"Refusal Of Trademark Sans Hearing Contrary To Natural Justice": Delhi HC Asks Controller General To Devise Proper Mechanism For Show Cause Hearings

Observing that refusal of a trademark without even affording an opportunity of hearing to the applicant would be contrary to the fundamental tenets of natural justice, the Delhi High Court has asked the Controller General of Patents, Designs & Trade Marks (CGPDTM) to devise a proper mechanism for holding show cause hearings.

Further noting that the Trademark Registry deals with lakhs of applications every year, Justice Pratibha M Singh opined that the utilization 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conference hearing wherein only three individuals are permitted to join at a time, would be grossly insufficient and an outdated mode of holding hearings.

"In fact, 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. The 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," the Court said.

It added that Lawyers, Applicants or Agents ought to be permitted to appear through the open link and make submissions before the Examiner so long as they do it in an orderly manner without disturbing the hearings being held.

"It is clear that there is a 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," the Court said.

Accordingly, 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, the Court asked the CGPDTM to device a proper mechanism for holding show cause hearings by including the following features:

- 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.

- Utilising a platform with an open link which permits more individuals to join a hearing at a time.

- 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.

- Removal of templates from the order statements such as 'hearing took place before me' which may vary on case-to- case basis.

- Some extra space being made available in the order for Senior Examiners to put their brief reasons for allowing or refusing the application.

The Court directed that the proposal regarding holding of show cause hearings qua the points outlined by the bench must be placed on record within two weeks.

It also said that 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 Court was dealing with a petition raising a grievance that the trademark application of the Petitioner dated 24th October, 2018 in Class - 17 for the registration of the mark 'SWISS' was refused without even affording a hearing to the Petitioner.

The case of the Petitioner was that two notices for hearing were given to him. Even though the agent for the Petitioner logged in for the hearing, the official concerned did not log in, on both the occasions.

Emails were sent by the counsel for the Petitioner in respect of the same, however, no response was received. Finally, without the hearing being held, the refusal order was issued on 25th January, 2022.

"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. The illegality is further compounded 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," the Court noted.

The Court noted that in the present case, the hearing was not held and the application was refused by wrongly recording that a hearing has been granted. Accordingly, the Court set aside the impugned order dated January, 2022 passed by the Senior Examiner of Trade Marks and remanded the matter to the Trade Marks Registry.

"The office of the Registrar of Trade Marks, shall afford a proper hearing to the Applicant and pass orders in accordance with law. The date of hearing shall be communicated to the Applicant through email by the Examiner," the Court directed.

The matter is now listed for receiving compliance on 27th April, 2022.

Case Title: PAWANDEEP SINGH v. THE REGISTRAR OF TRADEMARKS & ANR.

Citation: 2022 LiveLaw (Del) 243

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