In Dr. Reddy’s Laboratories Limited v. Controller General of Patents Designs and Trademarks and other connected matters, the Delhi High Court expressed concerns with respect to the discriminatory actions and arbitrariness of the Office of the Controller General of Patents, Designs and Trade Marks (‘CGPDTM’) and imposed costs on two officials of the CGPDTM for non-disclosure of facts and waste of judicial time.
The Court dealt with a batch of petitions filed by four petitioners which include Dr. Reddy’s Laboratories and Terrace Pharmaceuticals against the CGPDTM alleging that the office had barred them from filing oppositions against certain trademark applications. It was the case of the petitioners that Dr. Reddy’s wanted to oppose the Trademark application for the registration of the mark “Razomax”, filed by Florem Pharmaceuticals, while Terrace Pharmaceuticals wanted to oppose the mark “Sanjivani Mantra”. The oppositions were disallowed on the ground that the same were filed beyond the time period of four months, as prescribed under Section 21 of the Trademarks Act, 1999. The Petitioners submitted that they tried to file the hard copy of oppositions which were also stated to have not been accepted and therefore repeated emails written by them to the concerned department in the Trademark Registry. However there was no response whatsoever. Furthermore, it was the grievance of the petitioners' that the Trademark Registry, despite being aware of the oppositions of the Petitioners and of the present writ petitions having been filed, issued registration certificates without any reference to the Petitioners. The petitioners argued that while the Supreme Court of India had ordered for extension of the limitation period which specifically excluded the time span from March 15th, 2020 to February 28th, 2022, the benefit was not given to all.
At the outset, the Delhi High Court after considering the contentions of the petitioners recorded its dismay over the non-disclosure on the part of the officials regarding the fact that around 6,000-7,000 oppositions were filed during the pandemic period beyond the four month period of limitation and were entertained by the CGPDTM. The Court therefore imposed a cost of Rs. 1 lakh each on two officers of the CGPDTM to be deposited with the DHCBA Pandemic Relief Fund. The Court said that the amount is to be utilised only for the purposes of distribution to lawyers and their families who have deceased/suffered, during the pandemic.
The Court also issued the following directions:
- Condonation on delay of the aggrieved parties for filing their respective oppositions. These oppositions have to be filed by March 31st, 2022 (either online or offline) which will be registered by the Trademark Registry by April 10th, 2022.
- The registration certificates which had been issued by the registry to stand suspended and remain suspended until the time of their due acceptance despite the oppositions.
- The registration certificate shall not be issued for the mark “Razomax”.
- The advertised applications in respect of which the four-month limitation period would have expired after March 15th, 2020, the limitation period in terms of the orders of the Supreme Court shall be extended for filing oppositions to the said applications, until the expiry of 90 days from March 1st, 2022, i.e., till May 30th, 2022.
- Registration certificates which have been issued during the pandemic period shall be dealt in a two-fold manner:
- a. In trademark applications, where the oppositions have been already filed or are even received by the Registry by May 30th, 2022, will be valid and will resultantly enjoy the statutory rights.
- b. In case of trademark applications where the oppositions are filed or are received by May 30th, 2022, the registration certificates shall either not be issued or if already issued, shall stand suspended until the oppositions are decided by the office of the CGPDTM.
- As regards to the e-mails with respect to oppositions that are received by the by the CGPGTM the concerned registrar shall, at first, ensure that such emails are replied to, not later than 2-3 working days.
- Proper instructions are to be given to the section issuing registration certificates at the GCPDTM in the Mumbai Office depending upon the correspondence received, so that certificates are not issued while issues relating to oppositions are raised with the office of the CGPDTM.
Noting that more than two lakh oppositions are pending with the intellectual property authority, the Court also sought the CGPDTM to submit a proposal on the manner in which the Office intends to deal with these pending oppositions with a complete year wise chart of oppositions which are pending, where pleadings are complete and the matters have matured for hearing, along with a proposed mechanism.
The matter is listed for further consideration on May 18th, 2022.
