Towards the end of March, the Indian Trade Marks Registry carried out an exercise to identify and remove from their record more than 190,000 pending trademark applications in which the applicant had not replied to the examination report or office action. For all such applications, an automated order abandoning the application was uploaded on the Trade Marks Registry database. In most of these cases, no notification was sent to the relevant applicant or agent, thus leaving it to trademark practitioners and owners to audit all of their records in order to identify whether any of their applications had been abandoned as a result of this action.
The unprecedented situation created by a large number of applications being abandoned—with no clarity on the process followed for identification of such applications, and with no opportunity of hearing prior to abandonment being granted—led to confusion and frustration among brand owners and practitioners. INTA CEO Etienne Sanz de Acedo, intervening on behalf of INTA’s members, sent a letter on March 31, 2016, to the Controller General of Patents, Designs and Trademarks (Controller General) calling for “urgent intervention in relation to this issue” and with a request to “reverse these abandonment orders with immediate effect.” On April 4, the Controller General issued a public notice stating the following:
Some complaints have been received claiming that some of the applications have been treated as abandoned even though the reply on behalf of the applicants have been submitted, but the same was not considered; some complaints have also been received to the effect that the examination reports containing office objections have not been received by the applicant or their authorised agent concerned; as such the same could not be replied and the applications were treated as abandoned.
With this notice, the Controller General directed that, in all such cases, the applicant or the applicant's authorized agent should send a representation with details, along with sufficient documentary evidence substantiating their case, to the Trade Marks Registry by April 30, 2016.
Not satisfied with the above, local practitioners, under the aegis of the Intellectual Property Attorneys Association (IPAA), filed a writ petition on April 5, 2016, in the Delhi High Court. In response to the writ, the Delhi High Court passed an order granting a stay against all the abandonment orders passed by the office of the Registrar of Trade Marks on or after March 20, 2016, and totaling more than 193,000 applications. The Controller General has also been directed not to pass any further orders of abandonment without giving due notice to the affected parties by registered post.
In response to the Controller General’s public notice, INTA has sent him a follow-up letter on April 8 reiterating the request to reverse the mass abandonment and citing valid reasons as to the insufficiency of the notice to resolve the situation.
In the latest development, the Controller General issued another public notice on April 11 notifying the public that abandonment orders passed by the Trade Marks Registry after March 20, 2016, are being kept in abeyance, and are outlining applicable recourses that parties can adopt in relation to their abandoned applications. As per the notice, “(F)urther action in this regard will be taken in accordance with the law and the directions/orders of the Hon’ble court in ongoing writ petitions.” The public notice is available here
Overall, the intent of the Trade Marks Registry in carrying out this exercise was good, but it seems to have suffered from poor execution.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2016 International Trademark Association