Bar on Intra-Court Appeals in IPD Cases

Facts

Glorious Investment Limited had filed an application before the Deputy Registrar of Trademarks for registration of the trademark “DUNLOP” under the provisions of the Trade Marks Act, 1999. Dunlop International Limited opposed this application, claiming prior rights and goodwill in the mark. Despite the objection, the Deputy Registrar, by order dated July 4, 2024, allowed Glorious Investment Limited’s application and permitted registration of the mark “DUNLOP.”

Dunlop International Limited, being aggrieved, preferred an appeal under Section 91 of the Trade Marks Act, 1999 before the Single Judge of the Intellectual Property Rights Division (IPD) of the Calcutta High Court. The learned Single Judge, by an order dated June 11, 2025, set aside the order of the Deputy Registrar and remanded the matter for reconsideration after granting both parties a fresh opportunity of hearing.

Feeling dissatisfied, Glorious Investment Limited filed the present appeal before the Division Bench of the Calcutta High Court, contending that such a second appeal was maintainable under the Letters Patent and the Calcutta High Court Intellectual Property Division Rules, 2023.

Procedural Background

The sequence of proceedings is summarised below:

The essential procedural question before the Bench was whether an intra-court (Letters Patent) appeal would lie from an order passed by a Single Judge in an appeal filed under Section 91 of the Trade Marks Act, 1999.

Central Issue

Can a second appeal (intra-court appeal) be maintained before a Division Bench against an order passed by a Single Judge under Section 91 of the Trade Marks Act, 1999?

This required interpreting the interplay between:

• Section 91 of the Trade Marks Act, 1999
• Section 100A of the Code of Civil Procedure, 1908
• Calcutta High Court Intellectual Property Rights Division Rules, 2023

Arguments on Behalf of Respondent No. 1 (Dunlop International Limited)

• The appeal amounted to a second appeal and was barred by Section 100A CPC.
• Once a Single Judge exercised appellate jurisdiction under Section 91, no further appeal lay.
• Relied on provisions of the Trade Marks Act (Sections 18, 20, 21, 23, 91) showing no scope for a second appeal.
• Relied on Supreme Court precedents:
  • Kamal Kumar Dutta v. Ruby General Hospital Ltd. (2006) 7 SCC 613
  • P.S. Sathappan v. Andhra Bank Ltd. (2004) 11 SCC 672
  • Vasanthi v. Venugopal (2017) 4 SCC 723
  • Avtar Narain Behal v. Subhash Chander Behal (Delhi HC FB, ILR 2009 II Delhi 411)
• Rule 2(o) of the IPD Rules does not permit a second appeal.

Arguments on Behalf of Respondent No. 2 (Deputy Registrar of Trademarks)

• Relied on Section 97 of the Trade Marks Act to show that appeals lie only against original orders.
• Rules also do not provide for a further appeal.

Arguments on Behalf of the Appellant (Glorious Investment Limited)

• Section 100A CPC applies only when the first appeal is from a “Civil Court.” The Registrar of Trademarks is not a Civil Court.
• Rule 4 and Rule 5 of the IPD Rules allow appeals before the Division Bench.
• Relied on Division Bench judgments:
  • Promoshirt SM SA v. Armassuisse (2023 SCC OnLine Del 5531)
  • Resilient Innovations Pvt. Ltd. v. PhonePe Pvt. Ltd. (2023 SCC OnLine Del 2972)

Judicial Reasoning and Analysis

Revisiting National Sewing Thread Case

The Court examined National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (1953) 1 SCC 794, which held that appeals to the High Court follow the High Court’s procedural framework unless specifically barred.

Impact of Section 100A CPC

Section 100A creates a statutory bar on a further appeal from a Single Judge’s appellate order.

Is the Registrar of Trademarks a “Civil Court”?

The Court examined Section 127 of the Trade Marks Act and compared it with powers of the Company Law Board (CLB) under Section 10E of the Companies Act, which the Supreme Court held to possess “all the trappings of a Court.”

• The Registrar has quasi-judicial powers equivalent to a Civil Court.
• An appeal under Section 91 is therefore a “first appeal.”
• A further appeal becomes a “second appeal,” barred by Section 100A.

Legislative Intent

The earlier Trade and Merchandise Marks Act, 1958 provided for a second appeal (Section 109(5)), but this was deliberately omitted in the 1999 Act, showing intent to bar second appeals.

Distinguishing Delhi High Court Judgments

The Delhi High Court’s Resilient Innovations (PhonePe) decision dealt with an original proceeding under Section 57 (Rectification), not an appellate one. Hence, Section 100A was not attracted there.

Calcutta High Court Precedent

The Court aligned with its earlier ruling in AC of Patents & Designs v. Vishnuprasad Mohanlal Panchal (2016 SCC OnLine Cal 10988), where a Letters Patent appeal under the Designs Act was held not maintainable.

Decision

The Division Bench held:

• The present appeal was not maintainable.
• Section 100A CPC bars intra-court appeals from orders of Single Judges passed in appellate jurisdiction.
• TEMPAPO–IPD 5 of 2025 and GA–COM 1 of 2025 were dismissed, with no order as to costs.

Law Settled

This judgment settles that:

• No intra-court appeal lies under Letters Patent or IPD Rules from a Single Judge’s order under Section 91 of the Trade Marks Act, 1999.
• The Registrar of Trademarks has all the trappings of a Civil Court.
• An appeal to the Single Judge is a first appeal; a further one is a second appeal and is barred.
• </li?>The decision aligns with Supreme Court precedent in Kamal Kumar Dutta, distinguishing Delhi HC’s Promoshirt SM SA v. Armassuisse.

Case Details

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi