SOP-Pending Trade Mark Mediation Process. DSLSA Pilot Project for amicable settlement of opposition/ Rectification matters at Trade Mark Registry, Delhi

SOP-Pending Trade Mark Mediation Process. DSLSA Pilot Project for amicable settlement of opposition/ Rectification matters at Trade Mark Registry, Delhi 

STANDARD OPERATING PROTOCOL
IN RESPECT OF MEDIATION PROCESS IN CASES PENDING
BEFORE THE REGISTRAR OF THE TRADE MARKS, DELHI.

STATEMENT OF OBJECTS & REASONS
WHEREAS Delhi State Legal Services Authority (DSLSA) is a Statutory Body constituted under the Legal Services Authorities Act, 1987 and falls under the domain of High Court of Delhi, New Delhi and its Patron-in-Chief is Hon’ble the Chief Justice, High Court of Delhi and the next senior most Judge presently Hon’ble Mr. Justice Badar Durrez Ahmed is the Executive Chairman. The Authority has a mandate to perform various legal services viz. organizing Lok Adalats, Grant of free legal aid and services to poor. under privileged and deprived classes and most importantly spreading legal literacy.

AND WHEREAS the DSLSA approached the office of Controller General of Patents, Designs & Trade Marks Registry, Government of India to undertake a Pilot Project for amicable settlement of Opposition/ Rectification matters at the Trade Mark Registry, Delhi through its trained Advocates/ Mediators;

AND WHEREAS vide Office Order No. 5/2016 Reference No.CG/ Office Order/TMR/2Ol51220 dated 20.01.16 of Sh. Om Prakash Gupta, Controller General of Patents & Designs & Trade Marks, accepted the proposal of the DSLSA to promote and create Alternative Dispute Resolution Mechanism in respect of pending Opposition/ Rectification matters at the office of TMR, Delhi on a Pilot basis and passed the following directions:

1. HO, TMR Delhi is to forward 500 cases to DSLSA, at earliest.
2. Opinion to be sought from DSLSA regarding fitness of cases for mediation from above list.
3. After the opinion of the DSLSA, consent of the parties involved to be sought for the mediation process.
4. After the receipt of consent from the parties for mediation, the matter to be sent to DSLSA formally.
5. DSLSA to facilitate mediation process between the parties in the specified time line and forward the consent terms/agreement, if any arrived at between the parties in the matter along with the concerned record to TMR, Delhi;
6. After the receipt of the consent agreement, the Hearing Officer of the TOP Section of TMR, Delhi to confirm and take on record the consent terms/ agreement as per the TM Act and Rules and pass the order accordingly.
7. On successful cornpletion of first 500 cases, process to be continued in future for disposal of remaining cases. AND WHEREAS in furtherance of office order 5 of 2015 and further proposal received from DSLSA, it has been further directed as under:
8. Dr. B. C. Rathore, Deputy Registrar of Trade Marks & GI will be the incharge of this process/project.
9. Section In-Charge of the Tribunal Section will be the Co-ordinator of this project
10. H. O. TMR, Delhi is to sort all such cases in which Opposition and counter statement is filed and the same has not been withdrawn till date.
11. H. O. TMR, Delhi shall publish a Public Notice (with enclosed list of such cases) informing public that if the parties related to enclosed list are willing for mediation, may file the annexed Consent Form and submit to the Registry on or before 15.03.2016.
12. All the matters in which consent is received from the parties shall be forwarded to DSLSA and DSLSA will facilitate Mediation in all such cases.
13. H. O. TMR will provide space, room and required infrastructure in consultation with H. O. Patent Office, Delhi for the purpose.
14. DSLSA to facilitate the Mediation process between the parties in specified time line and forward the consent terms/agreement, if any arrived at between the parties in the matter alongwith the concerned record to TMR. Delhi.
15. After receipt of the consent agreement, the Hearing Officer of the TOP Section of TMR, Delhi to confirm and take on record the consent/terms/agreement as per Trade Marks Act, 1999 and the rules made thereunder and pass the order accordingly

AND WHEREAS vide subsequent order, the office of the Controller General of Patents, Designs &. Trade Marks decided to extend this opportunity of mediation for all the Opponents/Applicants, whose Opposition/Rectification matters are pending before the Trade Marks Registry Delhi and wherein the final hearing has not been concluded may also be invited for amicable settlement of their disputes through the process of Mediation and accordingly a Public Notice Ref. No. CG/TMR Del/ DSLSA dated 31.03.2016 has been issued on the subject inviting the interested parties to submit their consent as per ‘Consent Form’ which is Annexure-‘A’ with Sh. Hemant Khosla, Incharge, Tribunal Section, TMR, Delhi via mail at hemanttk.tmr@nic.in within 30 days of Notice.

AND WHEREAS the matters are now being referred to DSLSA for further action with particulars of the parties, who are giving consent for reference of their dispute for mediation;

AND WHEREAS these SOPs are being framed in order to institutionalized and conduct the Mediation in an orderly, transparent and resulted oriented manner;

1. STAGE OF REFERENCE

In Opposition/Rectification matter pending in the Trade Marks Registry, Delhi at any stage, wherein the final hearing is not concluded and either party has expressly desired in writing by submitting prescribed consent form for mediation may be referred for mediation to DSLSA by the Registrar/competent authority nominated/authorised by the Registrar in this behalf.

