In a recent ruling, Hon’ble Justice Pratibha Singh of the Delhi High Court has paved the way towards greater transparency by directing the trademark registry to upload at least a brief order while directing advertisement before acceptance of a mark on the online portal of the trademark office. The Hon’ble Judge further directed that if a brief order cannot be uploaded for all applications, a copy should still be made available upon request via email. The need to file an application under the Right to Information Act, 2000 (RTI application) every time to obtain a copy of such an order was found to be unnecessarily onerous.[1]
BRIEF BACKGROUND:
The petitioner-Laxmi Kohlu Ghar, a business established in 1953, specialising in edible oils and related products, filed a petition under Article 226 of the Constitution of India before the Delhi High Court seeking various directions upon the trademark registry in respect of prosecution of trademark applications and compliance of directions issued earlier by various courts that are being ignored by the Registry.
The petitioner alleged that the reasons for the orders passed by the trademark office, whether accepting or directing the advertisement of a mark, are not made publicly available. Further, the petitioner alleged non-compliance with the mandatory directions issued by the Delhi High Court to the trademark registry in the case Jai Bhagwan Gupta vs. Registrar of Trademarks [2].The main concerns of the Petitioner were as follows:
- Arbitrary examination processes of new trademark applications.
- Without valid reasons, mechanical and reckless acceptance of false, frivolous, and undeserving trademark applications.
- Opaque acceptance, refusal, or advertising of applications without disclosing the reasons online.
- Neglecting the maintenance of purity of the Register of Trademarks.
Additionally, the petitioner asserted its status as the first and prior adopter of the ‘LAXMI’ mark, claiming statutory rights under the Trademarks Act, 1999 and The Copyrights Act, 1957.
Contentions of the Parties:
In response, the counsels on behalf of the Registrar of Trademarks argued that the reasons for accepting or directing the advertisement of a mark under Section 20 of The Trademarks Act, 1999 are recorded in an internal note sheet maintained by the Registry. The note sheet may be given upon filing an RTI application by an applicant or any other concerned party.
Decision:
The Court took note of following mandatory directions issued by it in ‘Jai Bhagwan Gupta vs. Registrar of Trademarks’, a case that had set guidelines for the proper examination and advertisement of trademarks:
“9. In recent times it is noticed, that almost all the trademarks are being advertised before acceptance under the Proviso to Section 20(1) of the Act. Such a procedure would be contrary to the Act, inasmuch as there is application of mind which is required to be exercised by the Registrar of Trademarks, prior to the mark being advertised. Under Section 20(1), there has to be a reason why the Registrar of Trademarks is directing advertisement before acceptance’ and the same cannot be a ministerial act or a mere formality. The application of mind, prior to acceptance or advertisement before acceptance, has to be deliberate and conscious and the provisions of the Act would have to be considered by the Registrar consciously. Marks that do not deserve advertisement ought not to be advertised before acceptance. The automatic or indiscriminate advertisement of trademark applications tends to increase the burden upon the applicants to keep a watch on the Trademarks Journal and oppose, leading to high costs to maintain trademark rights granted under the Act. Thus, it is not proper and is impermissible for the Registrar of Trademarks to direct advertisement of a majority of marks before acceptance under the proviso to Section 20(1) of the Act. A specific order would have to be passed as to why the mark is being advertised after acceptance or why the mark is being advertised before acceptance. The order need not be detailed but ought to exist on file, even if it is very brief. The burden of the Registrar of Trademarks to examine marks as per the provisions of the Act and Rules cannot be completely shifted upon the applicants/proprietors/owners of the trademarks. Such a procedure would result in completely ignoring the provisions of the Act itself, which is impermissible. The Registrar has to maintain the purity of the Register.
- It is, accordingly, directed that the Registrar of Trademarks shall ensure that whenever marks proceed for advertisement, a specific brief order is passed under Section 20(1) after acceptance for advertisement or under exceptional circumstances – under the proviso to Section 20(1) for advertisement before acceptance. All marks ought not to be permitted to proceed for advertisement and thereafter for registration.”
The Court further observed that the Ld has also reiterated the above directions. Coordinate Bench of this Court in the case Kaira District Cooperative Milk Producers Union Ltd and Another v. Registrar of Trademarks and Others [3].
The Court, relying upon the aforesaid judgments, emphasised the need for a brief order to be passed at the time of acceptance or rejection of the mark. The Court directed that the said brief order should be available on the online portal of the trademark registry for litigants’ reference. If the same is not uploaded for all applications, a copy of the brief order should still be made available upon request via email without there being a need to file an RTI application.
The matter is currently pending further submissions as the counsel for the trademark office has sought more time to seek instructions. It is expected that the trademark office might raise some administrative issues in uploading such orders for every application, but this would be antagonistic to the digitisation and transparency campaign launched by the Government of India.
[1] Laxmi Kohlu Ghar Through Its Partner Sh. Arun Kumar vs Controller General of Patents Designs and Trademarks and Registrar Of Trademarks & Ors., W.P.(C)-IPD 18/2022, Delhi High Court
[2] Jai Bhagwan Gupta vs. Registrar of Trademarks, W.P.(C) 11872/2005, Delhi High Court
[3] Kaira District Cooperative Milk Producers Union Ltd and Anr v. Registrar of Trademarks and Ors (2023 SCC OnLine Del 1730)
Authors: Manisha Singh and Priyanka Anand
First published by Lexology Here