Non-compliance with the Order of the Supreme Court Relaxing the Period of Limitation

In view of the Orders passed by the Supreme Court, considering the surge of the virus on public health, in Re: Cognizance for Extension of Limitation Suo Moto Writ (Civil) No. 3 of 2020, whereby the period between March 15, 2020 and February 28, 2022 is to be fully excluded from the calculation of the period of limitation, The Delhi High Court, vide its Order dated 21 March 2022 in Dr. Reddy’s Laboratories Limited & Ors. v. Controller General of Patents, Designs, and Trademarks & Anr. directed all the officers at the Office of the Controller General of Patents, Designs, and Trade Marks (‘CGPDTM’) to extend the time for opposition on trademarks advertised during the pandemic.

In the above-mentioned case, the Petitioners accused the CGPDTM of arbitrarily disallowing them from filing an opposition to the trademark applications, which they wish to oppose. These oppositions were not entertained by the Trade Mark Office on the ground that they were proposed to be filed beyond the time period of four months, as prescribed under Section 21 of the Trademarks Act, 1999. Here, it is interesting to note that the record which the court asked the Respondents to submit shows that during the period of March 24th, 2020 and February 28th, 2022, the number of registration certificates issued was 4,87,347. Later on, it was disclosed that around 6000–7000 oppositions were filed during the pandemic beyond the 4-month time period.

Here, the court held the CGPDTM as duty-bound to accept the orders laid down by the Supreme Court, and accordingly extend the period of limitation for filing the opposition. It was also observed that the Respondents had not only failed to entertain the oppositions but also jeopardized the rights of the Applicants by issuing registration certificates despite knowing about the oppositions/ writ petitions. Henceforth, the delay by the petitioners is condoned and the issuance of the Registration Certificates is suspended for the time being until the matter of opposition is resolved.

In view of the above, the following directions were issued by the Court:

1. Where the original opposition period in respect to a mark would have concluded after 15 March 2020, the opposition period shall now stand extended to 30 May 2022 (i.e., 90 days from 1 March 2022).
2. The oppositions filed either through an online mechanism or through physical filings, must be reflected on the online portal within 48 hours without any delay.
3. In matters where the registration certificates have been issued during the pandemic period i.e. between 15 March 2020 – 28 February 2022:
   • If no opposition is filed till 30 May 2022, the registration shall continue to stay valid.
   • If an opposition is filed in the specified time, the registration shall stand suspended till the oppositions are decided.
     
4. Further, in the future, in oppositions where any correspondence is received, the Controller in charge shall:
   • respond to the same within a reasonable time, not later than 3 working days, and;
   • ensure that proper instructions are given to the section issuing registration certificates so that no certificate is issued while issues relating to opposition subsist.
5. The Court further expressed concern about the huge backlog of opposition matters pending with the offices of the CGPDTM. Therefore, the office of the CGPDTM was directed to submit a year-wise chart of pending oppositions that have matured for hearing and the proposed mechanism to deal with the pending oppositions.

Vedant Pujari, Partner

Ritika Reddy, Senior Associate