ABSTRACT
This article discusses about the appeals against orders passed by the examiner of trade marks under trade marks act, 1999. This article will explore who is an examiner and if the examiner refuses the application, then what is the grounds for appeal and how to appeal, what is the time limit for the appeal. what is the section that deals with appeal in the Trade Marks Act, 1999 and under section 91, before whom does an appeal lies.
Earlier the appeals were made to IPAB (Intellectual Property Appellate Board) but it is now abolished and now appeals are made to high courts, we will discuss how it was before and how it is after abolishment. We will also state some essential case laws to understand it better. we will also discuss a case law i.e., Grey Matters Educational Trust vs Examiner of Trade Marks on 23 October, 2024, where they file an appeal for their mark that was rejected by the examiner and the court held that the examiner should allow the mark to be registered with certain restriction.
Keywords – examiner, appeal, appellate board, high court,
INTRODUCTION
The Trademark act is all about Protecting a brand’s identity, goodwill and uniqueness which is crucial for the businesses and under the act, the registration of trademark is essential which is a critical process. In this process, the trademark registry where all the applications are to be filed and processed, the trademark examiner who is appointed as an officer within that registry. Their main role is to examine the application to determine the eligibility of the registration whether it fulfils all the necessary legal requirements or not. Basically, to object or give decisions which can be either in the Favor of the applicant or not.
However, if the decision is not in the Favor of the applicant, he/she has other options to opt for, its not that the examiner decision is final, the act provides for appeal through which, one can challenge the examiners decision. To ensure that the applicant can be satisfied and to present their side before an authority i.e., Intellectual Property Appellate Board before 2021, as this has been abolished by the Tribunal Reforms Act in 2021 but the applicants can file a case to High Courts, all the cases pending is transferred to respective high courts and any new cases will be filed in High courts.
WHO IS AN EXAMINER?
An examiner is the officer appointed by the trademark registry who determine the applications of the applicant. The examiner has the duty to check and review whether the mark is distinctive in nature or not. It should not be similar or identical to an existing registered mark and it should not be offensive or misleading meaning it should not be prohibited under the Trademark Act, 1999. The examiner can issue to object or decide the applications, they can accept or reject the applications on the basis whether all the legal requirements are fulfilled or not but examiner decision is not final but there is any objections one can challenge it as well.
WHEN CAN YOU FILE AN APPEAL AND LEGAL PROVISION FOR APPEAL
You can file an appeal when you are not satisfied with the examiner decision. Section 91 talks about appeal.
Section 91(1), states that any person can appeal if they are not satisfied with the decision but they have to appeal before the expiry that is within three months. The three months will start as soon as the communication is done to the aggrieved person i.e., It is in the knowledge of the person.
Section 91(2), states the limiting period of filing the appeal and it states that after the expiry of the period, no appeal shall be filed but if the appellant has reasonable reasons or satisfies the board then it is on the discretion of the board to decide whether to accept or reject the appeal of the aggrieved person.
Section 91(3), talks about prescribed form and fees, the section states that the aggrieved person has to fil out the prescribed form in a particular format and also verify it in a prescribed manner. The copy of the decision against which the appeal is being filed is a must and to pay the prescribed fees to the appellate board.
HIGH COURT JURISDICTION FOR THE APPEAL
As we discussed the provision of the appeal under the act before the appellate board but that was before 2021. In 2021, IPAB was abolished by the Tribunal Reforms Ordinance, 2021. After the abolision of the IPAB the pending cases were transferred to the High Court. The board was established to reduce the burden of the high court but the board decision was also challenged in high court which made the process more complicated and time taking.
So, they made the board decision final to simplify the process in 2019 but after that also it was not useful. As the board was not complying with the necessary requirements and the decision in appellate took longer. So, 2021, it was held that all the cases will be referred to the high court, and to make the procedure faster, a separate and special intellectual property rights division was setup that will take the matters of both original and appellate and that is why all the pending cases were transferred to the high court.
Under section 91, before whom the appeal lies, now, the appeal lies with high court but previously it was with IPAB.
CASE LAW: GREY MATTERS EDUCATIONAL TRUST VS EXAMINER OF TRADEMARKS, 2024.
The Court stated Grey Matters Educational Trust v. Examiner of Trade Marks in October 2024. In this case, the appellant challenged the rejection of their trademark application for “Planet E School.” As a result of the lack of distinctiveness and confusion with existing marks, Trade Marks Registry rejected the trademark registration under Sections 9(1)(a) and 11(1) of the Trade Marks Act, 1999. A comprehensive response to the First Examination Report was ignored by the Registry in its rejection, the Court ruled.
In addressing the anti-dissection rule, the Court stressed the importance of evaluating trademarks in their entirety, rather than separating them into component parts. The court concluded that even though the term “Planet” is common, the combination “Planet E School” has distinctive value that enables the appellant’s services to be distinguished. The Court therefore reversed the Registry’s order, permitting the application to proceed with certain conditions: the appellant was not to claim exclusive rights over the word “Planet” alone, and the trademark would be limited to Punjab, subject to opposition proceedings.
Author: Kajal Agrawal, from KLE Society’s Law College, Bengaluru
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