Faced with a mounting backlog of oppositions and rectifications, the Delhi Trade Marks Registry tried something new: mediation. Partnering with the Delhi State Legal Services Authority, it referred 500 consenting matters to mediation — a notable arrival of ADR in Indian IP.
The initiative
With pending matters piling up across the five Registry offices, the Controller General, with the Delhi State Legal Services Authority (DSLSA), issued a Public Notice (5 April 2016) to liquidate pending matters at the Delhi Registry through mediation and conciliation.
On a pilot basis, 500 pending oppositions/rectifications were to be referred to mediation — based on the parties’ consent — under the mediation/conciliation Rules framed under the Legal Services Authorities Act, 1987. Interested parties submitted a “Consent Form” to the Tribunal Section in-charge within 30 days.
The DSLSA then released a Standard Operating Protocol (13 May 2016) to institutionalise the process transparently and result-orientedly.
How the reference works
- Stage of reference: a request can be filed at any stage of an opposition/rectification before final hearing concludes.
- Application for reference: either party may voluntarily consent (prescribed form), or the Registrar may refer a matter if satisfied there’s an element of settlement, calling on the parties to submit to the mediator’s jurisdiction. Parties may appear in person or through representatives.
- Procedure: on receiving a case, DSLSA notices both parties to appear; on agreement, the matter is assigned to a mediator, who proceeds per the Supreme Court’s Mediation & Conciliation Project Committee norms, while accounting for the Trade Marks Act, 1999 and Rules.
Why it matters
This marks the onset of alternative dispute resolution for IP disputes in India. The pilot opens a speedier avenue for parties to resolve trademark disputes — potentially easing the Registry’s chronic pendency and sparing parties years of tribunal delay.
The takeaways
- A mediation pilot for trademark disputes — 500 consenting oppositions/rectifications in Delhi.
- Consent-based or Registrar-referred — either party can consent, or the Registrar can refer.
- Any stage before final hearing — the reference can be made throughout.
- ADR arrives in Indian IP — a faster route than waiting out tribunal pendency.
Frequently asked questions
Can trademark oppositions be resolved by mediation in India? Yes — the Delhi Trade Marks Registry, with the DSLSA, launched a pilot referring consenting oppositions and rectifications to mediation and conciliation.
How is a matter referred to mediation? Either party can submit consent on a prescribed form, or the Registrar can refer a matter where satisfied there’s an element of settlement; parties then appear before a DSLSA-designated mediator.
At what stage can mediation be sought? At any stage of the opposition/rectification before the final hearing has concluded.
Why does this matter? It offers a faster, consent-based route to resolve trademark disputes and helps ease the Registry’s backlog — an early step for ADR in Indian IP.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India