BharatPe v. PhonePe: Delhi High Court Upholds Maintainability Of Letters Patent Appeal In Trade Mark Cancellation Matters

On the aspect of maintainability of intra-court appeals, this decision constitutes a seminal and landmark decision by the Division Bench of the Delhi High Court after the abolishment of the IPAB under the Tribunal Reforms Act, 2021 and the amendment of the Trade Marks Act, 1999 in the year 2021. It also serves as a breather to litigants who would have had to invoke the special jurisdiction of the Supreme Court under Article 136 of the Constitution of India had this decision not been passed.

Arguments:

It was asserted by PhonePe that the appeals filed by BharatPe were not maintainable since the Trade Marks Act, 1999 (as Amended in 2021) does not provide for an intra-court appeal from an order of a single judge of the Delhi High Court and that such omission was both deliberate and conscious. In support of their arguments, PhonePe submitted that while the earlier enactments provided a specific provision for an intra-court appeal, however, the Trade Marks Act, 1999 did not provide for an intra court appeal from an order of a single judge.

PhonePe asserted that before the amendment of the Trade Marks Act, 1999, a rectification application could be filed before the IPAB or the Registrar, but after the abolishment of the IPAB according to the Tribunal Reform Act, 2021, the same application could be filed before the High Court or before the Registrar.

PhonePe submitted that while an appeal may lie before the High Court against an order passed by the Registrar under Section 91 of the Trade Marks Act, 1999, no intra-court appeal would lie in matters where the decision was rendered by the Single Judge of the High Court. He also submitted that the applicability of the Code of Civil Procedure, 1908 [CPC] and Letters Patent stands excluded by Trade Marks Act, 1999 by implication since the same does not find any mention under the statute. He argued that only a special leave petition before the Supreme Court could be filed in such cases.

In response, BharatPe submitted that an appeal would lie under Clause 10 of the Letters Patent as applicable to the Delhi High Court, whose power has been held to be the Charter of the High Court and the law under which the High Court derives its powers. It was the submission of BharatPe that for any bar to exist in law, the same has to be provided for in the statute itself. The absence of a provision providing for an appeal does not amount to a bar, much less an implied bar. Even an implied bar would mean a bar under the statute, though not specifically barring an appeal under the Letters Patent.

The Division Bench of the Delhi High Court decided this question of law in favour of the Appellant by stating that;

1. The appeals are filed under Section 10 of the Letters Patent, which is an appeal under a special law, therefore, because there is no express provision under the Amended Act, which allows for an appeal under Section 10 of the Letters Patent, will have no impact on the sustainability of the instant appeals.

2. The Court further explained the scope of appeal under the earlier avatars of the trademarks statutes. The Court has specified that

while the 1940 Act and the 1958 Act specifically ruled that an intra court appeal would lie, under the Unamended Act, the powers to decide rectifications were conferred upon the Registrar and the IPAB, thus, High Court’s power to decide the same were taken away. However, under the Amended Act, this position has been reversed.

3. The Court, while referring to various judgements as cited by both sides, has made specific reference to the judgement of the National Sewing Thread Case wherein, the Supreme Court held that an intra-court appeal would lie under the 1940 Act.

4. The Court concluded by holding that the appeals filed by Resilient are maintainable and set aside the order of the Single Judge which was held to be illegal.

Counsel for Appeallant: Mr. Ankit Jain, Advocate assisted by Mr. Mohit Goel, Mr. Sidhant Goel, Mr. Deepankar Mishra, Mr. Abhishek Kotnala and Mr. Karmanya Dev Sharma from Sim and San, Attorneys At Law.

Counsel for Respondents: Mr. Sandeep Sethi, Senior Advocate and Mr. Jayant Mehta, Senior Advocate assisted by Mr. Nitin Sharma, Mr. Siddharth Chopra, Ms. Shilpa Gupta, Ms. Deepika Pokharia from Saikrishna & Associates and Ms. Ruby Singh Ahuja from Karanjawala and Associates.

Title: RESILIENT INNOVATIONS PVT. LTD. v. PHONEPE PRIVATE LIMITED & ANR.

Citation: 2023 LiveLaw (Del) 463

Click here to read/ download the order