Court’s decision
The Calcutta High Court (Commercial Appellate Division) held that a Letters Patent Appeal (LPA) under Clause 15 of the Letters Patent is not maintainable against an order passed by a Single Judge of the High Court exercising appellate jurisdiction under Section 91 of the Trade Marks Act, 1999. The Bench, comprising Justices Arijit Banerjee and Om Narayan Rai, concluded that the Registrar of Trademarks possesses all the trappings of a civil court, and therefore, by virtue of Section 100A of the Code of Civil Procedure, 1908, a further intra-court appeal is barred.
The Court dismissed the appeal, observing:
“When the Registrar has all the trappings of a civil court, the bar under Section 100A applies, and no second appeal lies from the judgment of a Single Judge passed in appeal under Section 91.”
Facts
The appeal arose from an order of a Single Judge who had set aside the Deputy Registrar’s decision granting registration of the mark “DUNLOP” in favour of the applicant and had remanded the matter for fresh consideration. The applicant preferred a further appeal before the Division Bench, contending that such an appeal was maintainable under the Intellectual Property Rights Division Rules, 2023 framed by the Calcutta High Court.
The respondents objected to the maintainability of the appeal, arguing that since the Single Judge’s order arose from an appellate proceeding under the Trade Marks Act, 1999, no further appeal could lie under Section 100A CPC, which prohibits a second appeal from judgments of Single Judges exercising appellate jurisdiction.
Issues
- Whether a Letters Patent Appeal lies from an order passed by a Single Judge under Section 91 of the Trade Marks Act, 1999.
- Whether the Registrar of Trademarks can be considered a “civil court” for purposes of applying Section 100A CPC.
- Whether the bar created by Section 100A CPC extends to statutory appeals under special enactments such as the Trade Marks Act.
Petitioner’s arguments
The appellant contended that the Registrar of Trademarks is not a civil court but an administrative authority; hence, Section 100A CPC, which applies only to appeals from decrees or orders of civil courts, would not be attracted.
It was argued that the Single Judge’s order was passed under the Intellectual Property Rights Division Rules, 2023, and that Rule 2(o)(v) expressly permits appeals before the IP Appellate Division against such orders. The appellant cited the Delhi High Court’s decision in Promoshirt SM SA v. Armassuisse (2023 SCC OnLine Del 5531), where the court held that Section 100A did not bar an intra-court appeal against orders under Section 91 of the Trade Marks Act.
The appellant also relied on Resilient Innovations Pvt Ltd v. PhonePe Pvt Ltd. (2023 SCC OnLine Del 2972) to argue that intra-court appeals are a part of the High Court’s ordinary jurisdiction and cannot be deemed excluded unless the statute expressly prohibits them.
Respondent’s arguments
The respondents countered that the appeal was a second appeal in disguise, prohibited by Section 100A CPC. They argued that Section 91 of the Trade Marks Act provides only one level of statutory appeal and no further remedy. The respondents emphasized that Section 100A CPC overrides even the Letters Patent, and the Registrar of Trademarks, having quasi-judicial powers akin to those of a civil court under Section 127 of the Trade Marks Act, falls within the purview of that section.
They relied on Supreme Court decisions including Kamal Kumar Dutta v. Ruby General Hospital Ltd. (2006 7 SCC 613), P.S. Sathappan v. Andhra Bank Ltd. (2004 11 SCC 672), and Vasanthi v. Venugopal (2017 4 SCC 723) to establish that once Section 100A was introduced, the Letters Patent right of intra-court appeal stood curtailed wherever the Single Judge’s order was passed in appellate capacity.
Analysis of the law
The Court examined the legislative history of appeals in trademark law, beginning with Section 76 of the Trade Marks Act, 1940, which allowed appeals to the High Court and was interpreted by the Supreme Court in National Sewing Thread Co. v. James Chadwick & Bros. (1953 1 SCC 794) to mean that an intra-court appeal was maintainable under the Letters Patent.
However, the Court distinguished that ruling, noting that Section 100A CPC—which bars second appeals—did not exist when National Sewing Thread was decided. The Bench observed that the Supreme Court’s later decision in Kamal Kumar Dutta introduced a different dynamic, as it extended Section 100A’s bar to orders of quasi-judicial authorities having “all the trappings of a court.”
The Court then undertook a detailed examination of Section 127 of the Trade Marks Act, which confers on the Registrar powers of a civil court for summoning witnesses, administering oaths, receiving evidence, and enforcing attendance—concluding that these provisions collectively give the Registrar “all the trappings of a court.”
The Bench emphasized that when a statute empowers an authority to adjudicate rival claims, take evidence, and render a binding decision affecting legal rights, the authority functions as a court in substance, if not in name.
Precedent analysis
- National Sewing Thread Co. v. James Chadwick & Bros. (1953 1 SCC 794) – Earlier held that an LPA lies from orders passed by Single Judges under the Trade Marks Act because such appeals are governed by the High Court’s own procedure. The Calcutta High Court clarified that this ruling preceded Section 100A and is therefore distinguishable.
- Kamal Kumar Dutta v. Ruby General Hospital Ltd. (2006 7 SCC 613) – Held that Section 100A bars LPAs even against orders passed by Single Judges under special Acts where the original authority (like the Company Law Board) has all trappings of a court. Applied by the present Bench to the Registrar.
- Associated Cement Companies Ltd. v. P.N. Sharma (AIR 1965 SC 1595) – Explained the concept of “trappings of a court.”
- State of Gujarat v. Gujarat Revenue Tribunal Bar Association (2012 10 SCC 353) – Clarified the distinction between tribunals and courts.
- Brajnandan Sinha v. Jyoti Narain (1955 2 SCC 480) – Defined a “court” as a body empowered to deliver definitive and authoritative judgments.
By relying on these cases, the Calcutta High Court concluded that the Registrar of Trademarks, though not named a “court,” functions as one for adjudicative purposes, thus triggering Section 100A’s bar.
Court’s reasoning
The Court reasoned that:
- The Registrar’s decision under Section 18–23 determines valuable proprietary rights and is made after considering objections, evidence, and legal submissions—activities quintessentially judicial in nature.
- Section 127 gives the Registrar powers identical to those of a civil court for discovery, witness examination, and enforcing attendance.
- Therefore, for purposes of appeal hierarchy, the Registrar’s order is equivalent to an order of a civil court.
Further, the Bench observed that the Trade and Merchandise Marks Act, 1958 expressly provided for a second appeal, but the 1999 Act consciously omits such a provision. The omission, when read alongside Section 100A CPC, signifies a legislative intent to restrict appellate remedies to one level only.
“It is settled law that a special statute may exclude a general appellate provision both expressly as well as by implication. Here, the exclusion is express by application of Section 100A and implied by omission of the second appeal clause from the 1999 Act.”
Conclusion
The Court dismissed the appeal, holding that a Letters Patent Appeal does not lie against an order passed under Section 91 of the Trade Marks Act, 1999.
“The Registrar has the trappings of a court, and the bar under Section 100A CPC squarely applies. The right to appeal is statutory and cannot be presumed when the legislature has consciously chosen to limit it.”
Both the appeal and the connected application were dismissed with no order as to costs.
Implications
This judgment clarifies that intra-court appeals in trademark matters are impermissible where the Single Judge’s decision arises from an appellate order under Section 91. It harmonizes the Trade Marks Act with Section 100A CPC and underscores that the Registrar of Trademarks functions as a quasi-judicial court, making its decisions subject to only one level of appellate scrutiny.
The ruling will significantly affect IP litigation practice by eliminating an extra appellate tier within High Courts, ensuring faster finality of trademark registration disputes.
