Delhi High Court slams TMO for dishonouring the Supreme Court order on suspension of statutory deadlines in trademark oppositions
24 Mar 2022

As the pandemic struck India in 2020, the Indian Supreme Court (SC) had issued an order on March 23, 2020, where it suspended limitation period for all legal proceedings. The said order was revised on two occasions to extend the limitation period as the pandemic waves kept coming. The latest order extending the limitation was on January 10, 2022. The gist of these orders was that in calculating the limitation period for institution of any legal proceedings, the period between March 15, 2020 to February 28, 2022 (“the suspension period”) would be excluded.

Despite the order of the SC, the Indian Trade Marks Office (TMO) maintained that statutory deadlines vis-à-vis filing of the notices of opposition are to be adhered to as per the statutory requirement. In accordance with this stand taken by the TMO, the electronic module provided by the TMO to file the notice of opposition online remained effective only till the statutory deadline. The TMO also did not accept notice of oppositions filed offline. Additionally, once the statutory deadline that fell during the suspension period ended without any opposition against any application, the TMO issued registration certificates against such applications.

Recently, four trademark owners filed constitutional writ petitions before the Delhi High Court, challenging the said stand of the TMO. On March 21, 2022, Justice Prathibha Singh (a former IP lawyer) issued an order in the said writ condemning the acts of the TMO. The order directed that:

1.    The limitation period in respect of those trademarks advertised during the suspension period would stand extended for filing of oppositions till May 30, 2022;
2.    Those trademark registration certificates issued during the suspension period in which no oppositions were filed would remain valid;
3.    Those applications where oppositions have already been filed or will be filed by May 30, 2022, the registration certificates issued by the TMO would stand suspended till such time the oppositions are decided by the TMO; and
4.    Registered trademarks in which oppositions are filed but registration certificates have been issued, the TMO is to inform the procedure for cancellation or recall of the said certificates.

As such, all those who missed opposing third party marks will now have a chance to oppose those marks till May 30, 2022. Also, registration certificates issued during the suspension period are subject to challenge till May 30, 2022.

Order also gives directions regarding the current backlog in opposition hearings

The Indian Trade Marks Office has a backlog of over 200,000 oppositions to be heard and concluded. Over the past decade, there have not been many opposition hearings, a situation that has been frustrating for several trademark owners and practitioners. During the hearing, the Court was also notified of this disconcertingly huge backlog. It was also pointed out to the Court that the pendency is due to the lack of officials to hear the trademark opposition proceedings.

The Court was concerned and immediately took note of the situation and directed the Controller General of Patents, Designs and Trademarks (CGPDTM) to place a proposal before it, explaining how he intends to deal with the pending of oppositions. The CGPDTM was also asked to submit a complete year-wise chart of oppositions which are pending, where pleadings are completed and the matters have matured for hearing.

It is hoped that this order will also trigger some movement at the TMO in terms of opposition hearings, which have not been taking place for long.