In the matter of :-
PAWANDEEP SINGH ….. Petitioner
Versus
THE REGISTRAR OF TRADEMARKS & ANR. ….. Respondents
Date of order:-23.03.2022
Writ filed by applicant of trademark,as his trademark application got refused with out any hearing.
In this writ petition, the grievance of the Petitioner was that the trademark application of the Petitioner bearing no. 3981639 dated 24th October, 2018 in Class – 17 for the registration of the mark ‘SWISS’ was refused without even giving a proper hearing to the Petitioner.
Petitioner submitted that two notices for hearing were given to him. It was submitted that even though the agent for the Petitioner logged in for the online hearing, the official concerned did not log in, on both the occasions.
Counsel of petitioner has also send emails to the trademark office but no response was received. Finally, without the hearing being held, the refusal order was issued on 25th January, 2022.
Senior Examiner of Trademarks was called by Hon’ble Court
The matter was taken up for hearing before Hon’ble Delhi High Court on 22nd March, 2022, and the concerned Senior Examiner of Trademarks was directed to join the Court proceedings in order to clarify as to whether any hearing was in fact given to the Petitioner, and if it was not given, the reason for the same.
Senior Examiner of Trademarks appeared on 23.03.2022 in compliance of directions contained in order dated 22nd March, 2022.
Submissions made by Ld. counsels for the parties and Ld.Examiner showed that:
i) The cause list for hearing of the Trade Mark Registry is published on a monthly basis.
ii) The platform over which hearings are conducted by the Registry, permits only three persons at a time to be present in the hearing and all the remaining participants/attendees are kept in the waiting room.
iii) The order which is passed by the Trade Mark Examiner has two parts, the templated portion and the non-templated portion where the Trade Mark Examiner types out the order. The templated portion is not editable and shows that the matter was set down for hearing and eventually hearing took place on a particular date.
iv) Examiner admitted that the Petitioner in the present case was not heard and the templated portion of the impugned order is contrary to the actual fact. Perusal of the screenshot placed on record also shows that the Counsel for the Petitioner/ Applicant was in the meeting room during the show cause hearing on 30th November, 2021. However, without giving any hearing to the ld. counsel, it was recorded in the impugned order that hearing was held, submissions were heard, and the application for registration of the mark was refused.
Court said that the orders which are passed by the Registrar of Trademarks deal with precious rights relating to the trademarks of individuals and businesses. The refusal of a trade mark without even affording a hearing would be contrary to the fundamental tenets of natural justice.
Wrong and faulty Order of Examiner
Court said that illegality arise when the order captures that hearing took place, whereas in fact the counsel was kept waiting in the WAITING ROOM but was not admitted. Thus, submissions were not heard but the order records that submissions were heard.
Situation with Trade Mark Registry
Court obeserved that the Trade Mark Registry deals with lakhs of applications every year and therefore, the utilisation of a platform for virtual conference hearing wherein only three individuals are permitted to join at a time, would be grossly insufficient and an outdated mode of holding online hearings.
What office of Registrar of Trademarks should do
In fact, the office of the Registrar of Trademarks should encourage and move towards having a much more transparent system of online hearings in the presence of Agents/ Lawyers/ Applicants who may be permitted to join through an open link. The online hearings can also be held by publishing daily cause lists with a serial number for the applications being taken up and allotting at least two hour slots where the open link is made available on the website of the Trade Mark Registry.
In the opinion of the Court, Lawyers/Applicants/Agents ought to be permitted to appear through the open link and make submissions before the Examiner. It is clear that there is a need to alter the current mode and manner of holding online hearing.
Situation in the present case and apology of Examiner
Court said that clearly in the present case there is no doubt that the hearing was not held and the application was refused by wrongly recording that a hearing has been granted.
Examiner apologised for what has transpired. In order to avoid inconvenience and expense for the applicants to knock the doors of High Courts by way of writ petitions for such procedural lapses,
Court observed that, it is necessary for the Controller General of Patents, Designs & Trade Marks (hereinafter “CGPDTM”) to device a proper mechanism for holding show cause hearings by including the following features:
(A) Publication of cause list notice on a daily basis, with serial numbers for the applications to be taken up, preferably with morning and afternoon slots, if required.
(B) Utilising a platform with an open link which permits more individuals to join a hearing at a time.
(C) Matters be called serial number-wise for the purpose of certainty and convenience of the applicants, so that the concerned Applicant/Agent/Counsel can make submissions in respect of the application being examined when the appropriate number is called out, instead of waiting endlessly in the waiting room.
(D) Removal of templates from the order statements such as ‘hearing took place before me’ which may vary on case-to-case basis.
(E) Some extra space being made available in the order for Senior Examiners to put their brief reasons for allowing or refusing the application.
(F) Let the proposal on behalf of the CGPDTM in respect of holding show cause hearings qua the points outlined above be placed on record within two weeks.
Court said, that In the process of placing the said proposal, the CGPDTM may also consult the IP fraternity including Associations like the Intellectual Property Attorneys’ Association (IPAA), and the Asian Patent Attorney Association (APAA), International Association for the Protection of Intellectual Property (AIPPI),International Trade Mark Association (INTA), or any other stakeholders, if required.
The order dated 25th January, 2022 passed by the Senior Examiner of Trade Marks was set aside and the matter was remanded back to the Trade Marks Registry.
The office of the Registrar of Trade Marks, was directed to give a proper hearing to the Applicant and pass orders in accordance with law.
Finally the present petition was disposed as the terms mentioned above.
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