Facts

The Delhi High Court (the Court) merged four Writ petitions filed under Article 226/227 of the Constitution of India. The Petitioners had been restricted from exercising their right u/s 21 of Trademarks Act, 1999, to file an opposition against various trademark applications within 4 months of them being accepted and advertised. The Petitioners wanted to file an opposition for a trademark in view of the extension of limitation granted by the Supreme Court in 2020 in view of COVID-19, but they were disallowed from doing so. The Petitioners submitted that the Controller General of Patents, Designs and Trademarks/Respondent (CGPDTM), has functioned in a completely arbitrary and discriminatory manner. The said oppositions have not been entertained on the ground that they were proposed to be filled beyond the limitation period and moreover the said marks were granted registrations and the registration certificates were issued. Aggrieved by the arbitrary action of CGPDTM, the Petitioners filed these Writ Petitions before the High Court of  Delhi.

Law

Section 21 of Trade Marks Act, 1999 read with Rule 42 of Trade Marks Rules, 2017.

The order passed by the Honourable Supreme Court held that the period between 15.03.2020 to 28.02.2022 has to be fully excluded for the purpose of calculation of limitation under all enactments and statutes, both before judicial and quasi-judicial bodies.

Issue

The issue before the Court was whether the issuing of the registration certificate despite CGPDTM being aware of the Petitioners’ intent to oppose the trademark, beyond the limitation period was arbitrary and whether the Petitioners were eligible to file an opposition u/s 21, even after registration certificates had been issued to the proprietor. 

Analysis

The Counsel for the Petitioners submitted that the arbitrary manner in which the Trademark Registry had been functioning was evident from the fact that the benefit of the order of the Supreme Court regarding the extension of limitation had been selectively given to some opponents and not to all. The Petitioners submitted that when the Petitioners tried to file oppositions after the expiry of the four-month period, in view of the extension of limitation granted by the Supreme Court, the portal did not permit the said filing. The Petitioners tried to file the hard copy of oppositions which were also stated to have not been accepted. Repeated emails written by the Petitioners to the concerned office in the Trademark Registry also evinced no response whatsoever. 

The Trademark Registry, despite being aware of the oppositions of the Petitioners and even of the present writ petitions having been filed, issued registration certificates in three of the matters, without any reference to the Petitioners. As far as the extension of the limitation period was concerned, various orders passed by the Supreme Court in cognizance of the extension of limitation made it very clear that the period between 15.03.2020 to 28.02. 2022 was to be fully excluded for the purpose of calculation of limitation. In cases where the limitation would have expired during the period between 15.03.2020 till 28.02.2022, notwithstanding the actual balance period of limitation remaining, all persons would have had a limitation period of 90 days from 01.03.2022.

When the orders of the Supreme Court had been rightly acknowledged by the CGPDTM, there was no reason whatsoever to not accept the oppositions which were filed by the Petitioners. On 04.03.2022, when the Court was informed that more than 4 lakh registration certificates had been granted during this period, which may have jeopardized the rights flowing therefrom, the Court directed a senior official from the CGPDTM to be present on the next date to ascertain the position relating to the extension of limitation. On 10th March 2022, two senior officials of CGPDTM appeared before the Court and submitted that various applications filed within the limitation period, were entertained by the Trademark Registry during the pandemic. The Court ordered the officials of CGPDTM to place a short affidavit on record stating the following:

  1. The total number of oppositions filed from 24.03.2020 to 28.02.2022. 
  2. The total number of registration certificates issued to proprietors from 24.03.2020 to 28.02.2022. 
  3. The total number of journals which have been published for which the limitation period for filing oppositions would have expired after 15.03.2020.

On 15.03.2022, the said affidavit was filed stating that 113517 oppositions had been filed, 487347 registration certificates had been issued and a total of 96 journals had been published between 15.03.2020 till 28.02.2022. In addition to the affidavit, Mr Harish V. Shankar, Ld. CGSC, candidly submitted that approximately 6,000-7,000 oppositions had been filed during the pandemic period beyond the four-month period of limitation, and the same had also been entertained by the CGPDTM.

The Court was dismayed to record that this fact was not brought to notice on the previous occasions as it ought to have been disclosed on the first day when the writ petitions were filed, to save the judiciary’s time. The non-disclosure of this fact by the officials of the CGPDTM was clearly unacceptable and appeared to be deliberate which jeopardized the rights of the applicants.

Conclusion

The Court was of the opinion that the action by officials of CGPDTM seemed to be deliberate and unacceptable. The delay in filing of oppositions by all four Petitioners in respect of the applications which they intend to oppose was condoned. The Petitioners were allowed to file their oppositions by 31.03.2022, either online or offline and the registration certificates which were already issued during the pandemic were suspended till the procedure of the opposition was complete. The Court also imposed heavy costs of Rs 1 Lakh each on two officials of CGPDTM, which were to be deposited in the Pandemic Relief Fund.

Citation: Parvesh Kamboj vs The Controller General of Patents, Designs and Trade Marks, decided by the High Court of Delhi on 21st March, 2022, available at: https://indiankanoon.org/doc/176798944/,  visited on 30th March, 2022.


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