Supreme Court Stays Controller General of Patents, Designs and Trademarks Guideline Dated 18.05.2020 and 20.05.2020

The Delhi High Court, by virtue of the order dated 21st May 2020 in the case of Intellectual Property Attorney Association (IPAA) and Anr vs The Controller General of Patents, Designs and Trade Marks and Anr. the Plaintiff seeked to quash the Public Notice dated 18.05.2020 passed by the Respondent, and thereby restrain them from acting on it, and further, sought direction from the Respondent No. 1 to issue a Clarificatory Notice for all IP statuses, in compliance of the Order passed by the Supreme Court on 23.03.2020 in Suo Moto, Writ Petition (Civil) No. 3/2020.

The Petitioner has placed reliance upon the order given by the Supreme Court on 23.3.2020, which was directed keeping in view the current pandemic, that the period of limitations in all proceedings, irrespective of the limitation prescribed under the General Laws and Special Laws, whether condonable or not, shall stand extended, with effect from 15.03.2020, and last until further orders passed by the Supreme Court.

The Petitioner claims that in contradiction, the Respondent passed a new guideline dated 04.05.2020, which starts the limitation period from 25th March 2020 and extends the limitation period only until 18.05.2020, i.e. one day after the expiry if the current Lockdown period.

The Petitioner contends that as per the Supreme Court’s Orders:

1. The protection period of limitation under general and special laws is triggered from the 15.03.2020 and not the 25.03.2020

2. The fixture of the cut-off date as 18.05.2020 for the completion of various act/proceedings, filings, payment of fees, etc. in the matter of any IP litigation is both against the Supreme Court’s order dated 23.03.2020 and also a burden on litigants as well as their advocates.

3. Merely because a skeletal staff is now working in various IP offices, under the administrative control of the Respondent, it cannot lea to a conclusion that the lockdown has ended, and hence by not extending that timelines expiring on 18.05.2020 and thereafter, the Respondent has put the Litigants and Attorneys in a jeopardy by forcing them to move out of their houses and file opposition/counter statements/evidences etc. at the IP offices in order to avoid the application, opposition, rectifications being abandoned. Even the extension of limitation between 15.03.2020 and 17.05.2020 to any outer timeline of 01.06.2020 is placing enormous burden on the stakeholder, as the window is too narrow.

The Counsel for the Respondent, in his defence submits that the petitions (without fee) under Rule 6 (6) of the Patent Rules have been provisioned through e-filing mode and it is also to be notified that delay in transmitting or re-submitting documents to the Patent Office may be condoned/timeline be extended by the Controller General on a Petition made in that respect.

The Court held that:

1. No Court, Tribunal or any authority can act in contradiction to the Order of the Supreme Court dated 23.03.2020, which has been passed in exercise of the Supreme Court’s powers under Article 141 and 142 of the Constitution.

2. Under Article 144 of the Constitution, all authorities, whether civil or judicial, located within the territory of India, are required to act in accordance to the Orders passed by the Supreme Court of India.

Therefore, in conclusion, via Oder dated 21.05.2020 the Court held that the best course forward would be to suspend operations of the public notice dated 18.05.2020 and 20.05.2020, as well as directed the Respondents to act in accordance to the Supreme Court notice dated 23.03.2020. Hence, the Respondent No. 1 was directed to file and affidavit within a period of two weeks, in response to the present application. The matter is next listed on 17.06.2020.



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