A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
During the period of the Covid-19 pandemic many oppositions were filed beyond the four months period of limitation and the same have also been entertained by the Controller General of Patents, Designs, and Trade Marks (CGPDTM).
The Delhi High Court has ordered the Controller General of Patents, Designs, and Trade Marks (CGPDTM) to allow more time for those who want to file an opposition on trademarks advertised during the period of the Covid-19 pandemic, in line with the earlier orders of the Supreme Court. The Court has also sought the CGPDTM to submit a proposal to deal with a large number of opposition matters that were about two lakh oppositions pending with the office.
In a view that the CGPDTM has a duty to extend the limitation for filing oppositions to trademark applications in line with the Supreme Court order extending the period of limitation in all proceedings. On the contrary, the Court said that the CGPDTM has not only failed to entertain the oppositions but also has gone ahead and jeopardized the rights of the applicants and issued trademark registration certificates despite being in receipt of communications of oppositions and writ petitions.
This situation arose during a pandemic when oppositions were filed beyond the date and when oppositions filing were disallowed etc. Therefore, the Court directed four petitioners including Dr. Reddy’s Laboratories and Terrace Pharmaceuticals to file their opposition against certain trademarks which were published and processed by the trademark office during the period of pandemic allegedly by refusing to hear the opposition. The four petitions were filed against the CGPDTM alleging that the office has disallowed them from filing oppositions to the trademark applications, which they wish to oppose. These oppositions were not entertained by the Trade Mark Office 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. Among these, Dr. Reddy’s wanted to file an opposition against the Trade Mark application for Razomax, filed by Florem Pharmaceuticals, while Terrace Pharmaceuticals wanted to oppose a trademark application for Sanjivani Mantra. The petitioners argued that while the Supreme Court in an order passed on the Cognizance of Extension of Limitation has made it clear that the period from March 15, 2020 to February 28, 2022 has to be fully excluded for the purpose of calculation of limitation under all enactments and statutes, both before judicial and quasi-judicial bodies, the benefit was given selectively to some and not to all. Three out of the four trademark applications under dispute, except the trademark of Razomax, were awarded with the registration certificate during the pendency of the petitions in the High Court.
Hearing the arguments, Justice Pratibha M Singh, directed a senior official from the CGPDTM to be present in the Court and sought various information from the official. In response, the CGPDTM has informed the Court that around 1,13,517 oppositions were filed between the period of March 24, 2020 to February 28, 2022 and it has issued a total number of 4,87,347 registrations to proprietors during the period. A total of 96 journals were published during the limitation period. The Court, then directed the Office of Registrar of Trademarks and Geographical Indications to inform as to whether any physical or online filing of oppositions were permitted to be made during the pandemic period, post the expiry of the time period of four months and if so, how many oppositions were entertained. To this, the counsel for the Registrar submitted that around 6,000-7,000 oppositions were filed during the pandemic period beyond the four months period of limitation and the same have also been entertained by the CGPDTM.
Justice Singh said that the fact that these oppositions have been entertained beyond the period of limitation ought to have been disclosed to the first day when the writ petitions were filed so that judicial time could have been saved. “The non-disclosure of this fact by the officials of the CGPDTM is clearly unacceptable and appears to be deliberate,” said the Justice, who imposed Rs. 1 lakh as cost to two senior officials of the CGPDTM, to be paid to the DHCBA Pandemic Relief Fund, which shall be utilized for the purpose of distribution to lawyers and their families who have deceased or suffered during the pandemic.
The Justice condoned the delay by the four petitioners in filing their opposition, allowing time till March 31, 2022 to file their opposition. The registration certificate issued in three of the petitions shall stand suspended during this period, till the decision is taken on the oppositions and in the case of Dr. Reddy’s Lab’s opposition, the registration certificate shall not be issued to the applicant till the decision is taken on the opposition.
“In so far as other trademarks advertised during the pandemic are concerned, the advertised application in respect of which the four-months limitation period would have expired after March 15, 2020, the limitation period in terms of the orders of the Supreme Court shall be extended for filing oppositions to the said applications, until the expiry of 90 days from March 1, 2022, i.e. till May 30, 2022,” said the Order.
If the trademark applications in which no oppositions have been already filed or received till May 30, 2022, the registration certificates issued during the pandemic period shall enjoy their statutory rights, while those which receives oppositions within May 30, 2022, the registration certificates shall either not be issued or if already issued, the same shall stand suspended till the oppositions are decided by the Office of the CGPDTM, it said. The status of compliance of the order has to be submitted by the CGPDTM in the next hearing, on May 18, 2022.
According to the directions by the court, Upon filing of oppositions, the status of the trademark application shall be reflected appropriately on the portal within 48 hours and whenever emails concerning oppositions are received by the Opposition Section, CGPDTM, the concerned Controller in charge shall first, ensure that such emails are replied 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 upon the correspondence received so that certificates are not issued while issues relating to opposing the trademark are being raised with the office of the CGPDTM.
More than two lakh oppositions are pending with the intellectual property authority, the Court has also sought the CGPDTM to submit a proposal on the manner in which the Office intended to deal with these pending oppositions with a complete year-wise chart of oppositions which are pending, where pleadings are complete and the matters have matured for hearing, along with a proposed mechanism, in the next hearing.
The Court has now listed the matter for further consideration on May 18, 2022.
Related Article : The Case of Dr. Reddy’s Laboratories Limited vs. CGPDTM
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 protected] or contact us at IIPRD.