Delhi High Court: Prathiba M. Singh, J., expressed that, refusing trade mark without even affording a hearing would be contrary to the fundamental tenets of natural justice.
Petitioner in the present matter was aggrieved that the trademark application of the petitioner bearing no. 3981639 dated 24th October, 2018 in Class – 17 for the registration of the mark ‘SWISS’ has been refused without even affording a hearing to the Petitioner.
Two notices for hearing were given to the petitioner. It was stated that, even though the agent for the petitioner logged in for hearing, the official concerned did not log in, on both occasions. Further, emails were petitioner’s counsel in respect of the same, but no response was received.
Finally, the refusal order was issued on 25-1-2022.
Hence the matter was taken up for hearing on 22-3-2022 and the 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, in case it was, the reason for the same.
Analysis and Decision
High Court stated that the orders passed by the Registrar of Trademarks dealt 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.
Further, illegality was compounded when the order captures that hearing took place, whereas in the face the counsel was kept waiting in the WAITING ROOM but was not admitted.
The Bench expressed that the Trade Mark registry deals with lakhs of applications every year and therefore, the utilization of a platform for a virtual conference hearing wherein only three individuals are permitted to join at a time, would be grossly insufficient and an outdated mode of holding hearings.
The Court opined that, the office of the Registrar of Trademarks should encourage and move towards having a much more transparent system of hearings in the presence of Agents/lawyers/Applicants who may be permitted to join through an open link.
“…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.”
High Court held that, the Lawyers/Applicants/Agents ought to be permitted to appear through the open link and make submissions before the Examiner without disturbance.
Further, Bench observed that, there is need to alter the current mode and manner of holding hearings from publishing monthly cause lists to publishing daily cause lists with proper serial numbers, giving open links to Counsels/Applicants individually or publishing the same on the Trade Mark Registry website and by moving to a platform which would permit more individuals to join the hearings simultaneously at a time.
High Court found that, in the present case, the hearing was not held and the application had been refused by wrongly recording that a hearing had been granted.
Hence, in order to avoid inconvenience and expense for the applicants to knock on the doors of High Courts by way of writ petitions for such procedural lapses, it is necessary for the Controller General of Patents, Designs & Trade Marks to device a proper mechanism for holding a show cause hearing including the following features:
i. 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.
ii. Utilising a platform with an open link which permits more individuals to join a hearing at a time.
iii. 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.
iv. Removal of templates from the order statements such as ‘hearing took place before me’ which may vary on case-to- case basis.
v. Some extra space being made available in the order for Senior Examiners to put their brief reasons for allowing or refusing the application.
In view of the above, the impugned order was set aside and remanded to the Trade Marks Registry.[Pawandeep Singh v. Registrar of Trademarks, WP(C) – IPD 7/2022, decided on 23-3-2022]
Advocates before the Court:
For the Petitioner:
Mr. Chander Mohan Lall, Sr. Adv. with Mr. Jatin Sharma, Advocate
For the Respondents:
Mr. Harish Vaidyanathan Shankar, CGSC, Ms. S. Bushra Kazim, Mr. Srish Kumar Mishra, Advocates for UOI
Ms. Shikha Dewan, Sr. Examiner of trademarks