The main legal point established is that the power vested in the Registrar of Trademarks under Section 22 of the TM Act is adjudicatory/quasi-judicial and cannot be influenced by a superior authority.

Rajiv Sahai Endlaw, J.

1. The petition impugns Clause No.3 of the Office Order No.16 of 2012-2013 dated 8th June, 2012 issued by the Controller General of Patents, Designs and Trade Marks (Controller General), Government of India and which Clause No.3 is as under:

“3. No request for amendment shall be allowed which seeks substantial alteration in the application for registration of trademark. The substantial amendment in the trademark, proprietor details, specification of goods/services (except deletion of some of the existing items), statement as to the use of mark shall not be permitted. However request for amendment in the proprietorship of the trademark on the basis of valid assignment or transmission; amendment in address of the applicant or in the applicant’s address for service; deletion or confinement of any item in the specification of goods/services, confinement/limitation in the area of sale of goods/rendering of service may be allowed.”

2. Notice of the petition was issued on 29th May, 2014. It was inter alia the plea of the petitioner that the petitioner, prior to the institution of this petition, had also made a representation dated 11th February, 2013 against the aforesaid Clause of the Office Order but no action had been taken thereon. The counsel appearing on advance notice for the respondents Union of India (UOI) and Controller General on 29th May, 2014 stated that the said representation shall be disposed of within a period of six weeks; binding the respondents to the said statement, it was further directed that before disposing of the representation, a hearing shall be given to the authorized representative of the petitioner. The respondents have since filed copy of the order dated 26th June, 2014 of the Controller General rejecting the said representation of the petitioner and giving reasons therefor. In the light thereof, the counsel for the respondents on 3rd September, 2014 stated that since reasoning for the impugned Clause in the Office Order has already been explained, there is no need to file any counter affidavit. We have heard the counsels for the parties.

3. Before proceeding further, we may record that this petition was initially listed before the learned Single Judge who had issued notice thereof; however vide order dated 27th August, 2014, observing that this is in the nature of a Public Interest Litigation (PIL), the petition was placed before us and was entertained as such. We may further record that though ordinarily without a cause of action, a challenge would not be entertained, the counsel for the respondents having not raised any such objection and we, considering the nature of the Clause aforesaid which is challenged, are of the opinion that the petitioner, an association of practitioners in the field of registration of trademarks, is well within its right to maintain this petition.

4. Though the counsel for the petitioner commenced arguments by drawing our attention to the provisions of The Trade Marks Act, 1999 (TM Act) but finding that the impugned Clause No.3 supra is in the nature of a “general” order of the Controller General as to which amendments to the application for registration of a trademark are not to be allowed and further finding Section 22 of the TM Act to be providing as under:

“22. Correction and amendment—The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under Section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application;

Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.”

i.e. not limiting the nature of the amendments to the application for registratio