2. APPLICATION / CONSENT FOR REFERENCE

(i) Reference to Mediation can be made by the Registrar/competent authority nominated/authorised by the Registrar in this behalf wherein either of the party to a pending matter voluntarily submits consent on prescribed form for reference of its disputes to Mediation;

(ii) Both the parties may appear themselves in person or through their authorized representative for reference of their matter/dispute to Mediation before the Registrar/competent authority nominated/authorised by the Registrar in this behalf;

(iii) One or the other party may not only submit its own consent but it may also submit before the Registrar/competent authority nominated/authorised by the Registrar in this behalf, the Consent Form duly executed by the opposite party or its authorised representative or attorney for reference of matter/dispute to mediation;

(iv) The Registrar of the Trade Marks or competent authority nominated/authorised by the Registrar in this behalf may also refer the any Opposition/Rectification matter pending before him to Mediation if he is satisfied that there is existing element of settlement in such pending matter and he may call upon the parties to submit themselves to the jurisdiction of the Mediator for amicable settlement of their disputes.

3. PROCEDURE ON REFERENCE

(i) When a case is received from the office of Registrar Trade Marks for Mediation, the office of DSLSA shall issue a notice to both/all the parties of the given case to appear before designated/nominated authority by DSLSA on a certain date and place either personally or through the authorized representative of the parties;

(ii) Once parties and/or their authorized representative put in their appearance and agrees for the Mediation, the matter shall be assigned to one of the Mediator;

(iii) The DSLSA while issuing notice to any of the parties or the parties to a pending case may also call upon them to submit their consent for voluntarily participating in the Mediation process on a dedicated email address as also by FAX or otherwise by a consent order sent through Special Messenger to this Office;

(iv) The parties/authorised agents/representatives appearing before the designated/nominated authority for mediation shall be required to deposite the Consent Form in original before such authority, who shall make such Consent Form an integral part of mediation record before proceeding further.

(v) The Mediator will take up the matter for mediation as per the norms and module framed by Mediation & Conciliation Project Committee, Supreme Court of India and shall conduct themselves in accordance with the Mediation& Conciliation Rules framed by the High Court of Delhi in exercise of power under Part 10 of the CPC. 1908 (5) 1908 and Clause (d) of sub Section 2 of Section 89 of the Code, as far as applicable. The Mediator shall also take into accord the statutory provisions stipulated under the Trade Marks Act. 1999 and Rules made thereunder while adjudicating upon the settlement;

(vi) The Mediation shall be conducted at the Central Office, DSLSA on three earmarked working days in a week as per the convenience of the Advocate/ Mediator as also the varying party;

(vii) The Mediation may also be held at such other places that may be made available by the office of Registrar of Trade Marks or Delhi Mediation Centre or the Delhi Dispute Resolution Society.

4. PANEL OF MEDIATORS /CONCILIATORS

(i) The DSLSA in order to carry out the Pilot Project for Resolution of disputes in an amicable manner has already trained 17 advocates as per the approval of Mediation & Conciliation Project Committee conveyed through its Registrar vide Ref. No. NIL dated 06.05.2015 and as per the training module that is framed by the Mediation Conciliation Project Committee, Supreme Court of India;

(ii) That the details of Advocates/Mediators who have been empanelled with the DSLSA is Annexure -‘B’ shall initially be assigned Mediation Work;

(iii) The Advocates/ Mediators shall be paid honorarium as per the Fee Schedule framed by the Delhi High Court Legal Services Cornmittee vis. Rs. 1500/- per visit plus Rs. 20001- per settle case. However, while Visitalion Charges shall be payable right from the day one, the payment’ of Rs.2,000/- on successful mediation shall become due/payable as and when the Advocates/Mediators have seven, successful mediation to their

5. ESTABLISHMENT

(i) The Superintendent, Lok Adalat Wing, DSLSA or any other official of DSLSA shall be the Nodal Officer for the cases referred by the office of Registrar of Trade Marks in respect of day to day Administration, records, payment of Fees and other issues subject to the approval of Member Secretary and I or OSD/Special Secretary, DSLSA;

(ii) The Lok Adalat Wing will establish a separate Section for these cases of Mediation with a dedicated e-mail address and telephone number. The said Section of Lok Adalat Wing of DSLSA under the supervision of Superintendent, being Nodal Officer shall be responsible for receipt of record, issuance of process, preparation of schedule of mediators and Administrative issues subject to approval of Member or OSD/Special Secretary, DSLSA;

(iii) The final result of the Mediation in all cases shall be to the office of Registrar of Trade Marks.

6. MODE OF COMMUNICATION/PROCESS

Keeping into the nature of cases, location of the parties and their addresses and the involvement of the stakeholders, all the process/ communication relating to Mediation may be received/ conveyed by DSLSA/office of the Registrar of Trade Marks and the parties or their authorized representatives-either through email or through Post or other modes of service.

7. MAINTENANCE OF RECORDS

Record of all cases of Mediation in respect of reference, assignment to the mediators final result, remuneration etc. shall be maintained by the Lok Adalat Wing on regular basis.

Prepared and drafted by:
Delhi State Legal Services Authority
Patiala House Courts, New Delhi

Superintendent

Special Secretary

Member Secretary

Dated : 03/05/2016

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