The Delhi High Court has, vide its Order dated 21 March 2022 in Dr. Reddy’s Laboratories Limited & Ors. v. Controller General of Patents, Designs, and Trademarks & Anr., directed all the officers at the Office of the Controller General of Patents, Designs, and Trade Marks (‘CGPDTM’) to adhere to the Order of the Supreme Court whereby it was directed that the period of 15 March 2020 to 28 February 2022 is to be fully excluded for the purpose of calculation of limitation under all enactments and statutes, both before judicial and quasi-judicial bodies, in view of the Covid-19 pandemic.
By this order, the time limit to file an opposition against a mark, i.e., 4-months from the date of publication of the mark, also stood extended. However, despite the extension, it was noted that the Petitioners in the instant case were not allowed to file oppositions after the 4-month period had lapsed. Over the course of the proceedings, it was disclosed that while some Parties managed to file the oppositions beyond the four-month time period, this benefit was not accorded to the public by and large including the Petitioners herein. Subsequently, several registration certificates were issued by the CGPDTM in the time period between 15 March 2020 and 28 February 2022 (‘pandemic period’), wherein the rights of the prospective opponents were jeopardized as they were not allowed to avail the benefit of the Supreme Court’s order.
In view of the above, the Delhi High Court issued the following directions:
- Where the original opposition period in respect to a mark would have expired after 15 March 2020, the opposition period now stands extended to 30 May 2022 (i.e., 90 days from 1 March 2022). The office of the CGPDTM is directed to allow the oppositions to be filed either through online mechanism or through physical filings, which must be expeditiously reflected on the online portal within 48 hours.
- Where registration certificates have been issued during the pandemic period i.e. 15 March 2020 till 28 February 2022:
- If no opposition is filed till 30 May 2022, the registration shall continue to stay valid.
- If an opposition is filed in the specified time, the registration shall stand suspended till the oppositions are decided.
- In the future, where any correspondence is received with respect to oppositions, the Controller in-charge shall:
- Firstly, respond to the same within a reasonable time, not later than 3 working days, and
- Secondly, ensure that proper instructions are given to the section issuing registration certificates, so that no certificate is issued while issues relating to opposition subsist.
The Court was also deeply concerned about the backlog of opposition matters pending with the offices of the CGPDTM, several of which are ripe for hearing. In view of the same, the office of the CGPDTM was asked to submit a year wise chart of pending oppositions which have matured for hearing and the proposed mechanism to deal with the pending oppositions.
Key takeaways:
In view of the above, please note the following:
- In case you wish to file any opposition against a mark which was published in the pandemic period (i.e. 15 March 2020 – 28 February 2022), the same may be done on/before 30 May 2022.
- Where a registration certificate has been issued for your mark during the pandemic period, the mark shall now be open for opposition till 30 May 2022. If an opposition is not filed in the interim, the mark shall continue to be registered. However, if an opposition is filed, the mark’s registration shall be suspended, and an opposition proceeding shall be initiated.