India’s Trade Marks Office Progresses on Opposition Pendency

Published: April 20, 2022

Tanmay Joshi Remfry & Sagar Gurgaon, India Trademark Office Practices Committee—India Subcommittee

Debjyoti Sarkar

Debjyoti Sarkar S. Majumdar & Co. Kolkata, India Trademark Office Practices Committee—India Subcommittee

INTA’s Trademark Office Practices Committee—India Subcommittee on January 13, 2022, submitted comments to India’s Office of the Controller General with suggestions for how the Trade Mark Registry (TMR) could address opposition pendency—and progress is now underway.

The TMR in recent years has taken steps towards modernization and improving efficiency, including the digitization of records, providing access to the e-register and e-filings, implementing an e-service for notices and orders, and hosting hearings via video conference amid the pandemic. Together, these initiatives have transformed the TMR and led to reduced backlogs in almost all departments. However, pendency has still persisted in oppositions. As of February 28, 2022, there were around 182,004 pending oppositions. The last drive for clearing the backlog was initiated in 2015 when officials addressed withdrawn or abandoned matters.

INTA’s comments provide a few vital suggestions for how to address the backlog:

  • Create a permanent link in the e-filing module where users can enter particulars of opposition/rectification proceedings which are withdrawn/not defended and where the adversary has consented to such withdrawal/abandonment with no order as to costs.
  • Automatically dispose of matters where consent from the other party is available based on requests made using the proposed submission link.
  • Conduct periodic disposal drives for withdrawn/abandoned opposition/rectification matters where the adversary provides express consent or where the parties have agreed to a settlement by means of an agreement or through a court order (or court orders) or by way of an alternate dispute resolution mechanism.
  • Take up disposal drives in chronological order and have them heard by officers across any branch of the TMR.

It appears INTA’s comments have been considered favorably. The Controller General’s Office issued a public notice on February 7, 2022, stating that, while certain opposition and rectification proceedings have been settled amicably by the parties involved, no final orders could be issued due to lack of information in the TMR. The notice also explained that all settled cases along with supporting documents could be brought to the notice of the concerned officer of the respective branches via email by March 20, 2022. The TMR would pass suitable orders in the matters as per law.

This initiative is encouraging as it will provide immense relief to stakeholders and reduces the opposition backlog. This step also reflects that INTA’s efforts have yielded positive results. With more such initiatives underway, a continued reduction in the backlog in opposition proceedings can be expected.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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