Trademark Registry Orders To Be Recalled: Here's What You Need To Know !

[This guest post was authored on 01 December 2024 by Tanmay Sharma, Advocate, Delhi High Court. If you have any queries regarding this article, you can reach out to him at tanmaysharmalaw@gmail.com]

The functioning of Trade Marks Registry has recently come into highlights after publication of an article in renowned newspaper discussing the contractual staff used by Controller General of Patents, Designs and Trade Marks (CGPDTM).

Reportedly on March 29, 2024 a show cause notice was issued by the Department for Promotion of Industry and Internal Trade (DPIIT) to CGPDTM asking why action should not be taken against him for violating the General Finance Rule 2017, by delegating quasi-judicial powers to contractual staff without their consent.

Thereafter on 25th April the DPIIT asked for legal opinion from Department of Legal Affairs and from Additional Solicitor General of India, in which it was advised that the decisions from these contractual employees “suffer from fundamental flaws and can be successfully challenged as null and void in any statutory proceeding”.

On July 18th DPIIT directed CGPDTM to terminate its MOU with Quality control of India (who is responsible for appointment of these contractual staff). Between all of this, on 2nd August the Calcutta High Court in a pending appeal passed a judgement, making it clear that contractual staff hired under the Trade Marks Registry can only discharge administrative functions on behalf of the Registrar, and not quasi-judicial functions like issuing orders.

Finally On August 13th 2024, the CGPTDM issued an office order to revalidate the orders passed by those contractual staff and explained the mechanism to do so.

The mechanism has two levels of officers who will be authorized to look into orders by the contractual staff.

1. Level 1 Officer - Examiner/ Senior Examiner of TM and GI

2. Level 2 Officers - Asst. Registrar of TM and GI

Before understanding the mechanism let’s look at the cases in which the orders passed will be evaluated.

1. TM Applications processed during the Examination Stage.

2. TM Applications processed during the Pending Application Record Management (PARM) Stage.

3. TM Applications processed during the Show Cause Hearing Stage

4. TM Applications processed during the Opposition Stage

5. TM Applications processed during the Post Registration Stage

As per the mechanism the Officers of level 1 shall revisit the application and evaluate, if it has been processed as per law, he may validate the same, otherwise in appropriate case, he may state the reasons and propose the suitable action including section 19 or section 54 (4) of the act, as the case may be, to Level 2 Officer.

The Level 2 officer will initiate the process as per proposal of Level- 1 officer. In case if Level 2 officer disagrees to the proposal of Level 1 officer, he may, for the reasons to be recorded in writing, validate the decision. The Level 2 officer will be managing the hearing. The necessary steps to fix up hearing in recommended cases shall be taken by the head of office of respective TMR branch.

What to do upon receiving a registry notice for your application?

The notice will address that the application has been accepted/proceeded (in above mentioned cases) through error. The Applicant needs to file a response/submission along with supporting documents (if any) within 1 month from the date of receipt of the notice. The Applicant also have an option to request for a hearing,

This action is a big step considering the fact that thousands of applications are falling under the preview of this order. The result of such a big decision can be analysed in due course of time.

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