"Unacceptable": Delhi High Court Imposes ₹1 Lakh Cost Each On Two Officials From Trade Marks Controller General's Office For Concealing Facts

The Delhi High Court has imposed a cost of Rs. 1 lakh each on two officials of office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) over non-disclosure of facts, thereby wasting judicial time. 

Justice Pratibha M Singh was dealing with a batch of petitions filed alleging the arbitrary and discriminatory manner in which the CGPDTM had disallowed the petitioners from filing oppositions to the trademark applications, which each of them wished to oppose. The said oppositions were not entertained on the ground that they were proposed to be filed beyond the time period of four months, as prescribed under sec. 21 of the Trademarks Act, 1999.

The petitioners had sought benefit of the Supreme Court's order, extending statutory limitation in view of impending pandemic.

At the outset, the Court recorded its dismay over non disclosure on the part of the officials about the fact that around 6,000 to 7,000 oppositions were filed during the pandemic period beyond the four month period of limitation and were entertained by the CGPDTM.

"On the contrary, the CGPDTM has not only failed to entertain the oppositions but has gone ahead and jeopardized the rights of the applicants and issued trademark registration certificates, despite being in receipt of communications of oppositions/writ petitions. This conduct of the officials of the CGPDTM cannot be ignored by this Court," the Court said.

The Court therefore imposed a cost of Rs. 1 lakh each on two officers of CGPDTM namely Sachin Sharma, Deputy Registrar of Trademarks & GI and Juneja, Assistant Registrar of Trademarks, to be deposited with the DHCBA Pandemic Relief Fund by 10th April, 2022.

The Court said that the amount shall be utilised only for the purposes of distribution to lawyers and their families who have deceased/suffered, during the pandemic.

The Court also sought a proposed mechanism for the manner in which CGPDTM intends to deal with the oppositions pending before it, taking note of the fact that more than 2 lakh oppositions are pending before the said office.

Observing that the said pendency is due to the lack of officials to hear such oppositions, the Bench sought for a complete year wise chart of oppositions which are pending, where pleadings are complete and the matters have matured for hearing, along with the proposed mechanism.

Insofar as registered trademarks qua which oppositions are filed are concerned, the Court said that 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.

It was the case of the petitioners that the benefit of the order of the Supreme Court in In Re: Cognizance for Extension of Limitation had been selectively given to some opponents and not to all. It was argued that when some of the opponents 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 Court was apprised that the Petitioners tried to file the hard copy of oppositions which were also stated to have not been accepted. Repeated emails written by the opponents to the concerned office in the Trademark Registry also evinced no response whatsoever.

It was thus the Petitioners' grievance that despite the Trademark Registry being aware of the oppositions of the Petitioners and of the present writ petitions having been filed, registration certificates were issued in three of the matters, without any reference to the Petitioners.

The Court noted that regarding the extension of limitation period, various orders passed by the Supreme Court in Cognizance for Extension of Limitation case make it very clear that the period between 15th March, 2020 to 28th February, 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.

"There can be no doubt about the fact that the above order would be applicable to 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 Court observed.

The Court observed that when the orders of the Supreme Court in Cognizance for Extension of Limitation were rightly acknowledged by the CGPDTM, there was no reason whatsoever, to not accept the oppositions which were filed by the Petitioners.

Accordingly, the following directions were issued:

- The delay in filing of oppositions by all four Petitioners in respect of the applications which they intend to oppose as set out above, is condoned. They shall now file their oppositions by 31st March, 2022, either online or offline. The same shall be registered by the Trademark Registry by 10th April, 2022, and notices shall be issued to the concerned trademark applicants. The oppositions shall thereafter proceed in accordance with the provisions of the Trademarks Act and the Rules there under.

- 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 15th March, 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 1st March, 2022, i.e. till 30th May, 2022.

- Compliance of this direction shall be ensured by the respective Controllers in- charge of Oppositions across the five offices of CGPDTM, in case any emails are received by prospective opponents/ their agents/ counsels who wish to file oppositions.

- During this period, if any email is received by the CGPDTM from the opponents/their agents/counsels, the office of the CGPDTM shall enable the said opposition to be filed either through online mechanism or through physical filing.

- Upon filing of oppositions, the status of the trademark application shall be reflected appropriately on the portal within 48 hours.

- In respect of the trademark applications in which no oppositions have been already filed or are received till 30th May, 2022, the said registration certificates shall remain valid and the said applicants shall enjoy their statutory rights in accordance with law.

- In respect of those trademark applications where oppositions have already been filed 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 office of the CGPDTM.

- 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.

The Court has now listed the matter for further consideration on May 18.

Case Title: DR. REDDYS LABORATORIES LIMITED v. CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADEMARKS and other connected matters

Citation: 2022 LiveLaw (Del) 232

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