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In the case of Dr. Reddy’s Laboratories Limited vs. Controller General of Patents Designs and Trademarks and other connected matters, the Delhi High Court fined two officers from the Controller General of Patents, Designs, and Trade Marks (CGPDTM) ₹1 lakh each for failing to disclose facts and wasting the time of court.
In this case there were four writ petitions filed by different Petitioners who have been forced to approach this Court invoking its extraordinary jurisdiction under Article 226/227 of the Constitution of India, in view of the completely arbitrary and discriminatory manner in which the Controller General of Patents, Designs and Trade Marks/Respondent (hereinafter “CGPDTM”) has disallowed the Petitioners from filing oppositions to the trademark applications, which each of them wishes to oppose. The said oppositions have not been entertained on the ground that they were proposed to be filed beyond the time period of four months, as prescribed under Section 21 of the Trademarks Act, 1999 (hereinafter “Trademarks Act”).
Justice Pratibha M Singh was hearing a series of petitions alleging that the Controller General of Patents Designs and Trademarks CGPDTM had barred the petitioners from registering oppositions to trademark applications that each of them wanted to oppose in an arbitrary and discriminatory way. Thus, in terms of Section 21 read with Rule 42 of the Trademarks Rules, the period of limitation for filing the oppositions is four months. It is not disputed that thousands of trademarks have been advertised during the period of the pandemic. According to Section 21 of the Trademarks Act, 1999 the oppositions were denied on the grounds that they term for opposition i.e. 4 months set forth had expired.
Despite a detailed interaction during the hearing on the said date, at no point of time was the Court informed of oppositions having been permitted to be filed, beyond the four months period of limitation. Accordingly, the Court passed the following order dated 10th March 2022, directing the officials to place a short affidavit on record:
“Considering the nature of the matter, let a short affidavit be placed on record by the office of the Registrar of Trademarks, giving the following information:
- The total number of oppositions filed between the period 24th March, 2020 to 28th February, 2022.
- Total number of registration certificates issued to proprietors between 24th March, 2020 to 28th February, 2022.
- Total number of journals which have been published for which the limitation period for filing oppositions would have expired after 15th March, 2020.”
The said affidavit dated 15th March, 2022, was filed by the Controller General of Patents Designs and Trademarks CGPDTM which revealed the following data.
“. In compliance of the order dated 10.3.2022, the reply is submitted Query-wise as follows:
- i) The total number of oppositions filed between the period 24th March, 2020 to 28th February, 2022 are 113517.
- ii) The total number of registration certificates issued to proprietors between 24th March, 2020 to 28th February, 2022 is 4,87,347 and
iii) A total of 96 journals were published (i.e. [1928-2023] Journal No. 1928 dated 18.11.2019 for which limitation period expired on 18.03.2020 to Journal No. 2023 dated 25.10.2021 for which limitation period expired on 25.02.2022) after 15th March, 2020 till 28.02.2022.”
In light of the imminent pandemic, the petitioners sought to take advantage of the Supreme Court’s ruling extending the statutory limitation period.
“On the contrary, theController General of Patents Designs and Trademarks CGPDTM has not only failed to entertain the oppositions but has gone ahead and jeopardized the rights of the applicants and issued trademark registration certificates, despite being in receipt of communications of oppositions/writ petitions. This conduct of the officials of the CGPDTM cannot be ignored by this Court” the Court stated.
The Court expressed its displeasure with the officials’ failure to disclose that around 6,000 to 7,000 oppositions were filed during the pandemic period beyond the four-month statute of limitation and were heard by the CGPDTM.
The Court imposed a cost of ₹1 lakh on the two Controller General of Patents Designs and Trademarks CGPDTM personnel, they are Sachin Sharma, Deputy Registrar of Trademarks & GI, and Juneja, Assistant Registrar of Trademarks, to be deposited with the DHCBA Pandemic Relief Fund by April 10, 2022. The cash will only be used to distribute those attorneys and their families who died or were injured during the epidemic, according to the Court.
