Extended Period of Limitation for filing Oppositions against TM applications

The article discusses the impact of the extended period of limitation on filing the Opposition against TM applications in view of the recent judgement by the Delhi High Court.

The High Courts in India are now empowered to adjudicate various IPR matters that were once under the jurisdiction of the Intellectual Property Appellate Board (“IPAB”). As a result, the IPR stakeholders across the country will witness new developments in IPR jurisprudence and have faster access to adjudication on petitions or appeals challenging the decisions of the Intellectual property office (“IPO”).

At times, IPR practitioners have observed arbitrary and non-reasoning orders from the IPO at the prosecution/opposition stages of the IP applications. Earlier, the IPR practitioners approached the IPAB to seek relief against the IPO orders. Unfortunately, the IPAB was non-functional or operating in a limited capacity due to workforce issues even during its existence. As a result, the time taken by the IPAB to dispose of the petitions was typically between 5-10 years. In the absence of IPAB, the IPR stakeholders have to invoke High Courts’ jurisdiction to seek relief against the IPO orders.

1.1     Four Writ Petitions Before Delhi High Court for taking benefit of Extended period of limitation for filing Oppositions

In recent petitions: W.P.(C)-IPD 4/2022, W.P.(C)-IPD 81/2021, W.P.(C)-IPD 103/2021, and W.P.(C) 1907/2022, the different petitioners have invoked extraordinary writ jurisdiction of the Hon’ble Delhi High Court and have challenged the arbitrary and discriminatory actions of the Controller General of Patents, Designs and Trade Marks (“CGPDTM”), especially for denying the opportunity to the petitioners for filing the oppositions against the TM applications.

1.2     Contention of Petitioners

Section 21 of The Trademarks Act, 1999, allows an opposing party to file an opposition against an accepted TM application within four months from the date of advertisement of an accepted TM application. However, in Suo Moto Writ (Civil) No. 3 of 2020, titled “In Re: Cognizance for Extension of Limitation“, the Hon’ble SC passed various orders to extend the limitation period in judicial and quasi-judicial proceedings. As a result of these Hon’ble SC orders, the cut-off date for receiving the oppositions against the TM applications for which the limitation period of four months expired between 15.03.2020 to 28.02.2022 is 30.05.2022. Thus, the limitation period of four months for filing the oppositions from the date of advertisement of the TM application is not applicable because of these Hon’ble SC orders. However, the CGPDTM officials acted arbitrarily against the petitioners by selectively denying the petitioners for seeking the benefit of the extended limitation period. As a result, the trademark registry did not allow the petitioners to file the opposition applications online or physically. Instead, the CGPDTM issued the registration certificates even though the officials at the CGPDTM were aware that the petitioners had filed the writ petitions before the Hon’ble Delhi High Court.

1.3     Submissions Made by CGPDTM

Earlier, the CGPDTM issued the public notices on 19.06.2020 and then later on 18.01.2022 in line with the Hon’ble SC orders and with the orders of Hon’ble Delhi High Court in the matter of W.P.(C) 3059/2020, titled, “Intellectual Property Attorneys Association (IPAA) Vs The Controller General of Patents, Designs and Trade Marks & Anr”. The officials representing the CGPDTM submitted that the TM registry entertained around 1 lakh oppositions as per section 21 of the Trademarks Act and issued about 4.87 lakh TM registration certificates between 24.03.2020 to 28.02.222.

1.4     Findings on Arbitrary Functioning of CGPDTM

During hearings, few counsels submitted to the court that the CGPDTM has infact entertained the oppositions after the four months of limitation between 24.03.2020 to 28.02.222. When such a query was posed to the officials representing the office of Registrar of Trademarks and GI, it was informed to the court that the CGPDTM entertained approximately 6000-7000 opposition applications after the expiry of four months between 24.03.2020 to 28.02.222. Such submissions highlighted the arbitrariness in the functioning of the CGPDTM. The CGPDTM officials fail to submit the reasons for not entertaining the oppositions of the petitioners after the expiry of the four months when the office of CGPDTM has entertained 6000 – 7000 oppositions of other opponents in similar circumstances. The Hon’ble Delhi High Court took cognizance of this blatant discriminatory and arbitrary decision-making process followed at the office of CGPDTM. The Hon’ble Delhi High Court imposed a cost of INR 1 Lakh rupees on the officials representing the CGPDTM for their deliberate conduct of not informing the court about entertaining 6000 – 7000 oppositions on the first date of hearing. Had this information been brought to the court’s notice in the first hearing, the court would not have gone into multiple hearings. The court would have provided the petitioners the appropriate relief on the first day of the hearing. 

The Hon’ble Delhi High Court held that the CGDPTM has to extend the limitation period for filing the Opposition to TM applications. The CGPDTM has not only failed to entertain the oppositions but also has jeopardized the rights of the applicants and issued trademark registration certificates, despite receiving communications of oppositions/writ petitions.

1.5     Guidelines on Oppositions of TM applications for which the limitation period of four months expired between 15.03.2020 to 28.02.2022:

1. The limitation period for filing the oppositions against the advertised TM applications for which the limitation period of four months expired between 15.03.2020 to 28.02.2022 will expire on 30.05.2022.
2. For the remaining period till 30.05.2022, if the CGPDTM receives an email from the opponents/their agents/counsels, the office of the CGPDTM shall enable the said Opposition to be filed either online mechanism or through physical filing. Upon filing oppositions, the trademark application status shall be reflected appropriately on the portal within 48 hours.
3. Regarding the registration certificates issued for TM applications for which the limitation period of four months expired between 15.03.2020 to 28.02.2022, if the CGPDTM does not receive any opposition till 30.05.2022, the said registration certificates shall remain valid, and the said applicants shall enjoy their statutory rights as per law.
4. Regarding the registration certificates issued for TM applications for which the limitation period of four months expired between 15.03.2020 to 28.02.2022, if the CGPDTM has already received or may receive an opposition till 30.05.2022, the registration certificates shall stand suspended till the office of the CGPDTM decides on the Opposition.
5. For the remaining advertised TM applications whose certificates are yet to be issued, the CGPDTM will not issue the registration certificates until 30.05.2022 as the opponents can still file the Opposition till 30.05.2022.

1.6     Directions to Handle Pending TM Oppositions:

The Hon’ble Delhi High Court was dismayed at the pendency of 2 lakh TM oppositions at the CGPDTM offices. Thus the Hon’ble Delhi High Court issued the following directions on the pending oppositions.

1. The Hon’ble Delhi High Court ordered the CGPDTM to place on record a proposed mechanism to deal with the pending oppositions.
2.  The Hon’ble Delhi High Court directed the CGPDTM to place a complete year-wise chart of pending oppositions, the status of the pleadings, identification of matters that have matured for hearing and a proposed mechanism to deal with the hearing of matured matters.

The guidelines issued by the Hon’ble Delhi High Court will ensure that the opposing parties can avail the benefits of the extended period of limitation. In addition, such monitoring by the courts will bring transparency and more confidence to the IPR stakeholders in the adjudicating process of the IPO.

The Judgement can be downloaded at this link of the Delhi High Court.

Disclaimer: In compliance with the Bar Council of India guidelines, this article is intended for informational purposes only and does not constitute legal advice or a solicitation for legal services.