Rights ignored in optimising trademark processes

By Ruchi Sarin and Keya Joshi, LexOrbis

In the past few years the Trademarks Registry (registry) has undertaken initiatives to streamline the trademark process. It has taken praiseworthy steps to speed up examinations and registrations. However, intellectual property rights (IPR) holders have recently faced other worrying issues. These have been dealt by the Delhi High Court in three recent cases.

Ruchi Sarin

In the case of Intellectual Property Attorneys Association v The Controller General of Patents, Designs & Trade Marks & Anr, the court made an order in favour of the petitioner who was aggrieved by orders made by the Registrar of Trade Marks. The registrar had refused applications for registration of trademark but had not followed section 18(5) of the Trade Marks Act, 1999, which required him to record in writing the grounds for refusing or conditionally allowing applications and the materials used by him in arriving at his decision. In allowing the petition the court directed the registrar strictly to implement the section and to send the orders to the applicant within two weeks.

The court held that the petitioner correctly argued that rule 36 of the Trade Marks Rules, 2017, is inconsistent with the scheme of the act and contravenes the provisions of section 18(5), which are mandatory. That rule allows the registrar to send only a copy of the order to the applicant without the grounds for refusal or conditional acceptance. If the applicant intends to appeal from such decision, he may apply within 30 days to the registrar whereupon the registrar shall furnish the grounds of refusal or conditional acceptance.

The court accordingly held that:

(1) The registrar is duty bound under section 18(5) of the act to send to the applicant a copy of the order containing the grounds for refusal or conditional acceptance and the material used by him in arriving at his decision; and

(2) Rule 36 of the rules is arbitrary, unreasonable and inconsistent with the mandatory provisions of the statute inasmuch as it allows the registrar to communicate the decision without giving the grounds for refusal or conditional acceptance. Section 18(5) of the act prevails over rule 36 of the rules.

Keya Joshi

In Asianet Star Communications Pvt Ltd v The Registrar of Trade Marks & Anr the petitioner was aggrieved that the registrar had deemed his trademark to have been abandoned. Before the registrar can come to that conclusion, he has to issue a certain notice. According to the registrar’s website in June 2019 the registrar had issued no such notice. Accordingly, the petitioner applied for renewal of his trademark protection. In July 2019 the petitioner found a notice dated September 2016 on the registrar’s website.

The notice was in a form that only came into effect in March 2017. The petitioner took the view that the notice had been backdated and had never been properly issued. Unsurprisingly, the court disapproved of the registrar’s actions and directed the examiner of trademarks who signed the notice to file an affidavit dealing with the date when the particular form was uploaded and how it was communicated to the applicant. The examiner has also to file relevant documents to support the uploading and has to attend court on the adjourned hearing.

In the meantime, the court gave leave to the petitioner to apply for renewal of trademark protection and directed the registrar not to treat the trademark as abandoned.

The court cited in support a case that had been heard shortly beforehand. In M/s B.E.C. Industries v Union of India, a similar situation had arisen and the court had directed that enquiries be made into how a backdated new form had been issued. In the Asianet Star case counsel appearing for the registrar was aware of the enquiries ordered in the earlier case but had not been instructed on their progress.

At best these two cases appear to show that there exists gross systemic incompetence in the office of the registrar; at worst that there is malfeasance. All three cases indicate that there is little regard for the substantive rights of the IPR of the holders in the face of the need to deal with a heavy workload. The views of the courts should act as a much-needed warning. The Asianet Star case was listed for hearing again at the beginning of December. It is to be hoped that the registrar’s office will acknowledge at that time that streamlining processes are vital to its efficiency and success, but that they should not come at the expense of substantive rights.

Ruchi Sarin and Keya Joshi are associates at LexOrbis.

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