India: Current Developments In The Field Of Intellectual Property Law Amid The COVID-19 Pandemic – By Yashvardhan Rana

A discomforting new danger hovers around the world, putting lives at risk, life-altering personal and professional routines, and unsettling the global economy. Amidst the COVID-19 crisis, intellectual property (IP) attorneys, like everyone else, are adjusting to a new reality and facing new challenges – figuring out how to keep going while trying to mitigate effects of the crisis with resilience and calm.

Doctors, scientists, and many corporations are pledging not to enforce patents against individuals and companies using products and services directed to addressing the fallout from the Covid-19 pandemic.

India’s coronavirus cases have crossed 26,000, and governments – Central as well as states –  are bracing up to face possible surge in infections requiring large scale hospitalisations and intensive care units (ICUs). Efforts are also on war-footing to procure more protective gears, diagnostic kits, ventilators and so on. One missing piece could be the country’s preparedness to build local capabilities to supply intellectual property rights (IPR) protected products, ingredients or spare parts that are essential in the fight against COVID-19, if the situation warrants it.

With the present situation of the Novel Coronavirus at hand and the lockdown situation in India, various courts, tribunals and other judicial bodies have taken different steps for functioning amidst the unprecedented situation. The Intellectual Property Offices including the Trademark office, Copyright Office, Patent Office and Design Office have issued various notifications regarding scheduled hearings and also document submissions.

India’s Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM)

Following the announcement by our Prime Minister, Shri Narendra Modi, that India would enter a nationwide lockdown to prevent the spread of the coronavirus, the CGPDTM issued a public notice on March 25 that it will remain closed for a 21 day period, in conformity with the announcement made. Subsequently, any Intellectual Property related deadlines that would otherwise fall within this period were deferred further to the date on which the lockdown will be lifted, i.e. April 14, 2020. 

However, after the expiration of the initial April 14 deadline, the CGPDTM confirmed on April 15 that it will remain closed to the public until May 4, 2020. Consequently, any IP-related deadlines are now further extended until May 4. The registry has also cancelled all hearings that were scheduled on lockdown dates, with parties being notified of new dates at a later time. Nonetheless, e-filing services of CGPDTM remain unaffected by the lockdown. 

Thereafter, as per public notice dated 4th May, 2020, all operations have been suspended till May 18th, 2020 and the deadlines to be met during this period will automatically be extended until May 18, 2020.

Opportunistic Trade Mark filings in India

In the wake of this pandemic outbreak, few trade mark owners could not resist the chance for opportunistic trademark filings in India. Some of the active/ongoing trade mark applications as filed forming part of the Trade Marks Register are as follows:

Source: Public Search of Trade Marks

Vienna Codification implies that if a trademark includes figurative elements or logo, then all such applications will be processed under Vienna codification.

Marked for Examination implies that the application filed has been assigned to a Trademark Officer, and is under examination (or is due to be examined)

Formalities Chk Pass implies that the registrar will check the basic information and documents provided along with the application and as per the status above, the preliminary documentary requirements have been met.

Delhi High Court advancing through tough times

On April 9, the Delhi High Court decided to cancel its summer vacation holidays, which runs from June 1 to June 30. The High Court and lower courts shall therefore continue to function during this period. Because of the extended lockdown, the Court has issued a new order suspending its activity till May 3, but mentioning and hearings of urgent matters shall continue as before through video conferencing. 

Empathetic to the difficulties faced by the litigants, the Court assured that the number of Benches, hearing matters through video conferencing, would in turn be increased further to minimise the burden. Urgent mentioning of matters shall continue before designated Registrars/ Joint Registrars only by the ‘Counsel on Record’, as before.

Wherever any request for urgent mentioning is declined by the designated Registrar/Joint Registrar, the concerned “Counsel on Record” shall have an option to re-submit/appeal for consideration before the Court that the case merits an urgent hearing. A one-page document explaining the urgency can be uploaded through a clickable link in a .pdf file (not more than 5 MB in size). The request shall not be processed in case of insufficient particulars. The aforesaid link is active on all working days of the Court from 12 noon to 2.00 pm. However, in case any ‘counsel on record’ is unable to use the link on account of any technical glitch, he may contact Mr. Sarsij Kumar, Joint Director (IT), Mobile No. 9650006723.

Recently, as per the directions of the Hon’ble Chief Justice on the recommendations of the Hon’ble Information Technology Committee, and in view of the directions passed by the Hon’ble Supreme Court in the case of Suo Motu Writ (Civil) No.5/2020 dated 6th April 2020 titled “Re: Guidelines for Court Functioning Through Video Conferencing During Covid-19 Pandemic”, the Delhi High Court has started a Helpline Number “14611” to receive any complaint with regard to deficiency in visual acuity or audibility experienced by participants during the video conferencing proceedings.

The World Intellectual Property Organisation (WIPO)

Despite reserving access to its Geneva, Switzerland headquarters, the WIPO has said that its operations under the Patent Cooperation Treaty, the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, the Lisbon System for the International Registration of Geographical Indications as well as administering other intellectual property (IP) and related systems are continuing during the current crisis. 

It’s response: “WIPO has activated its business continuity protocol and moved to an almost entirely virtual work presence, with only a small pool of personnel retaining access to our Geneva, Switzerland headquarters. This is in line with public health authorities’ guidance to curb the further spread of Covid-19. We are committed to ensuring that any transitional issues experienced by users, IP offices and any other stakeholders in our processes are kept to a minimum despite these extenuating circumstances.”

Taking stock of IP proceedings around the world

The chart provides the impact of coronavirus on patent and trademark proceedings at several IP offices worldwide as of April 16, 2020.

Unique times require unique responses and thus, we have to force/persist, create an ecosystem, innovate and infuse new practices and strive for technological advancements whether the Indian courts and varied forums rise up to the challenge that the Indian legal system faces in the wake of this horrific pandemic.

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Yashvardhan Rana is an Intellectual Property Lawyer with a particular focus on IP prosecution – from registrability analysis and risk management to providing legal opinion on the use, adoption and registrability of trademarks to be launched by Fortune 500 companies as well as top FMCG’s in India. He is a part of the Trademarks, Copyright and Design Prosecution team at Inttl Advocare, Noida, India. He is based out of New Delhi and is a member of Bar Council of Delhi, Delhi High Court Bar Association, APAA and INTA. In January, 2020 he was appointed as a Member of INTA sub-committee – The Trade Mark Reporter Committee and in 2019, he was listed in the Top 50 Emerging IP Players Award worldwide by The IPR Gorilla, 2nd Edition held in Dubai. His educational qualification includes an LL.M. in Intellectual Property Law from the Queen Mary University of London (2015-16).

Disclaimer: The views or opinions expressed are solely of the author.