The Controller's Powers, Discretion and Evidence

Section 34: directions from the Central Government

The provision. "The Controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the Central Government for directions in the matter."

It is permissive and it is about administration. He "may" apply, and only where a doubt or difficulty arises "in the administration" of a provision.

It is not a power to take instructions on a decision. A quasi-judicial authority may not decide a case at the dictation of the executive. Section 34 is properly used for administrative doubts, such as how a class should be applied across the office, not for how a particular cancellation petition should be decided. That distinction is worth making in an answer, and it is the point an administrative law examiner would look for.

Sections 37, 38 and 39: evidence

Section 37, evidence before the Controller. "Subject to any rules made under section 44, in any proceeding under this Act before the Controller, the evidence shall be given by affidavit in the absence of directions by the Controller to the contrary; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by affidavit or may allow any party to be cross-examined on the contents of his affidavit."

Note the misprinted cross-reference. Section 37 opens "subject to any rules made under section 44". Section 44 is the reciprocity provision and makes no rules; the rule-making power is section 47. This is a drafting slip in the Act itself, and a careful answer says so rather than repeating it as though it made sense.

Section 38, certificate of the Controller to be evidence. A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorised by the Act or the Rules to make or do is prima facie evidence of the entry having been made and of its contents, or of the matter or thing having been done or not done.

Section 39, evidence of documents in the patent office. Printed or written copies or extracts, purporting to be certified by the Controller and sealed with the seal of the patent office, of documents in the patent office and of or from registers and other books kept there, "shall be admitted in evidence in all courts in India, and in all proceedings, without further proof or production of the originals". The proviso keeps the court in control: "a court may, if it has reason to doubt the accuracy or authenticity of the copies tendered in evidence, require the production of the originals or such further proof as it considers necessary".

Read the three together and you have the whole law of proof in a design case. Facts are put before the Controller on affidavit, with cross-examination if he allows; what he did is proved by his certificate; and what the office holds is proved by a sealed certified copy without calling anybody from the office.

A worked example

A cancellation petition under section 19 is heard by the Controller.

The petitioner wants a witness from a rival mill to attend. Section 32 gives the Controller the power of a civil court to enforce the attendance of witnesses.

The witness is in Coimbatore and cannot travel. Section 32 lets the Controller issue a commission for the examination of witnesses.

The petitioner wants the proprietor's sales ledgers. Section 32 gives the power to compel discovery and production of documents.

Each side files affidavits. Section 37: evidence is by affidavit unless the Controller directs otherwise, and he may take oral evidence in lieu or in addition, and may allow cross-examination on an affidavit.

The Controller proposes to decide against the proprietor without a hearing. Section 33: he may not exercise a discretionary power adversely to the applicant without giving him an opportunity of being heard, if the applicant has asked for one within the prescribed time. The proprietor must make that request.

The Controller dismisses the petition and awards costs of forty thousand rupees. Under section 32 that award is executable in any court having jurisdiction as if it were a decree of that court.

The proprietor later sues an infringer and must prove the registration. He produces a sealed certified copy of the register entry, admissible under section 39 without further proof, and a certificate of the Controller under section 38, which is prima facie evidence of what it states.

A genuine doubt arises about which Locarno class a new kind of article falls in, across many applications. The Controller may apply to the Central Government for directions under section 34, because that is an administrative doubt and not a decision in a particular case.

What this is not

Section 32 does not make the Controller a court. He has enumerated powers for enumerated purposes.

Section 33 is not automatic. The applicant must ask, within the prescribed time.

Section 34 is not a licence to take instructions on a case. It is for doubt or difficulty in administration.

Section 38 is not conclusive. The certificate is prima facie evidence, like the register itself under section 10(4).

Quick revision

• Section 32: powers of a civil court for receiving evidence, administering oaths, enforcing attendance, compelling discovery and production, issuing commissions, and awarding costs, which are executable as a decree.
• Section 33: no discretionary power may be exercised adversely to the applicant without an opportunity of being heard, if the applicant so requires within the prescribed time.
• Section 34: the Controller may apply to the Central Government for directions in a case of doubt or difficulty in administration.
• Section 37: evidence by affidavit unless otherwise directed; evidence viva voce in lieu or in addition; cross-examination on an affidavit may be allowed. Its opening cross-reference to section 44 is a misprint for section 47.
• Section 38: the Controller's certificate is prima facie evidence.
• Section 39: sealed certified copies of office documents are admissible in all courts in India without further proof or production of the original, subject to the proviso letting a court that doubts their accuracy or authenticity call for the originals.

Test yourself

1. List the powers of a civil court that section 32 confers. Receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents, issuing commissions for the examination of witnesses, and awarding costs, the award being executable as a decree of a court having jurisdiction.

2. Is the right to be heard under section 33 automatic? No. It arises where the applicant so requires within the prescribed time, and it applies only where a discretionary power is to be exercised adversely to him.

3. How is evidence ordinarily given before the Controller? By affidavit, unless he directs otherwise; he may take evidence viva voce in lieu of or in addition to it, and may allow a party to be cross-examined on the contents of his affidavit, under section 37.

4. How does a party prove an entry in the register in a civil suit? By a printed or written copy or extract certified by the Controller and sealed with the seal of the patent office, which section 39 makes admissible in all courts in India without further proof or production of the original, supported where necessary by a certificate under section 38. The proviso to section 39 lets a court that doubts the accuracy or authenticity call for the originals.

5. May the Controller ask the Central Government how to decide a cancellation petition? No. Section 34 permits him to apply for directions in a case of doubt or difficulty arising in the administration of the Act. He decides a petition himself, and a quasi-judicial authority may not act at the dictation of the executive.