In the year of 1940, when ‘The Trade Marks Act, 1940’ was enacted, there was a provision embodied under Chapter 3 & Section 14 (2) of the Act ibid, supplemented by the Rule 26 of ‘the Trade Marks Regulation, 1940’, reproduced hereinbelow, wherein the grounds of decision of the Registrar was only to be communicated by the Registrar, only upon being required by the applicant, and thus the practice to file such requests initialized, which, at that instance, was in accordance with law, since the Act of 1940 places a mandate upon the Registrar to record the grounds of his decision, only if the applicant sought for, otherwise, it would be perfectly in the Registrar’s discretion, either to record the grounds in the file or leave the file with one word decision – Refused. But, after the enactment of its successor act i.e. ‘The Trade and Merchandise Marks Act, 1958’, the scenario changed and then it became the duty of the Registrar to record the grounds under Section 18(6) of the Act of 1958 (a provision dealing with same situation as Section 14(2) of the Act of 1940), since the words ‘if required by the applicant’ as found so in ‘The Trade Marks Act, 1940’ were deleted, and further the word ‘state’ got replaced by the word ‘record’ in the aforesaid section 18(6). Thus, it could be easily inferred therefrom that the legislature casted bounden duty upon the Registrar to record grounds of its decision, irrespective of the fact whether the applicant sought for those or remain mum, instead of stating those to the applicant, if sought for. And when the current enactment i.e. ‘The Trade Marks Act, 1999’ was enacted in the year of 2003, and the aforesaid provision of Section 18(6) found its place under Section 18(5) of the Act of 1999, while remaining unchanged in its all attributes, consequently, the bounden duty casted upon the Registrar to record the grounds/reasons for its decision, remain unchanged, even after the commencement of Act of 1999, and continue to remain in its same intent & purpose.
In view from the forgoing circumstances, I arrive at the conclusion, firstly, it has remained always the bounden duty of the Registrar to record grounds/reasons for refusal, after enactment of the Act of 1958, no matter whether the applicant files request for grounds of decision or not, which according to Rule 41 of ‘The Trade and Merchandise Marks Rules, 1959’ had to be preferred upon Form TM-15, secondly, the Form TM-15 was only to be filed by the applicant for the purpose of preferring an appeal impugning the decision of the Registrar. HHowbeit, this Rule 14 stands in contradiction to the Act of 1959, since neither Section 18(6) was ever subjected to any procedure to be laid down by the government later on, nor any other provision of the Act of 1958 restricts the bounden duty of the Registrar, as discussed hereinabove, nor any Rule, including Rule 115, prescribed for the purposes of Section 97, pertaining to review-proceedings under the Act of 1958, ever raise any demand about the TM-15, nor any Rule, inclusive to Rule 121, prescribed for fulfillment of purposes of Section 109 of Act of 1958, pertaining to Appeals, insists for any such requests to be filed alongwith the Appeal, otherwise treating it non-maintainable, and now, even after enactment of the Act of 1999, when the conditions still remain the same as were under the Act of 1958 alongwith rules thereof, since the aforesaid provisions are ‘pari materia’ to the provisions of Act of 1999. It is apposite to add herein that since the purposes, if any, for the filing of the request Form, seeking grounds for the decision of the Registrar, as required under the provisions of the Act of 1940, were duly forgiven by the legislature in the later Act of 1958 and then by the Act of 1999, thus, any rule directing the applicant to file any request Form for having the grounds of decision of the Registrar is void ab nitio, more particularly, when the word ‘record’ by replacing the word ‘state’, casts bounden duty upon the Registrar to record grounds of its decision, and not to state the grounds of decision, if required by the applicant.
TRADE MARKS ACT, 1940
“CHAPTER III
PROCEDURE FOR., .AND DURATION OF REGISTRATION:
Section 14
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
(2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat.
(3) The tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon 11uch terms as it may think fit.”
TRADE MARK REGULATION, 1940
“26.—(1) The Registrar’s decision after the said clarification, or in the absence of such clarifications where a reasoned written response or reasoned objections are filed and the applicant does not seek to make claims, shall be made available to the applicant in writing, and should the applicant object to such decision, he may, within one month of the date of decision, request that the Registrar detail the reasons for his decision in writing and provide details of the material that he used in coming to his decision.
(2) Where the Registrar presents demands that the applicant does not object to, the applicant must fulfil them before the Registrar gives the said written notice. For the purposes of appeals, the date of dispatch of such a notice to the applicant shall be considered the date of the Registrar’s decision.”
The Trade and Merchandise Marks Act, 1958
Section 18: –
“(6) In the case of a refusal or conditional acceptance of an application, 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 Trade Marks Act, 1999
Section 18:-
“(5) In the case of a refusal or conditional acceptance of an application, 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.”