The IP experience according to Asia’s Women of IP31 March 2020
Women of IP, in honour of International Women's Da...
31 May 2020
Protecting your trademarks remains essential during the Covid-19 pandemic. Ravi Chadha explains the necessary steps to take in India.
The aftermath of the Covid-19 pandemic has been felt across all facets of life. While educational institutions have shut down and travel bans have been enforced, the world of IP has not remained unaffected. It was in the wake of a nationwide lockdown announced by the Government of India on March 23, 2020, that various organizations and institutions including the IP offices suspended their functioning from March 25,2020, until at least April 14, 2020. The lockdown in India has seen a further extension until May 3, 2020.
The Supreme Court on March 23, 2020, invoked its plenary powers under Article 142 read with Article 141 of the Indian Constitution and took suo motu cognizance of the pandemic in tandem with the hardships being faced by the litigants and practitioners in filing petitions, applications, suits, appeals and all other proceedings within the period of limitation prescribed under the Limitation Statute or under Special Laws. With a guided aim to obviate the difficulties and to enforce the necessitated social distancing norm, the court ordered that the period of limitation in all proceedings, irrespective of the limitation under the General Law or Special Law, whether condonable or not, would stand extended from March 15, 2020, until further orders. The order of the Supreme Court is binding on all courts, tribunals and authorities in India.
Following suit, the High Court of Delhi and the various IP offices have also announced and issued notifications in the measures being taken on account of the pandemic. The courts have issued orders to reduce physical access and all proximity and the courts are deemed to be “closed” within the meaning of Section 4 of the Limitation Act, 1963. The effect of the same has been seen on IP enforcement as well.
The courts have limited all judicial work to only urgent hearings and/or dire matters which warrant immediate attention from the courts. In all other cases, where the matter does not merit absolute urgency, the courts have adjourned them to specific dates in the months of June 2020 and/or July 2020. Directions have been issued to all courts subordinate that the number of benches hearing urgent matters be increased and to ensure smooth functioning through video conferencing. In the above scenario, urgent hearings are being take up through video conferencing after the litigant is able to satisfy the hearing officer of the reasons warranting such urgent listing. One such example is that of a bail matter and/or injunction corresponding to the need of the districts.
The courts have adopted new technology rapidly and procedures in relation to e-filing of applications and pleadings are being considered more pro-actively than ever. Additionally, hearings are being allotted for specific dates when the courts are listing matters for hearing through video conferencing. There is thus a slow shift of dependence of courts from oral arguments to written and well-researched submissions.
As regards the world of IP specifically, it is noted that IP matters involving trademark, copyright, patent and design disputes are not covered under hearings which warrant dire orders and/or urgent intervention of the court. It is thus that only those IP disputes involving disparagement or potential threat to a right holder at a mass scale can be considered to be urgent and may likely secure indulgence of the court during this time. It is thus difficult to satisfy the court of an urgency in IP matters.
With regard to pleadings and statutory deadlines, since the period of limitation has been extended, the party shall not be considered to be in default and all filing falling during this period, would automatically be scheduled after the courts and the registry resume normal functioning. Similarly, the delay that will accrue to a party in bringing about a new action, will automatically be condoned on account of the lockdown and will not be decided against the party. Further, all interim orders passed have been directed to be extended during the lockdown period and will continue to be in operation until May 15, 2020, except for those cases where orders have been passed by the Supreme Court and the intervention of the Supreme Court is sought.
Vide a recent full court resolution, the Delhi High Court has indicated that owing to the severe hardship faced by the litigants due to the pandemic of Covid-19, which has impaired the functioning of courts, in order to make up for the loss of functioning and to ensure restoration of courts at the earliest, the summer vacations for the Delhi High Court and all courts subordinate thereto, would stand forsaken and during the entire month of June 2020, the courts shall continue functioning.
Further, all branches of the Trade Marks Registry currently stand closed until May 3, 2020. The hearings fixed during the period of lockdown have been adjourned, and fresh dates will be appointed in due course. The Trade Marks Journals will not be published during the said period, and all deadlines falling within the period of lockdown will fall on the date when the registry reopens. This implies that the deadlines for filing the notices of opposition, counter-statements, evidence, etc. falling during the said period of lockdown will in effect stand extended to May 4, 2020. However, the e-filing services of the Trade Marks Registry are continuing to function as usual 24x7.
