Refusal of registration of trade mark without cogent reasons is complete abdication of quasi-judicial functions by the Registrar of Trade Marks: Bombay High Court

A recent decision of the Bombay High Court in the case of I Am The Ocean, LLC vs. Registrar of Trade Marks [Comm. Miscellaneous Petition (L) No.3899 of 2023] has deprecated the failure, on the part of statutory authorities under the Trade Marks Act, to pass reasoned orders whilst deciding applications for registration of trademarks And reiterated that it is imperative for those authorities to give reasons to support their decision to refuse an application for registration of the Mark.

Facts of the case

In the case before the Court, the Petitioner had assailed the Order of the Examiner of Trade Marks rejecting its application for registration of trade mark. The Senior Examiner had initially passed an un-reasoned order refusing registration of the mark and, on the Petitioner’s request to furnish reasons for refusal, merely reiterated its previous order.

The Petitioner argued before the High Court that the latter Order was an un-reasoned order inasmuch as it only referred to the Sections of the Trade Marks Act, 1999 and the identical / similar marks cited in the Provisional Refusal order. The Petitioner contended that it had made detailed submissions and cited authorities to make out a case for distinctiveness of the mark and its registration. However, the Senior Examiner made no reference to the submissions and / or the authorities relied upon by the Petitioner in the impugned Order.

Decision and findings

The Court agreed with the Petitioner’s contention that the impugned Order was un-reasoned and observed that the decision to reject the application ought to have been supported by cogent reasons.

The Court noted that the Courts have, in several decisions, commented on failure of Registrars of Trade Marks / Senior Examiners of Trade Mark to consider the submissions made and documents produced in support of applications for registration of trade marks and were refusing registration without application of mind. The Court observed that “there is complete abdication by the Registrar of Trade Marks / Senior Examiner of Trade Marks in quasi-judicial functions vested in them by the Trade Marks Act and Trade Marks Rules. The impugned order reduces Section 18(5) of the Trade Marks Act to a redundancy”.

Saakshya’s analysis

Section 18 (5) of the Trade Marks Act, 1999 specifically provides that in the case of a refusal or conditional acceptance of an application for registration of a trade mark, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

The High Court of Delhi has taken a similar view in Pawandeep Singh vs. The Registrar of Trademarks [W.P.(C)-IPD 7/2022]and held that refusal of registration of trademark without affording a hearing would be contrary to the fundamental principles of natural justice.

It is imperative that statutory authorities exercising quasi-judicial functions must pass reasoned orders that depict application of mind. This is important not only from the point of view of satisfaction of parties that their case has been duly considered, but also to facilitate meaningful appellate scrutiny or judicial review of such Orders.

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