The Court also requested a planned process for how the CGPDTM plans to handle the oppositions currently pending before it, citing the fact that the office is already dealing with over 2 lakh oppositions. The Bench requested a detailed year-by-year chart of outstanding oppositions, where pleadings are complete and the proceedings have ripened for hearing, as well as the planned method, observing that the abovementioned pendency is attributable to a shortage of officials to hear such oppositions.
In the case of registered trademarks against which oppositions are made, the Court stated that if trademark registration certificates have been issued, the affidavit must also state the process for cancelling or recalling the certificates.
The petitioners claimed that the Supreme Court’s ruling in In Re: Cognizance for Extension of Limitation had been selectively applied to some opponents and not to all. It was claimed that when some opponents attempted to register oppositions after the four-month time had expired, the site would not allow them to do so due to the Supreme Court’s extension of limitation.
The Court was informed that the Petitioners attempted to file physical copies of their oppositions, which were similarly denied. Opponents’ repeated communications to the Trademark Registry’s concerned office received no answer.
The Petitioners were therefore aggrieved that, despite the Trademark Registry’s knowledge of the Petitioners’ oppositions and the filing of the current writ petitions, registration certificates were granted in three of the issues without any reference to the Petitioners.
The Supreme Court’s various orders in the Cognizance for Extension of Limitation case make it very clear that the period between 15 March 2020 and 28 February 2022 must be fully excluded for the purpose of calculating limitation under all enactments and statutes, both before judicial and quasi-judicial bodies, according to the Court.
“There can be no doubt about the fact that the above order would be applicable to filing of oppositions under Section 21 of the Trademarks Act as well. The fact that this order is applicable to the filing of oppositions is also clear from the public notice issued by the CGPDTM dated 18 January, 2022, which records that the period of limitation shall be computed in accordance with the earlier order of the Supreme Court dated 10 January, 2022″ the Court remarked.
The Court stated that while the Supreme Court’s orders in Cognizance for Extension of Limitation were correctly accepted by the Controller General of Patents Designs and Trademarks CGPDTM, there was no basis to reject the Petitioners’ oppositions.
As a result, the following guidelines were issued:
- All four Petitioners’ delays in submitting oppositions to the applications listed above, which they plan to oppose, are excused. They must now register their objections by March 31, 2022, either online or in person. By 10 April 2022, the Trademark Registry will have registered it, and notices will be sent to the affected trademark applicants. Following that, the oppositions will be handled in line with the requirements of the Trademarks Act and its Rules.
- In the case of other trademarks advertised during the pandemic, the limitation period for filing oppositions to the said applications shall be extended until the expiry of 90 days from 1 March 2022, i.e. until 30 May 2022, in accordance with the Supreme Court’s orders.
- If any emails are received by potential opponents/their agents/counsels who intend to register oppositions, the appropriate Controllers in charge of Oppositions throughout the five offices of CGPDTM will ensure that this order is followed.
- If the CGPDTM receives an email from the opponents/their agents/counsels during this time, the CGPDTM’s office will allow the opposition to be lodged either online or in person.
- Within 48 hours of the filing of oppositions, the status of the trademark application must be updated on the platform.
- In the case of trademark applications for which no oppositions have been filed or received as of May 30, 2022, the registration certificates will remain valid and the applicants will be able to use their statutory rights as provided by law.
- In the case of trademark applications for which oppositions have been made or will be submitted by May 30, 2022, registration certificates will either not be issued or, if previously issued, will be suspended until the oppositions are resolved by the Controller General of Patents Designs and Trademarks CGPDTM office.
- In the future, whenever the Opposition Section, CGPDTM receives emails concerning oppositions, the concerned Controller in-charge shall first ensure that such emails are responded to within a reasonable time, not later than three working days, and second, that proper instructions are given by them to the section issuing registration certificates at the CGPDTM/ concerned officials in the Mumbai office, depending on the correspondence received, so that certificates are issued.
The case has been rescheduled on May 18, 2022 by the court.
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Author: Poonam Nahar (intern) – a Final year LL.B student from Marathwada Mitra Mandal’s Shankarrao Chavan Law College (Pune), in case of any queries please contact/write back to us via email email@example.com or contact us at Khurana & Khurana, Advocates and IP Attorney.