The Registry had issued abandonment orders affecting 193,908 applications, in cases where it said there had been no response to reports containing office objections within 30 days. Over 52,000 trade marks were disposed of on March 31 alone.
But angry attorneys complained that they had responded to the reports, or that the reports had never been received.
The Delhi Intellectual Property Attorneys Association (IPAA) rapidly drafted a writ petition, and on April 5 the High Court temporarily stayed all the abandonment orders passed on or after March 20 2016, pending a hearing on May 12.
According to the petition, the Trade Marks Registry “has treated substantial number of pending trade mark applications as ‘abandoned’ and without any notice to any affected party”. The plea added that it is clear that such orders were passed in haste, arbitrarily and without application of mind.
The storm comes amid growing concerns about trade mark examination in India, following the country’s recent accession to the Madrid Protocol and proposals to increase filing fees.
Problems fall into Reports’ distribution
On April 4, one day before the High Court’s order, the Controller General of Patents, Designs and Trademarks, which supervises the Trade Mark Registry, said that applicants have until April 30 to provide evidence to have abandoned cases reinstated. Agents can send the necessary information by e-filing or email.
However, that is not good enough, according to some attorneys. “It’s unacceptable,” says Chander M Lall, founding partner of Singh & Singh Lall & Sethi and President of IPAA. “If the abandonment is wrong in the first place, then it is Trade Mark Office’s obligation to put it right. It shouldn’t be the applicants who bear the responsibility.”
In his blog post, Navarre Roy of Selvam & Selvam blamed the problem on the office not dispatching examination reports, or not recording replies. Lall agreed: “I am informed that many examination reports were lying at the Mumbai Trade Mark Registry for dispatch but were never dispatched, perhaps owing to a shortage of staff and funds.”
Raja Selvam, managing attorney of Selvam & Selvam, provided more details: “The trade mark office has been very disorganised especially in respect of examination of the applications. On several occasions the examination report is merely uploaded without any notice to the applicants, and the physical copy of the examination reports are never dispatched or only served to the applicants several months after being uploaded online.”
“There is no established process in place”, he added, “There are severe gaps between the time when the application is examined, uploaded, printed, packed for dispatch, actually dispatched and received by applicants.”
Who’s to blame?
Selvam said that most of the abandoned applications are cases where the response to the examination report was filed on paper rather than through the e-system, and blamed inexperienced or untrained staff: “On many occasions they treat the responses to the examination report as general correspondence and categorise them accordingly.”
Sources indicated that Trade Mark Registry runs a computer program to check if a response is filed within the deadline of 30 days. If a response is not found, then the program will automatically issue an abandonment order.
The Office had been preparing the procedure for dispatching reports since early January 2016. “From January, we started to observe that the Trade Mark Office has been printing the dispatch number, date and other details on the dispatched envelope and also updating their computer records with this information almost instantly,” said Selvam.
Since India joined the Madrid Protocol in 2013, the Registry been under pressure to clear the trade mark backlog. “Under the Madrid Protocol, the Office has to clear the applications within 18 months. This could be a reason to explain the substantial abandonment orders in recent months,” said Lall.
Two years ago, the Office increased the filing fees, and this was expected to speed up application and examination proceedings. However, practitioners are disappointed with the result. “The Registry just keeps making more money out of it, but the situation does not seem to have improved,” according to Selvam.
One of the reasons for the backlog problem is lack of staff. An article in 2013 reported that only 21 people in the Mumbai office were taking care of an average of 180,000 to 190,000 filings per year, and “to make matters worse, out of the 21 people examining applications, only 4 are permanent staff. The remaining 17 are hired on and off on a contractual basis”. These figures suggest that every examiner has to work non-stop for a year, handling three applications an hour, to deal with demand.
The Registry recently called for the appointment of new examiners, and in March the government proposed doubling trade mark fees.
Before and after May 12
Until the temporary order lapses on May 12, Chander Lall suggests applicants review all pending trade mark applications and oppositions, and reply to them straightaway.
What happens after that will depend on the Court’s decision. One possibility is that the Office could be exempted from responsibility if it can prove the reports were dispatched but a response was not received.
“With the Delhi High Court granting a stay on the abandonment orders, we expect the Trade Mark Registry to release a complete list of abandoned trade marks with the corresponding speed-post dispatch numbers. The applicants would then have to check with the postal department for non-delivery or delivery of the examination reports,” said Selvam.
He added: “I know this is a little far-fetched to expect from Trade Mark Registry, but considering the pressure the Indian Government has been receiving from several international IP organisations, there might be a slight possibility.”
The Office agreed to speak to Managing IP regarding the abandonment issues via emails, but it hasn’t responded to any questions yet.
