Summary: In a significant ruling that clarifies the appellate framework under the Trade Marks Act, 1999 ( “the Act”), and Trade Marks Rules, 2017 ( “the Rules”), the Division Bench of the Calcutta High Court (“Hon’ble Division Bench”) has held that a Letters Patent Appeal is not maintainable against an order passed by a Single Judge in an appeal under Section 91 of the Act. The judgment in Glorious Investment Limited vs. Dunlop International Limited & Anr., TEMPAPO-IPD 5 of 2025, provides crucial insights into the legislative intent behind the current trademark regime, the nature of quasi-judicial authorities under the Act, as well as the applicability of Section 100A of the Code of Civil Procedure (“CPC”).
Facts of the Case
Glorious Investment Limited (“the Appellant”) had filed an application for registration of the mark “DUNLOP”, which was allowed by the Deputy Registrar of Trademarks (“Registrar”) vide an order dated July 4, 2024. Dunlop International Limited (“the Respondent”) preferred an appeal under Section 91 of the Act before the learned Hon’ble Single Judge, who by an order dated June 11, 2025, set aside the order of the Registrar and remanded the matter back for fresh consideration. The Appellant filed the present Letters Patent Appeal against the Single Judge order, before the Hon’ble Division Bench of the Calcutta High Court.
Question of Law
The question before the Hon’ble Division Bench was whether a Letters Patent Appeal is maintainable against an order passed by a Single Judge of the High Court in an appeal under Section 91 of the Act, arising from an order of the Registrar.
The Respondent argued that Section 100A of the CPC bars second appeals from judgments of a Single Judge, basis law that the Registrar has “trappings of a court” and hence, challenge to the order passed by the Registrar, before the Single Judge, amounts to first appeal. The Appellant, on the other hand, contended that the bar in Section 100A only applies to appeals from Civil Courts, and since the Registrar is not a Civil Court, the bar does not apply.
Decision by the Bench
The Hon’ble Division Bench undertook a comprehensive analysis of the statutory framework and relevant precedents to determine whether the Registrar possesses the “trappings of a court”, which would trigger the bar under Section 100A of the CPC.
Powers and Functions of the Registrar
The Hon’ble Division Bench examined Section 127 of the Act, which confers upon the Registrar the powers of a civil court, for receiving evidence, administering oaths, enforcing attendance of witnesses, compelling discovery and production of documents, and issuing commissions for examination of witnesses. Furthermore, any cost orders issued by the Registrar are executable as civil court decrees.
Moreover, the present bench disagreed with the Delhi High Court decision in Promoshirt SM SA vs. Armassuisse & Anr., 5 2023 SCC OnLine Del 5531, noting that Promoshirt proceeded on the assumption that the appeal before the division bench was maintainable without examining the statutory bar under Section 100A of the CPC. The Hon’ble Division Bench concluded that it would be remiss in its duty if it failed to examine whether the Registrar has all the trappings of a Court or not. It placed reliance on the Supreme Court’s judgement in Kamal Kumar Dutta & Anr. vs. Ruby General Hospital Limited & Ors., (2006) 7 SCC 613, wherein the bench extended the prohibition contained under Section 100A to an order passed by the Company Law Board, on the ground that it has “all trappings of a Court”.
The Hon’ble Division Bench held that the capacity to grant a person exclusive ownership vide a registration is taken basis evidence adduced by the person concerned and upon considering the opposition to the application along with evidence in support of the opposition. Their findings with respect to the powers of a Registrar are as follows: “The Registrar thus has a duty to act judicially and fairly. Even if an opposition is not filed, the Registrar has a duty to objectively scrutinise the application, examine the facts in light of the evidence adduced to determine if the trademark meets the requirements for registration under the 1999 Act and then take a decision. The same would have been a case for a Civil Court as well where the defendant had not filed its written statement and the case was proceeding ex-parte. The Court would also in such a case be required to pass a judgment in favour of the plaintiff only upon the plaintiff proving his case. The decision taken by the Registrar to either accept the request for registration or to reject the same directly impacts and determines the applicant’s legal rights and liabilities and in a case of an opposition the rights and liabilities of both the parties. This is an essential characteristic of a judicial function”. It finally concluded that since the Registrar possesses judicial powers and functions akin to a civil court, the rationale behind Kamal Kumar Dutta squarely applies, thus barring a second appeal.
Legislative Intent: The Conscious Omission
The Hon’ble Division Bench noted that the predecessor legislation, the Trade and Merchandise Marks Act, 1958, specifically provided for a second appeal in Section 109(5), but this provision was consciously omitted in the Act. It was held that such deletion should be given due weightage in probing legislative intent, indicating the Legislature’s intention to restrict the appellate hierarchy. Consequently, the Hon’ble Division Bench dismissed the appeal as not maintainable.
