loader

Disclaimer

The Bar Council of India does not permit advertisement or solicitation by advocates in any form or manner. By accessing this website, www.khaitanco.com, you acknowledge and confirm that you are seeking information relating to Khaitan & Co of your own accord and that there has been no form of solicitation, advertisement or inducement by Khaitan & Co or its members. The content of this website is for informational purposes only and should not be interpreted as soliciting or advertisement. No material/information provided on this website should be construed as legal advice. Khaitan & Co shall not be liable for consequences of any action taken by relying on the material/information provided on this website. The contents of this website are the intellectual property of Khaitan & Co.

Please accept the above
Close

Search

See all results for ""

Delhi High Court stays notice issued by the Indian IP authority in relation to time bound IP filings

27-May-2020

On 18 May 2020, the Controller General of Patents, Designs and Trade Marks (Respondent) issued another Public Notice (New Notice) whereby the deadlines for various acts, proceedings, filing of any reply/document, payment of fees, etc relating to any intellectual property matter (IP Filings) falling due between 15 March 2020 to 17 May 2020 was fixed as 1 June 2020 and no extension was permitted for the deadlines falling beyond 17 May 2020. This New Notice was contested by Intellectual Property Attorneys Association & Anr (Petitioners), by filing an application in their writ petition bearing WP(C) No 3059/2020 (Writ Petition) before the Delhi High Court (Court). The Court passed a further order dated 21 May 2020 (Further Order) staying the operation of New Notice.

Background

In light of the prevailing COVID-19 pandemic, relying on the Supreme Court of India  (Supreme Court) order dated 23 March 2020 passed in a Suo Moto Writ Petition (Civil) No 3/2020 (SC Order), the Court had passed an order dated 11 May 2020 (Earlier HC Order) suspending the Public Notice dated 4 May 2020 passed by the Respondent by virtue of which the deadline for time-bound IP Filings was fixed as 18 May 2020. In the Earlier HC Order, the Court also observed that the Respondent shall act in accordance with the SC Order. This was covered in our previous Ergo published on 13 May 2020.

Subsequent to the Earlier HC Order, the Respondent issued the New Notice and fixed the deadlines for time-bound IP Filings due from 15 March 2020 to 17 May 2020 as 1 June 2020. Furthermore, the New Notice did not deal with the deadlines falling beyond 17 May 2020 which impliedly meant that no extension would be granted for such IP Filings despite the fact that the national lockdown has been extended in India.

Consequently, in the Writ Petition, the Petitioners filed an application for quashing of the New Notice inter alia on the ground that the same is in complete violation of the SC Order and Earlier HC Order and it would cause undue hardship to the stakeholders.

During the hearing, the Respondent relied upon a subsequent order dated 6 May 2020 passed by the Supreme Court in relation to extension of the period of limitation in all matters under the Arbitration and Conciliation Act, 1996 and matters under the Negotiable Instruments Act, 1881. The Respondent also placed on record another Public Notice dated 20 May 2020 issued by it whereby the stakeholders were permitted to file petitions for extension/condonation of delay in patent matters within one month of the situation becoming normal.

Decision

The Respondent’s reliance on the Supreme Court’s subsequent order dated 6 May 2020 which inter alia clarified issues relating to arbitration and negotiable instruments disputes was not considered at this stage. After going through the rival submissions, the Court once again reiterated that the SC Order dated 23 March 2020 was binding on the Respondent as on any other Court or Tribunal. The Court was also skeptical about the Respondent’s conduct mainly as to what prompted the Respondent to issue the New Notice in spite of the SC Order and Earlier HC Order and directed the Respondent to file an affidavit within two weeks. The matter is next directed to be listed on 17 June 2020. The Court as an interim measure, stayed the operation of the New Notice as well as the Public Notice dated 20 May 2020.

Comment

The Further Order of the Court has ensured that status quo in relation to extension of deadlines for IP Filings due on or after 15 March 2020 is maintained until further orders of the Supreme Court.

-          Smriti Yadav (Partner) and Shwetank Tripathi (Associate)

For any queries please contact: editors@khaitanco.com

Smriti Yadav (partners)

We have updated our Privacy Policy, which provides details of how we process your personal data and apply security measures. We will continue to communicate with you based on the information available with us. You may choose to unsubscribe from our communications at any time by clicking here.

For private circulation only

The contents of this email are for informational purposes only and for the reader’s personal non-commercial use. The views expressed are not the professional views of Khaitan & Co and do not constitute legal advice. The contents are intended, but not guaranteed, to be correct, complete, or up to date. Khaitan & Co disclaims all liability to any person for any loss or damage caused by errors or omissions, whether arising from negligence, accident or any other cause.

© 2024 Khaitan & Co. All rights reserved.

Mumbai

One World Centre
10th, 13th & 14th Floor, Tower 1C
841 Senapati Bapat Marg
Mumbai 400 013, India

Mumbai

One Forbes
3rd & 4th Floors, No. 1
Dr. V. B. Gandhi Marg
Fort, Mumbai 400 001

Delhi NCR (New Delhi)

Ashoka Estate
11th Floor, 1105 & 1106,
24 Barakhamba Road,
New Delhi 110 001, India

Kolkata

Emerald House
1B Old Post Office Street
Kolkata 700 001, India

Bengaluru

Embassy Quest
3rd Floor
45/1 Magrath Road
Bengaluru 560 025, India

Delhi NCR (Noida)

Max Towers,
7th & 8th Floors,
Sector 16B, Noida
Uttar Pradesh 201 301, India

Chennai

8th Floor,
Briley One No.30
Ethiraj Salai
Egmore
Chennai 600 008, India

Singapore

Singapore Land Tower
50 Raffles Place, #34-02A
Singapore 048623

Pune

Raheja Woods
03-108-111, 3 Floor
8, Central Avenue, Kalyani Nagar
Pune - 411 006, India

Gurugram (Satellite Office)

Suite No. 660
Level 6, Wing B,
Two Horizon Center
Golf Course Road, DLF 5
Sector 43, Gurugram
Haryana 122 002, India

Ahmedabad

1506 - 1508, B-Blockr
Navratna Corporate Parkr
Iscon Ambli Road, Ahmedabadr
Gujarat - 380058