INDIA: Court suspends TM registrations granted during the pandemic; extends opposition deadlines
The Delhi High Court vide its order dated March 21, 2022 has suspended trade mark registration certificates granted during the COVID -19 pandemic. The Trade Marks are now open to opposition until May 30, 2022. The Court considered the directions of the Hon’ble Supreme Court whereby all periods of limitation prescribed under general and special laws and in respect of all judicial and quasi-judicial proceedings were suspended from March 15, 2020, to February 28, 2022. The Court held that the Supreme Court's directions apply even to limitation period for Trade Mark opposition prescribed under the Trade Marks Act, 1999.
Consequently, the High Court has issued the following key directions with immediate effect:
1) In so far as trademarks advertised during the pandemic are concerned, the advertised applications in respect of which the four-month opposition period would have expired after March 15, 2020, the limitation period for filing oppositions against such applications shall be extended until May 30, 2022.
2) Upon filing oppositions, the status of the trademark applications shall be reflected appropriately on the portal within 48 hours.
3) In so far as trademark registration certificates may have been issued during the pandemic period, the registration certificates shall be dealt with in the following manner:
i) regarding the trademark applications against which no oppositions are received till May 30, 2022, the registration certificates shall remain valid, and the said applicants shall enjoy their statutory rights per law.
ii) regarding trademark applications where oppositions are filed by May 30, 2022, the registration certificates shall either not be issued or, if already issued, the same shall stand suspended till the oppositions are decided by the office of the Controller General of Patents, Designs & Trade Marks (CGPDTM).
4) In the future, whenever the Opposition Section receives emails concerning oppositions, the concerned Controller in charge shall ensure:
i) that such emails are replied to within a reasonable time, not later than three working days; and
ii) that proper instructions are given to the section issuing registration certificates at the Trade Marks office/ concerned officials in the Mumbai office, depending upon the correspondence received, so that certificates are not issued while issues relating to opposing the trademark are being raised with the office of the CGPDTM.
For cases where Trade Mark Applications could not be opposed earlier due to the pandemic, we request you to kindly provide us with your instructions at your earliest convenience while keeping in mind the deadline of May 30, 2022.
In case you require any clarification on the above, please feel free to write to Sharabh Shrivastava, Partner, at Sharabh@iprattorneys.com.