We are pleased to bring to you our next guest post by Abhilasha Nautiyal. Abhilasha is a lawyer with 10 years’ experience. She is an attorney at Ira Law and has a master’s in law from Harvard Law School.

The Supreme Court’s order extending limitation due to the COVID-19 pandemic passed last month in suo moto proceedings has been reported widely. This order, though the need of the hour, leaves room for ambiguity when one seeks to apply it. Another concern is, if applicable, whether the Indian IP office’s order regarding extension of limitation is aligned with this order.

What does the Supreme Court’s order do?

This order recognizes that the litigants will face difficulties in filing their petitions/ applications/ suits/ appeals/ all other proceedings owing to the pandemic. It accordingly ‘extends’ the period of limitation in such cases from March 15, 2020 till further orders of the court. This order has been made applicable to all proceedings, whether the deadline was prescribed under the general law of limitation or under some special law (this should include deadlines prescribed by IP statutes). This order binds all courts, tribunals, and authorities (which should include IP offices) in India.

Therefore, this extension is applicable to matters where the period of limitation expires on any date after March 15, 2020 till a future date that the court will announce.

Does the Supreme Court’s order bind IP offices?

The Supreme Court’s order is binding on all courts, tribunals, and authorities in India. The term ‘authorities’ should include IP offices. Interestingly, the Trade Marks Act, 1999 defines the term ‘tribunal’ as the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending.

Furthermore, this order extends deadlines prescribed under the general law of limitation and those prescribed under special law, such as IP statutes.

Though it appears that the Indian Commercial and Arbitration Bar Association has made a representation to the Hon’ble Chief Justice of India with an understanding that the Supreme Court’s order does not apply to deadlines prescribed by special law, this interpretation may be contrary to the language of the order itself. Having said that, this representation may lead to some clarification from the Supreme Court.

It also appears, as explained below, that the Controller General of Patents, Designs, and Trade Marks (“CGPDTM”) has taken a position which appears to be contrary to the direction in the Supreme Court’s order. 

What’s the ambiguity in the Supreme Court’s order?

The ambiguity arises in the meaning that will be ascribed to the word ‘extend’.

Let’s call the period from March 15, 2020 till the future date set by the Supreme Court the “extension period”.

Does the SC’s extension amount to ‘stopping of the clock’ during this period such that the extension period will be added to the limitation period? Or is this akin to extension for sufficient cause where the extension period is not added to the limitation period but operates as a grace period till the future date set by the Supreme Court?

Both meanings find play in the Limitation Act, 1963. Under Section 5 of the Limitation Act, a court may extend the period of limitation if sufficient cause is shown. This is an ex post condonation of delay. One way of looking at the Supreme Court’s order is that it has determined the sufficiency of cause for delay ex-ante.

On the other hand, under special circumstances captured in the Limitation Act (for e.g. on account of a legal disability in Sections 6 and 7), the limitation period may be extended by stopping the clock of limitation.

Neither of the two situations above directly fit the present circumstances in which the order of the Supreme Court has been passed. However, they demonstrate the different meanings ascribed to the word ‘extension’ in the Limitation Act.

To illustrate, if limitation to file a pleading expired on April 1, 2020, (i.e. 15 days from the start of the extension period) then would the pleading have to be filed immediately on a date notified by the Supreme Court or would the limitation expire 15 days from such date.

It is likely that the Supreme Court will have the occasion to clarify the contours of this extension in the pending proceedings as the lockdown nears an end.

 What do the notices issued by the IP Office say?

The CGPDTM has issued several notices on the issue of limitation. Two notices are of interest here, the first being Public Notice (Corrigendum) dated 25th March 2020 (“25th March Notice”) and the second being notice dated 15th April, 2020 (“15th April Notice”).

The 25th March Notice stated that if a filing deadline is due during the period mentioned in the notice, the deadline shall now be the date of next day on which the offices re-open as per Section 10 of the General Clauses Act, 1897. The 15th April Notice extended this period to May 3, 2020. This would mean that the new deadline is now May 4, 2020 for all deadlines which fell between March 25, 2020 and May 3, 2020.

Interestingly, though the Supreme Court’s order is binding on all Courts/Tribunals and authorities, the CGPDTM’s notices refer to Section 10 of the General Clauses Act, 1897 and not the Supreme Court’s order which was passed two days before the 25th March Notice. Further, the prescription of an end date in the CGPDTM’s notices goes beyond the Supreme Court’s order which has not prescribed an end date yet. Will it be tenable for CGPDTM to prescribe a different time period for limitation than what the Supreme Court does?

The path adopted by the CGPDTM may also lead to logistical mayhem and the electronic and physical filing systems of IP offices may get overwhelmed with all deadlines during this period expiring on the same date. Thought the e-filing systems of the IP offices are functional even during the lockdown, it is likely that several attorneys and applicants may not be able to avail these services due to the lockdown.

Quite apart from legal tenability, if the CGPDTM offices reopen before the nationwide lockdown is lifted but certain areas still remain restricted, it may cause hardship to those applicants and attorneys that would still be under strict lockdown restrictions.

In addition to the time-period issue, the CGPDTM has applied Section 10 of the General Clauses Act, i.e. if limitation expires during a court holiday, it stands extended to a day following the reopening of the court. The Supreme Court has not gone down this route. This element of the CGPDTM’s notices may also be inconsistent with the Supreme Court’s order.

Lastly, the CGPDTM notices operate with effect from March 25, 2020 while the Supreme Court’s extension period is with effect from March 15, 2020. Though the CGPDTM did pass some notices before March 25th, 2020 directing parties to seek condonation of delay where applicable due to the pandemic, the Supreme Court’s extension does not require a specific request for condonation of delay and simply extends the limitation.

In the absence of any change to these notices, a safe approach at this time is to be prepared with documentation that needs to be filed with IP offices deferring only formalities such as execution, notarization etc. till such time the lockdown is lifted.