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11 May 2016
It may have seemed like an April Fool’s joke to observers of the Indian legal sector, but lawyers say that the Indian Trade Mark Registry’s abandonment of nearly 200,000 trademark applications on March 31 was real.
“Trademark lawyers in India woke up on March 31, 2016, to messages from others in the fraternity ringing alarm bells urging people to check their trademark portfolios,” Navarre Roy, a senior associate at Selvam & Selvam in Chennai, wrote on the firm’s blog. “News on the vine was that the Indian Trademark Office had ordered the abandonment of applications – a lot of applications.”
Lawyers across the country rushed to apprise their clients – and the media – of the problem. “This was done in an attempt to clear the backlog of cases,” wrote Manisha Singh Nair, a founding partner of LexOrbis in New Delhi, in an alert. “Unfortunately, a lot of applications have been abandoned incorrectly.”
Safir Anand, senior partner at Anand and Anand in Noida, had his firm send this missive to clients: “The Trade Mark Office in its zest to clear backlog of pending trademark applications and to ensure a compliance with Madrid requirements of completing the registration process within 18 months from filing has goofed up.”
Zoya Nafis, an associate at LexOrbis, says that the Trade Marks Registry disposed of trademark applications where the examination reports were sent to the applicants and no response was filed within the statutory 30 day deadline. The opposition matters were disposed off where the parties had not filed counter statements despite the service of official notice to them by the Registry.
“This action of the Registry, however, turned out to be the perfect example of good intention and bad execution, as many applications and oppositions were abandoned erroneously,” Nafis says. “A number of applications were abandoned even though responses to the examination reports were duly filed or where the opponent/applicant had complied with the requirements of the opposition proceedings.”
Remedial action has been taken since the abandonment, lawyers say.
On April 4, the Registry issued a public notice on its website providing some relief to the aggrieved parties. “The notification indicates that in the interests of justice, the Registry has decided to provide an opportunity to the applicants,” Nafis says. “Aggrieved applicants or their agents, whose applications have been erroneously treated as abandoned are required to send a representation with all details substantiating their case on or before April 30, 2016. This public notice clearly states that this deadline is not extendable.”
Anand told clients that his firm was collating the information of all abandoned applications in order to better handle the abandonment matter. “The process is taking time since there is no service of orders and the process of abandonment is ongoing,” he says.
He also says that the firm met with the Registrar of Trademarks in Mumbai and was given a verbal assurance that wherever there has been a wrongful abandonment, the application would be reinstated.
“Based upon past experience we do not think the situation will become alarming to the extent of causing a damage that will not be redressed,” Anand says. “There is no way an application will continue to be shown as abandoned where there is no physical service of examinations or where replies have been filed.”
Roy explained in his blog post that the way the system functions is that the trademark office uploads examination reports which have been issued onto their own website. “As per the law, a trademark applicant has 30 days to respond to the objection from the date of receipt of the report,” Roy writes, noting that the key word here is “receipt” and not “on the date it was uploaded.”
He says that the problem was that “the Registry never actually dispatched them to the applicants. So what in effect happened was that the applications were processed in sequence and some applications which have examination reports uploaded but weren’t responded to, were fixed for hearing along with the ones that were responded to.”
The abandonment of the applications represented a 3,878% increase over the previous month, February, when 4,192 applications were abandoned.
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