India: Delhi High Court Objects The Trademark Registrations Granted During The Pandemic; Extends Limitation For Oppositions

INTRODUCTION

In the matter of DR. REDDYS LABORATORIES LIMITED V CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADEMARKS (W.P.(C)-IPD-4/2022) the Delhi High Court vide its order dated 21.03.2022, directed the Office of the Controller General of Patents, Designs, and Trade Marks to adhere to the earlier Order of the Supreme Court dated 10.01.2022, whereby it was directed that the period of 15 March, 2020 till 28 February, 2022 shall stand excluded for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings.

The Hon'ble High Court of Delhi held that the Supreme Court's Order is applicable to the 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 18th January, 2022, which records that the period of limitation shall be computed in accordance with the earlier order of the Supreme Court dated 10th January, 2022.

THE DELHI HIGH COURT HAS ISSUED THE FOLLOWING CRUCIAL DIRECTIVES WITH IMMEDIATE EFFECT:

1) In so far as other trademarks advertised during the pandemic are concerned, the advertised application in respect of which the four-month limitation period would have expired after 15/03/2020, 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 1/03/2022, i.e. till 30/05/2022.

2) Upon filing oppositions, the status of the trademark applications shall be reflected appropriately on the portal within 48 hours.

3) Insofar as trademark registration certificates which may have been issued during the pandemic period, the registration certificates shall be dealt with in the following manner:

4) In future, 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.

5) Additionally, during the hearings in these writ petitions, this Court was informed that a large number of oppositions are pending and are yet to be decided. The pendency is due to the lack of officials to hear the oppositions. This Court notes with some consternation that more than 2 lakh oppositions are stated to be pending and a substantial number of them are ripe for hearing, in the office of the CGPDTM. Accordingly, it is directed to the officials of the CGPDTM Office to submit an entire report over the manner in which the CGPDTM intends to deal with the said pending oppositions.

A complete year wise chart of oppositions which are pending, where pleadings are complete and the matters have matured for hearing, shall be filed along with the proposed mechanism. Insofar as registered trademarks qua which oppositions are filed are concerned, where trademark registration certificates have been issued, the affidavit shall also inform the procedure in which the said certificates shall either be cancelled or recalled.

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