The Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) is now grappling with a significant challenge following a judgment passed by the Calcutta High Court in the case of Visa International Ltd vs. Visa International Service. The judgment has cast doubt on the legality of orders and decisions made by the Trade Marks Registry over the past two years.

What started as a quick fix to address the long-standing staff shortage at the CGPDTM has now turned into a full-blown saga. Over the past two years, the CGPDTM office recruited contractual staff through the Quality Council of India (QCI), an independent non-profit organization, to fill roles typically held by office cadre personnel. However, as reported by the Indian Express, this practice has come under scrutiny, particularly after the Department for Promotion of Industry and Internal Trade (DPIIT) instructed the CGPDTM to terminate its MOU with QCI, arguing that the hiring of contractual employees for quasi-judicial functions is fundamentally flawed and legally unenforceable.

The issue gained further attention when the Calcutta High Court, in the aforementioned case, challenged a trademark opposition order on similar grounds. The court held that under Section 3(2) of the Trade Marks Act, 1999, such roles should be occupied by officers within the official cadre:

Section 3(2): The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge.

The judgment remanded the matter back to the Registrar of Trade Marks, instructing that the case be reconsidered by a competent officer, with all parties given an opportunity to be heard.

It is estimated that nearly 493,385 trademarks were registered between 2021 and 2023, not to mention the trademarks that were refused. All these orders now face re-evaluation or may need to be treated afresh. The CGPDTM has remained largely silent following the judgment, but an unverified order dated August 13, 2024, has been circulating among interested parties. This order purportedly directs the re-validation of trademark applications where decisions were made by contractual employees. The order lists the stages that require reassessment, including:

  • TM Applications processed during the Examination Stage.
  • TM Application processed during the Pending Application Record Management (PARM) Stage.
  • TM Applications processed during the Show Cause Hearing Stage
  • TM Applications processed during the Opposition Stage
  • TM Applications processed during the Post Registration Stage

This unverified order also outlines a two-tiered scrutiny process, where Level 1 Officers review decisions made by senior examiners/Assistant Registrars of Trademarks, which then need to be validated by Level 2 Officers.

It’s important to note that these officers are expected to work on 250 cases per day, in addition to their existing responsibilities. As a result, stakeholders involved in decisions made over the past two years must remain vigilant for any changes in their trademark status.

Learning to weep, learning to keep vigil, learning to wait for the dawn. Perhaps this is what it means to be a human an IP lawyer today.

Written by  Rohit Magesh