Section 91 of Trademark Act: Appeals, Amendments and Procedures

Section 91 of Trademark Act, 1999 makes sure that the aggrieved parties have a fair opportunity to challenge the judgement or order which promotes accountability and justice within the trademark registration system. Originally, appeals under this section were directed to the Intellectual Property Appellate Board (IPAB), but recent reforms have shifted this responsibility to the High Courts. This article delves into the intricacies of Section 91 of Trademark Act, explaining its provisions, procedures, amendments and relevant judicial interpretations.

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What is Section 91 of Trademark Act

Section 91 of Trademark Act is succinctly worded but carries significant procedural weight. It comprises three subsections that detail who can appeal, the timelines involved and the formal requirements. Below is a breakdown of each subsection for clarity.

Subsection (1): Right to Appeal

Under Section 91(1) of the Trademark Act, any person aggrieved by an order or decision of the Registrar under the Act or its rules may prefer an appeal to the Appellate Board (now the High Court). The term "aggrieved person" is interpreted broadly to include applicants whose trademark applications are refused, opponents in opposition proceedings, or even third parties affected by a registration.

For instance, if the Registrar refuses a trademark on grounds of absolute non-registrability under Section 9, the applicant becomes an aggrieved party and can invoke Section 91 of Trademark Act. The appeal must be filed within three months from the date the order is communicated, which could be via post or email.

Subsection (2): Condonation of Delay

Section 91(2) of the Trademark Act provides flexibility for late appeals. If an appeal is filed beyond the three-month period, the appellate authority may admit it if satisfied that there was sufficient cause for the delay. This provision prevents genuine appeals from being dismissed on technical grounds.

Sufficient cause might include illness, misadvice from counsel, or administrative errors. Courts exercise discretion judiciously with requiring affidavits or evidence to substantiate the delay. This subsection balances strict timelines with equitable considerations.

Subsection (3): Form and Procedure

As per Section 91(3) of the Trademark Act, every appeal must be in the prescribed form, verified in the specified manner and accompanied by a copy of the impugned order along with the requisite fees. The Trade Marks Rules, 2017, detail the formats (e.g., Form TM-A for appeals) and fees, which vary based on the type of appeal.

Failure to comply with these formalities can lead to dismissal, underscoring the importance of procedural adherence in appeals under Section 91 of Trademark Act.

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Amendments to Section 91 of Trademark Act

The core text of Section 91 of Trademark Act has remained largely unchanged since 1999, but its application has evolved due to broader legislative reforms. The most significant amendment came indirectly through the Tribunals Reforms Act, 2021, which dissolved the IPAB effective April 4, 2021.

Prior to this, appeals under Section 91 were exclusively before the IPAB. Post-reform, all such appeals are now filed before the jurisdictional High Court. The statutory language still references the "Appellate Board" but it is read as "High Court" pursuant to the 2021 Act. This amendment aims to reduce backlogs and leverage the robust infrastructure of the High Courts.

Additionally, the Jan Vishwas (Amendment of Provisions) Act, 2023 decriminalized certain offenses under the Trade Marks Act but did not directly impact Section 91. Legal practitioners must stay updated since pending bills may propose explicit textual amendments in order to align the provision with current realities.

Comparison of Appellate Bodies

To illustrate the shift, the following table compares the original and current appellate frameworks under Section 91 of Trademark Act:

This comparison highlights how the amendment enhances accessibility while maintaining the essence of Section 91 of Trademark Act.

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Procedure for Filing an Appeal Under Section 91

Filing an appeal under Section 91 of Trademark Act involves several steps in order to ensure compliance and effectiveness. This structured process as shown below empowers the litigants along with upholding procedural integrity:

1. Identify Grievance: Determine if the Registrar's order qualifies for appeal, such as refusal under Sections 9 or 11, or acceptance despite opposition.

2. Timeline Check: Calculate the three-month period from the communication date. If delayed, prepare grounds for condonation.

3. Prepare Documents: Draft the appeal in Form TM-A, include the impugned order, pay fees (e.g., INR 5,000 for individuals) and verify with an affidavit.

4. Filing: Submit to the appropriate High Court (e.g., Delhi High Court for Northern India matters). E-filing is encouraged.

5. Hearing and Decision: The court may issue notice to the Registrar, hear arguments and pass orders, which could remand the case or decide on merits.

Grounds for Appeal and Judicial Discretion

Appeals under Section 91 of Trademark Act can be based on various grounds, including errors in law, fact, or procedure. Common grounds include misinterpretation of distinctiveness, improper assessment of similarity, or failure to consider evidence.

The appellate authority exercises wide powers under Section 100, allowing it to confirm, modify, or set aside the order. However, it cannot interfere lightly with the Registrar's discretion unless there's a manifest error.

Summary

Section 91 of Trademark Act provides a robust appellate mechanism against Registrar's decisions. From its original framework involving the IPAB to the current High Court-centric approach, it adapts to evolving legal needs. Understanding its provisions, procedures and judicial interpretations is essential for legal practitioners navigating trademark law. By providing timely redress, Section 91 of Trademark Act upholds the integrity of the trademark system, keeping up with the innovation and consumer trust.

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Section 91 of Trademark Act: FAQs

Q1. What is Section 92 of the Trade Marks Act? 

Section 92 allows the Registrar to correct clerical errors or make amendments to the trademark register to fix mistakes or update details.

Q2. What is Section 9(1)(a) of the Trade Marks Act? 

Section 9(1)(a) prohibits registering a trademark that is not distinctive or cannot distinguish the applicant's goods/services from others.

Q3. What are the 4 types of trademarks? 

The four main types are standard character marks (words/phrases), design marks (logos/symbols), service marks (for services) and collective marks (for group membership).

Q4. How to clear an objected trademark? 

To clear an objected trademark, file a reply to the objection with evidence of distinctiveness, use, or amendments within the stipulated time, often 30 days.

Q5. How to beat trademark infringement? 

Defend against trademark infringement by proving your mark is different, used first, or non-infringing, or challenge the validity of the plaintiff’s trademark in court.