In a recent order passed on August 3, 2023, the Delhi HC in Ravi Manchanda v. Registrar of Trademarks rather scathingly pointed out a glaring error in an order passed by the Senior Examiner of Trademarks. In a case that was described as ‘sui-generis’, the Hon’ble Judge drew attention to a critical discrepancy – the absence of the impugned “order” in the communication sent to the concerned parties.

The Appellant’s predicament arose in July 2018, when they received what appeared to be a blank order. Instead of informing the Examiner that the order was blank, the Appellant instead wrote to him the very next day enquiring about the grounds for the decision taken by him, to no avail. Subsequently, the appellant sought a resolution from the IPAB, which, given its abolition, resulted in the transfer of the case to the IPD, Delhi High Court.

The Hon’ble Judge, noting that the order in question was absent, stated that he was “at a loss” as to what to set aside and allowed the appeal. The Trademarks Office (TMO) was directed to restore the Appellant’s application and to dispose of the same in an expeditious manner.

In what appears to be an almost exasperated tone, the Hon’ble Judge prefaced the order by stating that the Court never “ceases to be surprised” at the kind of orders which come before it, from the office of the Registry of Trade Marks/Controller General of Patents.

Although the order drew a chuckle on social media due to the sheer absurdity of its background, it highlights the difficulty and struggles IP practitioners and IP Owners have to go through to safeguard their rights. Indeed, this case is not an isolated one – IP practitioners/owners have long been at a tussle with the Registry of Trademarks and the Controller General of Patents.

In April this year, the Delhi HC in Blackberry Ltd v. The Assistant Controller of Patents criticized a “mechanical, cut-paste” order rejecting a patent grant passed by the office of the Assistant Controller of Patents and Designs. It was found that the order was arbitrary and passed without due application of mind. The Controller had merely concluded that the subject matter was not patentable and simply replicated the Applicant’s claims for the reasons for refusal!

With the filing date being in September 2008, the refusal was received in June 2020, with a majority of the patent period expired. This has serious consequences- Excessive, unreasonable delays in patent approval reduce the patent’s residual life. This is a big disincentive for innovators and their investors.

The courts have significantly criticized such cut-and-paste orders-  the very same month, in Dolby Intl v. The Assistant Controller of Patents, the  Indian Patent Office (IPO), while refusing to grant a patent, provided a grand total of one sentence as reasoning, with the entire order being cut and pasted in an incoherent manner from incomplete documents, along with an incomplete diagram that was irrelevant to the application. Due to this, the Court stated that it was unable to examine the application on merits and remanded the order to the IPO, on the condition that it was to be heard as a fresh matter and that the same officer could not decide it.

In Dow Agrosciences LLC v. The Controller of Patents, some prior art documents referred to by the Respondent in refusing a patent were found to be completely irrelevant – one of them being a German document, and the reference to the same was not corrigible. The Hon’ble Judge remanded the matter for a fresh hearing while highlighting the duty of the Patent Office to ensure such errors do not occur. Rejection of a patent deprives the Applicant of valuable economic rights.

In Immunovative Therapies, Ltd V. The Controller of Patents, the Hon’ble Judge imposed costs of INR 15,000 on the Respondent due to repeated adjournments and non-filing of reply. One would anticipate that such penalties serve as a deterrent, thereby reducing the likelihood of encountering similar issues in the future.

In a similar case, the Judge observed that “If inventors, who seek to invent patents, are going to suffer such treatment, it would ultimately disincentivize persons from exercising their inventive faculties and coming with new and innovative technologies which would ultimately be deleterious to the national interest as well.”

These are merely a few examples of the countless times the IPO or TMO has issued unreasoned and/or arbitrary decisions. The significance of appellate bodies relying on the lower body’s rulings cannot be understated, since they contribute to understanding the issue at hand in its whole, and promotes speedy decision-making.

The Need for Transparency:

The patent prosecution procedure is one that is intricate and drawn out, requiring several rounds of back-and-forth filings and clarifications. Thus, it would be reasonable for the Appellate bodies to expect orders to clearly and comprehensively include all relevant information, particularly when these orders are contested by aggrieved parties, and gives the appellate authority a greater grasp of the problems.

In all these cases, the Courts underscored the importance for officers to recognize the gravity of their decisions regarding the granting or rejection of patents/trademarks. Such decisions hold significant weight, as IP rights signify the acknowledgment of the innovative effort invested by individuals in creating an invention, whether they contribute to the advancement of existing scientific knowledge or safeguard commercial interest and promote competition. Thus, they hold immeasurable public value.

It is imperative for the IPO/TMO to realize the gravity of the situation and take steps to promote transparency and accountability within themselves. The very first step would be to invest in proper, comprehensive training and development initiatives for IPO and TMO officers. If necessary skills and knowledge are equipped, they must ensure that their actions align with their responsibilities. This step would go a long way in fostering a deeper understanding of the gravity of their roles and encourage due diligence in their duties.

Next, establishing seamless and concrete communication pathways among these departments and Applicants is vital. These avenues can avert, or at the very least, minimize delays and misunderstandings, leading to efficiency. By fostering clear and open lines of dialogue, all parties involved can work cohesively towards timely resolution, and better serve the interests of all stakeholders involved.

Practical Hurdles in Enforcing IP Rights:

These issues are in addition to the practical and jurisdictional hurdles one has to climb over to protect their IP rights. Though it now marks 10 years since India has acceded to the Madrid protocol, the glaring discrepancies between the international filing system and Indian law remain unresolved.

While national trademark applicants are permitted to divide their applications (splitting the objected part of a trademark application so the rest can proceed with the application), the same liberty is not extended to international applicants. Similarly, India still does not allow an international applicant to transform their Madrid filing to a national one. Add to this the fact that the IPO’s processing system does not permit or recognize a wide variety of actions- foreign applicants, though empowered by law to do so, are unable to amend user claims due to the TMO’s outdated software.

Uncertainty Surrounding Policy Changes:

Unfortunately, this issue is part of a broader challenge: the lack of transparency surrounding policy changes within the realm of intellectual property. As the Parliament contemplates amending the existing Trademarks Act for the first time since 2010, legitimate apprehension arises due to the perceived absence of adequate research and consultation with significant stakeholders, including IP counsels.

The sudden imposition of these changes without the input of key stakeholders is a potential source of concern. This resulting uncertainty casts a shadow over the future, indicating a potentially tumultuous journey for legal counsels who already tread quite the thorny path while aiming to safeguard their client’s intellectual property.

This article was authored by Advika Muralidharan.