During the period of lockdown, while the launch of new trademarks could be delayed, it is important for the companies to conduct pre-filing searches from the records of the Trade Marks Registry, and to conduct common law searches to ensure availability of the trademarks. India is a first-to-use country, where prior use of a mark is accorded importance rather than a prior application or registration on a proposed-to-be-used basis or a latter user claim. Therefore, it is important for the search results to be analyzed before adoption of a trademark. If the search report is clear, immediate steps should be taken to apply for the trademark through e-filing services, so as to reserve rights in the same, and to avoid a situation where a third-party files a prior application for an identical or deceptively similar trademark, which may create issues at a later date.
For prosecution of existing trademark matters, it is recommended that where e-filing can suffice, one must opt for the same instead of awaiting the office of the Trade Marks Registry to reopen post-lockdown. In the event where most of interested parties opt for the latter option, it is likely to result in a backlog of matters at all branches of the Trade Marks Registry, and thus, will possibly cause delay in the matters. But it is to be kept in consideration that the Trade Marks Registry’s software is not equipped to allow filing of notices of opposition, renewals, filing of priority applications after the deadline date, and as on date, no changes have been made to the software to allow e-filing of the same post deadline. Therefore, the parties should try to meet the original deadline by using the e-filing services of the Registry. Where it is not possible to do so, the option to do paper filing at the office of the Trade Marks Registry after the lockdown will remain available.
Also, another indirect result of the lockdown is that many people in India, like the world over, are turning to shopping online. The general economic slowdown and the risk of job cuts, salary cuts, etc., has turned the average household to be more economical and to look for discounts on the online shopping platforms. Further, until a vaccine is developed to combat the virus, or the situation becomes completely normal, people at-large will remain scared to venture out to marketplaces, or shopping stores to avoid crowded places, and this may prompt the people to turn to online platforms to satisfy their shopping needs. It is also uncertain if the lockdown will be lifted by early next month, or will be further extended. It will all depend upon the prevailing situation in India. The current state of circumstances will encourage the consumers in India to shift to online shopping world. In the scenario, as more and more brands will turn to the online marketplace, this in turn will give more ways to the counterfeiters to market their products. In recent times, there have already been news reports where fake sanitizer factories have been busted in different parts of India. Therefore, the companies must take early measures to combat the counterfeiting of products online, and to protect any misuse of their brands.
The foremost step in this direction is to apply for protection of your brands as registered trademarks. The companies who have already turned to online marketplace or are in the process of looking towards the said direction must ensure to protect their trademarks by applying for their registration. As the e-filing services of the Trade Marks Registry are running, the applications can be filed for registration of trademarks. If not all, the essential brands of companies must be protected as registered trademarks. The second most important step is to effectively monitor the online shopping channels. While the law authorities would be more drawn towards the public health for the coming months, the companies should focus on strict online monitoring and taking steps for removal of the counterfeit products by placing requests with the relevant online portals. The increased online enforcement will have more impact in countering counterfeits in the coming time.
Companies at this time should also consider publicity campaigns targeted at the relevant consumers to make them aware of their trademarks and their authentic products, and to caution them against counterfeiters. Companies can further look at re-designing their logos to include a reference to measures taken to combat the coronavirus pandemic, or to show support to the ground workforce who is involved in combatting the problem. For example, a redesigned logo mentioning the benefit of washing hands with soap, or social distancing could help in not only promoting the brand, but also spreading the correct social message among the public. Further, many brands can look at manufacturing or supplying essential supplies or contributing in one form or the other to the society, and this in turn, will help them in brand building.
The current economic downturn is likely to stay for a further time until the coronavirus situation improves world-over – including in India – and many sectors have taken a hit. Several countries including India are collaborating to work on a coronavirus vaccine, and are taking effective steps to combat the spread of virus. We can hope that the current situation improves in the coming time. However, until then, the companies must ensure to strategize their actions and resources to protect their existing brands and the future ones.
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