The Intellectual Property (IP) Division of the Hon’ble High Court of Delhi, in its recent judgment has once again upheld the order of the Hon’ble Supreme Court of India and has issued further directions in this regard.

A quick recap

The Hon’ble Supreme Court, on March 23, 2020 rendered a laudable order by taking suo motu cognizance of the COVID situation in India and ordered for suspension of deadlines. Further to the same, on multiple occasions, as deemed fit and in the interest of justice and equity, the Apex Court suspended/extended the deadlines at intervals. Vide the various orders, the Apex Court had suspended deadlines from March 15, 2020 until February 28, 2022 and consequently, all deadlines falling during this period extends to May 30, 2022.

The mishap of the Indian Trade Marks Office

Until recently, the Indian Trade Marks Office had been diligently following the due procedure established. Regrettably, after multiple petitions by aggrieved litigants, it was found that the Office had not been following the order of the Apex Court in spirit to the extent that the Office had not allowed for filing oppositions in certain matters, falling within the suspension of deadline period, and had in fact issued registration certificates.

Further, it was also found that oppositions were allowed to be filed in an arbitrary manner such that up to a certain period, oppositions were allowed by the Office, while filing of oppositions were denied to another set of Opponents.

In light of the above, the Delhi High Court has decided the matter on merits and has issued an order stating that all applicants must be allowed with an equal opportunity to express their dissent.

Decision of the Hon’ble High Court of Delhi

The Court, while severely reprimanding the Trade Marks Office, has also issued a directions to the effect, ensuring justice and equity to all applicants.

Key points, among others, of the order, are as follows:

  1. All trademark advertisements whose deadline expires after March 15, 2020, shall stand extended until May 30, 2022.
  2. With respect to the registration certificates which have been issued:
    1. In case no oppositions are received on or before May 30, 2022– These registration certificates shall be valid and subsisting with the rights holders being able to continue enjoying the rights.
    2. In case oppositions are received on or before May 30, 2022– These registration certificates shall stand suspended until the opposition proceeding is decided.
  3. Where the registration certificates are due to be issued, it shall be held off until May 30, 2022.
  4. A copy of the present order shall also be uploaded in the form of a public notice on the website of the CGPDTM, ipindia.gov.in or any other website used by the office of CGPDTM

Action by the Trade Marks Office

Further to the order of the Delhi High Court, the Office has indeed released an official notification to the effect on March 28, 2022. Vide this notice, the Office opened up to file for oppositions against trademarks published in Trade Marks Journal No. 1928 dated November 18, 2019 to Trade Marks Journal No. 2036 dated January 24, 2022.

Conclusion

It is actually interesting and pertinent to note that, this move by the Delhi High Court and the subsequent compliance by the Trade Marks Office, is one of a kind. On one hand, we have registered proprietors whose rights are at a debacle and on the other hand, we have the rights of those applicants who can question/object to these rights. Truly, this order is a matter of balancing justice in equity and good conscience and only time will tell us how the rights of the registered proprietors are going to be affected by this move.

This write-up has been authored by Adyasree Prakriti Sivakumar.