Pawandeep Singh vs The Registrar Of Trademarks & Anr.

Background

This case deals with a problem often faced by trademark attorneys during hearings. Several attorneys are given slots during a fixed time, and they are heard one after another. Sometimes examiners are unable to complete all hearings during the allotted time, and hearings are adjourned.

In the present case, an order was passed with respect to a trademark application relating to the mark. SWISS, without hearing the Trademark Agent. Two hearing notices were issued, and the Agent was kept in the waiting room both times during the allotted time. Thereafter, an order of refusal was passed without hearing the Agent. Aggrieved, the petitioner filed this writ petition.

Submissions of the Senior Trademark Examiner

In her submissions, Ms. Shikha Dewan, the Senior Trademark Examiner, stated as follows:

“I. The cause list for hearing of the Trade Mark Registry is published on a monthly basis.

II. The platform over which hearings are conducted by the Registry, permits only three persons at a time to be present in the hearing and all the remaining participants/attendees are kept in the waiting room.

III. The order which is passed by the Trade Mark Examiner has two parts, the templated portion and the non-templated portion where the Trade Mark Examiner types out the order. The templated portion is not editable and shows that the matter was set down for hearing and eventually hearing took place on a particular date. The templated portion in the impugned order in the present case reads as under:

“Above application has been filed for registration of the trademark SWISS on 24/10/2018 which was examined on 27/11/2018 and examination report was communicated to the applicant at his address for service. A reply to the office objection(s) had been filed on behalf of the applicant but the same was not found satisfactory and the application was set down for hearing and eventually hearing took place before me on 30/11/2021.”

IV. Ms. Dewan admits that the Ld. counsel for the Applicant/Petitioner (hereinafter “Applicant”) in the present case was not heard and the templated portion of the impugned order is contrary to the actual fact.

Perusal of the screenshot placed on record also shows that the ld. counsel for the Applicant was in the meeting room during the show cause hearing on 30th November, 2021. However, without giving any hearing to the ld. counsel, it has been recorded in the impugned order that hearing was held, submissions were heard, and the application for registration of the mark was refused.”

Order

After reviewing the facts, the Court ordered the Registrar of Trademarks to afford an opportunity of hearing before making a decision with respect to the trademark application in question. The Court asked the Registrar to communicate the hearing notice by email, and place the order on record.

Hearing Mechanism

Commenting on the need to have a proper mechanism for trademark hearings, the Delhi High Court stated as follows:

“6. The Trade Mark Registry deals with lakhs of applications every year and therefore, the utilisation of a platform for virtual conference hearing wherein only three individuals are permitted to join at a time, would be grossly insufficient and an outdated mode of holding hearings. In fact, the office of the Registrar of Trademarks should encourage and move towards having a much more transparent system of hearings in the presence of Agents/ Lawyers/ Applicants who may be permitted to join through an open link. The hearings can also be held by publishing daily cause lists with a serial number for the applications being taken up and allotting at least two- hour slots where the open link is made available on the website of the Trade Mark Registry.

7. In the opinion of this Court, Lawyers/Applicants/Agents ought to be permitted to appear through the open link and make submissions before the Examiner so long as they do it in an orderly manner without disturbing the hearings being held. It is clear that there is a need to alter the current mode and manner of holding hearings from publishing monthly cause lists to publishing daily cause lists with proper serial numbers, giving open links to Counsels/Applicants individually or publishing the same on the Trade Mark Registry website and by moving to a platform which would permit more individuals to join the hearings simultaneously at a time.

8. Clearly in the present case there is no doubt that the hearing was not held and the application has been refused by wrongly recording that a hearing has been granted. Ms. Dewan apologises for what has transpired. In order to avoid inconvenience and expense for the applicants to knock the doors of High Courts by way of writ petitions for such procedural lapses, it is necessary for the Controller General of Patents, Designs & Trade Marks (hereinafter “CGPDTM”) to device a proper mechanism for holding show cause hearings by including the following features:

i. Publication of cause list notice on a daily basis, with serial numbers for the applications to be taken up, preferably with morning and afternoon slots, if required.

ii. Utilising a platform with an open link which permits more individuals to join a hearing at a time.

iii. Matters be called serial number-wise for the purpose of certainty and convenience of the applicants, so that the concerned Applicant/Agent/Counsel can make submissions in respect of the application being examined when the appropriate number is called out, instead of waiting endlessly in the waiting room.

iv. Removal of templates from the order statements such as ‘hearing took place before me’ which may vary on case-to- case basis.

v. Some extra space being made available in the order for Senior Examiners to put their brief reasons for allowing or refusing the application.

9. Let the proposal on behalf of the CGPDTM in respect of holding show cause hearings qua the points outlined above be placed on record within two weeks.”

The Court asked the CGPDTM to place its proposal on record within two weeks from the date of the order.

Comment

Hopefully, the Registrar of Trademarks will arrive at a more organized and structured system for hearings with due consideration to accessibility as well.

Case Citation: “Pawandeep Singh vs The Registrar Of Trademarks & Anr., Decided by the Delhi High Court on 23 March, 2022, available at: https://indiankanoon.org/doc/130446787/, visited on 3rd April, 2022.”

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