Ananyaa Banerjee and Shilpi Sharan
The dissolution of the Intellectual Property Appellate Board in 2021 laid the foundation of the Intellectual Property Division or the IPD in the Delhi High Court. The creation of a special IP Bench in the Delhi High Court put all speculations to rest with respect to the obscurity hovering around adjudication and disposal of Intellectual Property cases in India. The IPD since its inception through various orders has laid emphasis on the speedy disposal of pending trademark opposition and rectification matters and also on devising of proper mechanism for holding hearings by the Indian Trademark Registry1.
In a subsequent development, the Indian Trademark Registry has taken initiatives for disposal of pending IP cases, particularly pending opposition and rectification matters.
IPINDIA’s Special IP Drive
The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) on August 01, 2022 has issued a public notice on Special Drive for disposal of pending opposition and rectification cases of Trade Marks2 . This initiative has been undertaken by India’s Trade Mark Office under the ‘Azadi Ka Amrit Mahotsav’3 event, being celebrated by the Indian Government to commemorate 75th Anniversary of India’s Independence.
IPINDIA’s Public notice for disposal of trademark opposition and rectification cases
The CGPDTM vide this public notice has notified that the initiative to run a special drive is being taken for disposal of IP disputes and accordingly parties have been encouraged to dispose the pending opposition and rectification cases. The CGPDTM has also emphasized that the parties who have already settled their cases amicably should report to the Trademarks Registry (TMR) for formal settlement of dispute.
In cases where the parties have already sent communications to the Registry regarding their amicable settlement, and no final orders could be issued in such cases, the parties can again register the matter at Trade Marks Registry on the below mentioned link and submit the supporting documents for already settled matter during the ‘Azadi Ka Amrit Mahotsav’ period between August 02, 2022 to October 02, 2022: https://ipindiaonline.gov.in/trademarkefiling/OppositionSettlementRequest.aspx.
Delhi High Court’s directions for disposal of IP cases
A very significant order was passed by Hon’ble Justice Pratibha M. Singh on March 21, 2022, in the case titled Dr. Reddy’s Laboratories Private Limited v. Controller General of Patents, Designs and Trademarks4 . In the course of hearing these writ petitions, the Court noted that a large number of oppositions were pending and were yet to be decided and that the reason for pendency was the lack of officials to hear the oppositions. The Court in the case passed scathing remarks and expressed disconcert while observing that more than 2 lakh oppositions were pending and a substantial number of them were ripe for hearing, in the office of the CGPDTM.
In view of the aforesaid, the Hon’ble Court had directed that a proposal should be placed on record by the office of the CGPDTM in respect of the manner in which the CGPDTM intends to deal with the pending oppositions matters.
CGPDTM’s status report filed in Dr. Reddy’s case
The Hon’ble Court vide its May 18, 2022 order had directed the CGPDTM to file a status report regarding hearing of oppositions to trademark applications where the limitation period for filing such oppositions had been extended and also on the appointment of additional trademark officers for this purpose.
The Office of the CGPDTM accordingly placed on record its status report in the matter while informing the Court that 30 hearing officers have been engaged on a contractual basis, for hearing and disposal of opposition matters in the Trademark Registries across the country. In addition, 8 candidates have been promoted from the post of Senior Examiner to Assistant Registrar for looking into disposal of the opposition matters. It was also pointed out by the CGPDTM that a total of approximately 50 hearing officers are in the process of being engaged for hearing of the pending opposition cases.
Conclusion
It cannot be denied that the abolishment of the IPAB had created a nebulous position and several doubts were raised by the legal fraternity, stakeholders and by brand owners in India and across the world. However, ever since the establishment of the IPD, progressive judgments and directions have been issued by the Bench which has made the IP landscape in India more viable and trustworthy and the recent developments for disposal of pending trademark opposition and rectification matters enumerated herein are a testimony to the same.
[1]https://ssrana.in/articles/delhi-hc-directs-trademark-registry-devise-mechanism-holding-hearings/
[2]https://ipindia.gov.in/writereaddata/Portal/Images/pdf/TMR_Public_notice_dated_01.08.2022_English.pdf
[3]Azadi ka Amrit Mahotsav is an initiative of the Government of India to celebrate India’s 75th Independence Day. The five themes of the Mahotsav are Freedom struggle, ideas, resolve, actions and achievement.
[4]W.P.(C)-IPD 4/2022 & CM 27/2022; 21st March, 2022
This article was first published in Lex Witness Magazine.
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