The Department for Promotion of Industry and Internal Trade (“DPIIT”) has directed the Office of the CGPDTM to follow a process in order to evaluate and re-validate the final decisions taken by the officers hired through the Quality Council of India (“QCI”).

Background

In the past two years, the QCI, an independent non-profit organisation, has recruited contractual officers for the Office of the Controller General of Patents, Designs, and Trade Marks (“CGPDTM”). However, The High Court of Calcutta, presided by Justice Krishna Rao, on 02.08.2024 passed a judgement with respect to the authority and validity of orders passed by the officers (Associate Managers at the Trade Marks Registry) that were appointed by the QCI.

The judgement addressed three appeals (IPDTMA 82 of 2023, IPDTMA 83 of 2023, and IPDTMA 1 of 2024) challenging the respective orders issued by Associate Managers on the grounds of their legal authority under the Trade Marks Act, 1999 to pass quasi-judicial orders.

The Court stated that the Registrar dealing with an application under the Trade Marks Act, 1999 is a quasi-judicial while the delegation of power under sub-section (2) of Section 3 is an administrative power. As such the Associate Managers (Officers) appointed under sub-section 2 of Section 3 are not empowered to pass quasi-judicial orders.

Office order dated 13.08.2024 

In light of the said judgement, the Department for Promotion of Industry and Internal Trade (“DPIIT”) has now directed the Office of the CGPDTM to undertake a re-validation exercise for the trademark application process wherein final decisions were taken by the officers hired through the QCI.

The CGPDTM accordingly issued an office order on 13.08.2024 for this assignment. The order lays down a level-wise process to re-visit such cases and has tasked 2 Level officials to undertake the proposed action at the respective stages as follows:

  1. Trademark Application processed during the examination.
  2. Trademark Application processed during PARM.
  3. Trademark Application processed during the Show Cause Hearing.
  4. Trademark Application processed during the Opposition period.
  5. Trademark Application processed Post Registration.

The modalities as prescribed are as follows:

  1. The Level-1 officer is directed and authorized to revisit the application as per provisions of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. If the decision appears to be in line, the same shall be validated.
  2. Alternatively, s/he may state the reasons and propose the suitable action to Level-2 officer.
  3. Thereafter, Level-2 officer is authorized to initiate the process as per the proposal of Level-1 officer.
  4. In case Level-2 officer disagrees to the proposal of Level-1 officer, s/he may, for reasons to be recorded in writing, validate the decision.
  5. The Head of Office (“HO”) of the respective Trade Marks Registry’s (“TMR”) branch shall take necessary steps to fix a hearing in recommended cases on priority basis before Level-2 Officer. 

Under the order, the officials designated under Level-1 and  Level- 2 for the respective Trade Marks Registry have been notified.

On-going Court matters

The System Administrator of the TMR has also been directed to:

  1. Share the relevant trademark application numbers/ data with all HOs of TMR.
  2. Accordingly, the HOs shall note all cases where the TMR order is under appeal and pending before the Hon’ble Courts.
  3. Further, the HOs shall ensure that the relevant data entry pertaining to “Legal Cases Details” is done through the Trade Marks module and all records uploaded on e-records.

This information will be for the Level-1 and Level-2 officers so they may take appropriate steps/decisions to keep the matter in abeyance till the final outcome of the matter before the Hon’ble Court. In appropriate cases, where the Hon’ble Court has already passed the order/direction, the same shall be complied with by the HO of the appropriate TMR branch within the stipulated time and manner as per directions of the Hon’ble Court.

Timeline 

Each Level-1 and Level- 2 group officers appointed, have been asked to work on at least 250 applications in a day.

The detailed ‘Office Order for Special Assignment’ dated 13.08.2024 can be read here: Office_Order_1723603021