In Dr. Reddy’s Laboratories Limited v. Controller General of Patents, Designs and Trademarks and Other Related Mattersthe Delhi High Court expressed concern over the discriminatory and arbitrary actions of the Office of the Comptroller General of Patents, Designs and Trademarks (“CGPDTM”) and imposed costs on two officials of the CGPDTM for non-disclosure facts and loss of judicial time.

The Court dealt with a batch of petitions filed by four plaintiffs, including Dr. Reddy’s Laboratories and Terrace Pharmaceuticals against the CGPDTM, alleging that the office barred them from filing oppositions against certain trademark applications. This was the case of the petitioners that Dr. Reddy’s wanted to oppose the application for the trademark “Razomax”, filed by Florem Pharmaceuticals, while Terrace Pharmaceuticals wanted to oppose the trademark “Sanjivani Mantra”. The oppositions were dismissed on the grounds that they were filed beyond the four month time limit as required by Section 21 of the Trade Marks Act 1999.

The applicants argued that they had attempted to file the hard copy of the oppositions which were also declared not to have been accepted and had therefore repeated emails which they had written to the relevant Trademark Registry department. However, there was no response. Furthermore, it is the complaint of the applicants that the trade mark register, although aware of the objections of the applicants and of the filing of the present applications, issued certificates of registration without any reference to the applicants. The claimants argued that while the Supreme Court of India had ordered an extension of the statute of limitations which specifically excluded the period from March 15, 2020 to February 28, 2022, the benefit was not granted to all.

Initially, the Delhi High Court, after reviewing the plaintiffs’ claims, registered its dismay at the non-disclosure by officials regarding the fact that around 6,000 to 7,000 objections were filed during the period. of the pandemic beyond the four-month limitation period and were welcomed by the CGPDTM.

The Court therefore imposed a cost of Rs. 1 lakh each on two CGPDTM officers to be deposited with the DHCBA Pandemic Relief Fund. The Court said the amount should only be used for distribution to lawyers and their families who died/suffered during the pandemic.

The Court also issued the following directions:

1. Tolerance on the delay of the injured parties for the filing of their respective oppositions. These oppositions must be filed before March 31, 2022 (online or offline) which will be registered by the Trademark Registry before April 10, 2022.

2. The registration certificates that had been issued by the Registry are suspended and remain suspended until they are duly accepted despite objections.

3. The registration certificate is not issued for the brand “Razomax”.

4. Announced motions for which the four-month statute of limitations would have expired after March 15, 2020, the statute of limitations under Supreme Court orders is extended to file objections to such motions, until the expiration of 90 days from March 1, 2022, i.e. until May 30, 2022.

5. Registration certificates that were issued during the pandemic period are treated in two ways:

a. In trademark applications, where oppositions have already been filed or are even received by the registry before May 30, 2022, will be valid and therefore enjoy statutory rights.

b. In the case of trademark applications whose oppositions are filed or received before May 30, 2022, registration certificates will not be issued or, if they have already been issued, will be suspended until the oppositions are resolved. by the CGPDTM office.

6. With respect to objection emails received by the CGPGTM, the Registrar concerned must first ensure that such emails are answered no later than within 2-3 working days.

7. Appropriate instructions should be given to the GCPDTM Registration Certificate Issuing Section of the Mumbai office based on the correspondence received, so that the certificates are not issued while matters relating to objections are raised with the office. of the CGPDTM.

Noting that more than two hundred thousand oppositions are pending with the intellectual property authority, the Court also asked the CGPDTM to submit a proposal on how the Office intends to deal with these pending oppositions with a table list of ongoing oppositions by year. , where the pleadings are completed and the cases have matured for hearing, along with a proposed mechanism.

The matter is scheduled for further consideration on May 18, 2022.

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