DPIIT Directs Re-validation of Trademark Decisions by officers of QCI

The Office of the Controller General of Patents, Designs, and Trademarks (“CGPDTM”) has recently issued an office order elaborating the process to re-validate the trademarks application processing where the final decision was taken by the officers hired through Quality Council of India (QCI) (“Order”). The revisiting will particularly focus on the following key stages - Examination Stage, PARM (Pending Applications Records Management) Stage, Show Cause Hearing Stage, Opposition Stage and Post-Registration Stage.

By way of background, on July 18, 2024, the Department for Promotion of Industry and Internal Trade (“DPIIT”) issued a directive to CGPDTM, requiring the termination of the Memorandum of Understanding (MoU) with the QCI (“Directive”). Such a directive was the result of growing concerns regarding the legality of decisions made by Contract Hearing Officers (CHOs) appointed through QCI to handle the trademark-related matters. For ease of reference, QCI is an autonomous body established to create a mechanism for independent third-party assessment of products, services and processes.

It is pertinent to note that the DPIIT's decision (to issue the Directive) follows the legal advice which was obtained from the Department of Legal Affairs and the Additional Solicitor General of India. In the legal opinion, it was mentioned that the orders passed by contractual staff employed i.e the CHOs through QCI are legally unenforceable, as these staff members were not authorized under the Trade Marks Act, 1999 (“Act”) to perform quasi-judicial functions. This interpretation was further supported by a judgment Visa International Ltd vs. Visa International Service of Calcutta High Court dated August 2, 2024, which clarified that only administrative powers and not quasi-judicial powers could be delegated to contractual staff within the Trademark Registry.

In view of the same, the DPIIT directed the CGPDTM to terminate the MoU with QCI, which had been in place since December 28, 2022. The Directive also called for the formation of a special committee comprising 5 to 10 officials from the CGPDTM to re-validate all decisions taken by the CHOs appointed through QCI. Consequently, in light of the DPIIT's Directive, the CGPDTM issued the Order on August 13, 2024, outlining the specific steps to be taken in the re-validation process. The order emphasized that the re-validation would cover all trademark applications processed at various stages (as mentioned above)