Last month, the Delhi High Court through Justice Endlaw issued directions to the Registrar of trademarks, facilitating time bound issuance of certified copies of trademark office records.
These directions were issued via an order passed in pursuance of a revision petition filed by the Registrar of trademarks (C.R.P. No. 146/2015). The revision petition was filed against an order of the Additional District Judge, issuing proclamation against the Registrar, under Order XVI Rule 10 of the CPC for non-production of records summoned as evidence.
A quick glance into the relevant facts leading to this order: The Registrar of trademarks was issued a summons in the original suit before the trial court, to produce certain records of the office. This was not complied with. Therefore, proclamation under Or. XVI CPC was issued against the registrar, requiring attendance before the court to produce the records/evidence. The Registrar then filed the present revision petition against this proclamation order, arguing that since the proclamation order was issued, certified copies of the records had been sent to the respondents (petitioners to the original suit). Further, as per sections 137 & 138 of the Trademarks Act, 1999, certified copies of records are enough as evidence, without requirement of original records or the appearance of the Registrar as witness. To this, the respondents argued that most times the application for certified copies remains pending before the Registrar’s office for long periods, causing serious inconvenience to litigants and also making it necessary to summon records as evidence.
It was this problem, common also to litigants across the country, in response to which the court issued the present guidelines. Interestingly, J. Endlaw observed that a revision petition is not maintainable against the order in question – yet felt it appropriate to issue directions of a general nature to all offices of the Registrar of trademarks, throughout India.
The directions issued by the Court are reproduced below in full:
“The Registrars of Trade Marks are directed to:-
- If not already in place, nominate one Nodal Officer of each branch to receive applications for certified copies and to issue certified copies.
- To, within two months of today, announce on the website of the Registrar of Trade Marks, the particulars i.e. name/designation, address, phone number/s and email address of the Nodal Officer responsible for accepting and entertaining applications for certified copy and to issue certified copies for each office of the Registrar of Trade Marks.
- To, within six months of today, make a provision, if not already in existence, for making online applications for certified copies.
- To, within six months of today, make a provision on the website of the Registrar of Trade Marks for disclosure of the status of the applications for certified copies including any deficiency or defect therein required to be remedied by the applicant and/or the date when it will be ready for collection.
- To, till the aforesaid is functional, as an interim measure, make a provision for sending intimation, to the applicant/s for certified copies, of deficiencies / defects required to be rectified via e-mail, SMS and other modes of communication.
- To, endeavour to make provision for online payment of the fee and other charges if any for certified copies.
- To issue certified copies within one month of the receipt of a duly completed application.
- To indicate on the certified copy, whether it has been prepared from the original of the document or from a copy of the document.
- To explore the possibility of making an endorsement of “original seen and returned” on the copies on the record, originals of which are returned.
- To ensure, that the certified copies are legible and wherever the original / copy on the record of the Registrar of Trade Marks has any colour other than black and white, the certified copy reflects such colour.
- To, if the documents of which certified copies is sought have been lost or misplaced, intimate the same to the applicant within one month as aforesaid of the application for certified copy having been made.”
These directions are fully equipped to effectuate the Court’s intention of increasing accessibility to certified copies of TM office records and making their issuance more time bound. The point is to make the process both litigant friendly, and compliant with the provisions of the trademark act. As J. Endlaw correctly notes in his order, “Once the Registrar of Trade Marks has implemented the aforesaid, it is expected that neither will any of the parties to the litigation nor any of the Courts, where such litigations are pending, would mechanically issue summons to the Registrar of Trade Marks as witness, requiring it to produce records unless reasons are recorded as to why the purpose of summoning cannot be served by obtaining certified copies and tendering the same in evidence.”
Similar litigant friendly directions improving efficiency of functioning of the Patent and Trademark Office, have been issued by our courts in the past. Way back in 2010, the Delhi HC in the case of Snehalata v. UOI improved transparency and timeliness in the patent grant process. It did this through a landmark order that plugged major loopholes in the pre-grant opposition process, thereby easing it out for applicants. Prof. Basheer covered that judgment here. After that in 2014, in Nitto Denko v. UOI, the Delhi HC introduced guidelines to fast track the patent application process at the patent office. This attempt by the Court to clear the huge backlog at the patent office, was covered by us here and here and here. Specifically with regard to trademarks, in 2013, the Bombay HC injected some clarity into the trademark registration process by holding that mere publication of examination report on the website TM registry would not constitute “communication” to the applicant as required under Rule 38 of the TM rules, 2002. (Emphasis mine. The provisions W.R.T examination of applications are now under 33 and 34 of the TM Rules 2017.) See here for our coverage of that order.
In the past, efforts to reform the IPTO has also come from within the IPTO itself – notably in 2009 when the then Controller General, Mr. PH Kurian attempted to streamline patent and trademark administration processes. See here and here for our posts on the same. Eventually, in 2014, features increasing transparency in the online search services for patents and trademarks were also introduced. Anubha covered that here. Other notable initiatives increasing efficiency and transparency have been documented by us previously, and may be accessed here and here.
Image from here.
