Four different petitioners approached the Delhi High Court by way of writ petitions invoking the Court’s extraordinary jurisdiction under Article 226/227 of the Constitution of India against the stance of the Controller General of Patents, Designs and Trade Marks (the Respondent, hereinafter referred as the “CGPDTM”) which disallowed the filing of oppositions to trade mark applications, beyond the time period of four months, as prescribed under Section 21 of the Trade Marks Act, 1999. It was submitted by the petitioners that the benefit of the Order dated 10th January 2022 passed by the Supreme Court of India should be afforded for filing oppositions as well. As per the said Order of the Supreme Court, the period from 15th March 2020 to 28th February 2022 shall be excluded for the purposes of any limitation period prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings. Consequently, all limitation periods will start to run from 1 st March 2022 and in cases where the limitation period has expired between 15th March 2020 to 28th February 2022, all persons shall have a limitation period of 90 days starting from 1 st March 2022. In case the actual balance period remaining from 1 st March 2022 is greater than 90 days then the longer period shall apply.
During the course of the proceedings of the present write petitions, the Court was also informed that while a number of oppositions beyond the four months period have been disallowed to be filed by the CGPDTM, about 6000-7000 of such oppositions have also been admitted, creating an inconsistent position. Considering the Supreme Court’s Order, the Delhi High Court held that the prospective oppositions to be filed by the four petitioners shall be allowed, and also issued a general order where it has been held that the Supreme Court’s Order dated 10th January 2022 regarding extension of limitation periods shall be applicable for filing oppositions against advertised trade marks. The trade marks advertised during the pandemic for which the fourmonths limitation period for filing opposition expired between 15th March 2020 and 28th February 2022, the limitation period for filing opposition shall stand extended until the expiry of 90 days from 1 st March 2022 i.e., till 30th May 2022. The Court directed that the officers in charge of opposition section across the five offices of the CGPDTM must ensure the compliance of this Order and enable opposition filing through online or physical medium if any emails are received by prospective opponents/ their agents/counsels who wish to file oppositions. Upon filing of opposition, the status of the trade mark application should also be updated on the online portal within 48 hours.
The Court also ordered that all such emails by prospective opponents/ their agents/counsels regarding filing of oppositions must be replied by the opposition section of the CGPDTM within 3 working days and proper and timely instructions must be issued to the certificate issuing section so that the registration certificates are not issued in such matters where correspondence regarding opposition filing has been received.
Regarding the validity of the trade mark registration certificates issued during the pandemic, the Court has directed that in respect of the trade mark applications against which no oppositions have been filed or are filed till 30th May 2022, the issued registration certificates shall remain valid. On the contrary, those trade mark applications where oppositions have already been filed beyond the four months period by relying on Supreme Court’s Order or are filed by 30th May 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 CGPDTM.
In addition to the above directions, the Court also showcased concern regarding the large number of pending oppositions which is due to the lack of officials for hearing and deciding the oppositions. Accordingly, the Court has directed the CGPDTM to place a proposal under the cover of an affidavit in respect of (i) status of compliance of the present Order of the Court regarding extension of limitation period for filing oppositions, (ii) a year wise chart/data of oppositions which are pending, where pleadings are complete, and the matters have matured for hearing along with a mechanism in which the CGPDTM intends to deal with the pending oppositions, and (iii) the procedure in which the registration certificates shall either be cancelled or recalled for those trade mark applications for which the registration certificates have been issued but the oppositions have been filed or will be filed due to extension of limitation period for filing opposition.
A copy of the Order dated 21st March 2022 as passed by the Hon’ble Delhi High Court can be found HERE for your reference.
With this order, any person can now file opposition against any advertised trade marks (whether registered or pending), where the limitation period for filing opposition expired between 15th March 2020 and 28th February 2022.
Authors Manisha Singh and Aprajita Nigam discuss the recent Order of the Delhi High Court clarifying that the extension of limitation periods directed by the Supreme Court due to the pandemic shall also be applicable for filing oppositions against advertised trademarks. The cases where the limitation period for filing opposition has expired during the period between 15th March 2020 and 28th February 2022, all persons shall have a limitation period of 90 days starting from 1st March 2022 i.e., till 30th May 2022 for filing the opposition.
In accordance with the above-mentioned Order of the Delhi High Court, the Controller General of Patents, Designs and Trademarks has now issued a Notice to this effect which can be found here – https://ipindia.gov.in/writereaddata/Portal/News/798_1_Public_Notice_28032022.pdf.