined by the specific legislative purpose, hence cannot be equated with civil courts.

Furthermore, the court emphasized that while the CPC could potentially restrict the remedy available under the Letters Patent, its provisions should be interpreted in relation to cases and appeals governed by the CPC. The Court expressed doubts about whether Section 100A of the Code could be stretched and broadly applied to encompass all potential appeals under special enactments. It emphasized that Section 91 of the 1999 TM Act does not specify that appellate remedies should be governed by the Code. Hence, the court suggested that the availability of a LPA against an order issued by a Single Judge, while exercising Section 91 powers, is not restricted by Section 100A.

Interestingly, in the recent matter of RIPL vs. PhonePe, the Delhi High Court had permitted the intra-court appeal regarding matters concerning rectification petitions. The court had asserted that since an intra-court appeal is permitted under Clause 10 of the Letters Patent, it cannot be inferred that the TM Act, 1999, explicitly excludes such appeals. The bench underscored that an appeal under the Letters Patent is a special provision, and unless the 1999 Act “explicitly” excludes an intra-court appeal (which was not the case), such appeals are allowed and consequently, it was granted.

Analyzing the Anticipated Impact

The judgment’s implications are poised to have a dual-faceted impact on the appeal process:

Firstly, it is likely to streamline and economize the appeal procedure. In the absence of this express recognition, the solution for the aggrieved party would have been to either approach the Supreme Court or file a review petition before the Single Judge. Leaving the second aside, the option to approach the Supreme Court would not have been the most viable. In the landmark case of L Chandra Kumar v. Union of India, a seven-judge Supreme Court bench castigated the direct appeals from tribunals to the Supreme Court as “too costly and inaccessible.” They advocated for the primacy of jurisdictional High Courts in handling appeals, reasoning that these High Courts, being coequal constitutional entities with the Supreme Court, were essentially designated as the ultimate arbiters for most matters. A parallel rationale applies here, where allowing appeals to remain within the same high court, rather than escalating them to the Supreme Court, is expected to render the remedy more readily available to the aggrieved.  Appeals to the Supreme Court also come with elevated court fees compared to those in the High Courts, hence appeals to the latter ensure a lower financial burden for litigants. Moreover, the Supreme Court is primarily tasked with addressing cases that pertain to substantial legal questions, and thus by allowing the provision of appeal not only the court has ensured an additional platform for remedy to the aggrieved party but also placed a filter on the cases which can be appealed against before the Supreme Court.

Secondly, an intriguing area for scrutiny lies in the rationale governing the use of LPAs both before and after the removal of the Intellectual Property Appellate Board (“IPAB”). In the pre-reform landscape, litigants could submit rectification applications to either the IPAB or the Registrar. However, with the IPAB’s dissolution, these applications can now be filed with either the High Court or the Registrar in light of the changes introduced by the Tribunal Reforms Act, 2021 and the subsequent amendment to the TM Act, 1999. The abrupt removal of an entire level of appeal from the trademark system has caused a void to appear in the appellate system.

The facet that the Delhi High Court has given much clarity in its recent orders in RIPL and Promoshirt is regarding the provision of appeals in Trademark disputes. These developments in the appellate process and the scope of LPAs aim to create a more seamless procedure and fill the void left in the appellate stage by the IPAB’s removal within the judicial framework.

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