Fate of registered marks undecided as opposition deadline extended

A recent order passed by the court, has been much awaited considering the  implication it has on trademarks registered during the pandemic  and oppositions missed to be filed  within time.

In a  recent order issued by the Delhi High court in the case of Dr Reddys Laboratories Limited v Controller General of Patents, Designs and Trade Marks, the Court took a rather stern stance in the cases where the TM Office shut its doors to accepting oppositions beyond the 4 month opposition period even though there was a Supreme Court Order whereby  the opposition deadlines will automatically extend   Several oppositions were returned citing that it was past the opposition period and the marks proceeded to registration  as no opposition could be filed

While the order is more comprehensive, we are boiling it down to a few insights for your convenience:

• In the case of other trademarks advertised during the pandemic, the limitation period for filing oppositions to the said applications shall be extended until the expiration of 90 days from the 1st March, 2022, i.e. until the 30th May, 2022, in accordance with the Supreme Court’s orders.
• The issued registration certificates shall remain valid and the registrants shall enjoy their statutory rights in line with law in respect of trademark applications in which no oppositions have been filed or received until May 30, 2022.
• In the case of trademark applications for which oppositions have been made or will be submitted by May 30, 2022, registration certificates will either not be issued or, if previously issued, will be suspended until the oppositions are resolved by the CGPDTM office.

So, what led to this?  

The Court was hearing a set of petitions alleging that the Controller General of Patents, Designs, and Trade Marks (CGPDTM) denied the petitioners from submitting oppositions to trademark applications on ground that they were filed beyond the four-month deadline set out in Section 21 of the Trade Marks Act of 1999. In light of the pandemic, the petitioners had sought the advantage of the Order of the Hon’ble Supreme Court in Cognizance for Extension of Limitation, which directed that the period from 15.03.2020 till 28.02.2022 shall stand excluded for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings.  It was argued by the Petitioners that this exclusion is applicable for limitation under all statutes, and before judicial and quasi- judicial bodies.

The Court observed that there is no doubt that the Order of the Supreme Court would be applicable to filing of oppositions and that this is acknowledged by the Public Notice issued by the CGPDTM on 18 January 2022 and hence the CGPDTM has a duty to extend the limitation for filing oppositions. The Court also took note of the large number of oppositions that are pending before the TM Offices and directed the office to make a proposal on how they intend to deal with the pending oppositions. The case has been rescheduled until May 18 for additional review by the Court.

Thanks to this Order a window of opportunity has opened up for filing an opposition  in case a mark was not   opposed within the time period of 4 months  , but it also leaves open many granted registrations open to opposition  even after they have been registered  and their registrations being revoked till the opposition proceeding is concluded

We will have to wait and see till 30th May to know if the registrations obtained will remain on the Register.

By

Mrudula Manappatt