India: Understanding the functioning of the Trade Marks Registry
The increased adoption of technology has resulted in better efficiency and accuracy of records at the Indian Trade Marks Registry. It takes under 12 months to register a trademark; it used to take around two to three years. This article analyses the improvements that have been made by the Trade Marks Registry and remaining challenges for brand owners.
Filing of trademark applications
With the introduction of electronic filing, not only has the number of applications being registered and examined substantially increased but also the errors in the particulars of applications have almost diminished. The system works seamlessly with an application number generated as soon as the application is submitted, and a record is created in the TM Registry portal. The registry has stopped accepting official fees by cash and cheque. This needs to be paid electronically or through banker's cheque. The brand owners should note that at the time of filing the application online, it is necessary to submit an Authorisation of Agent (POA). The application can be filed on intention to use or actual use of the mark in India. Where use is claimed in any application, it is mandatory to submit an affidavit affirming the use claimed. In the absence of the POA and user affidavit (where user is claimed), the application is not accepted by the system. The Trade Marks Registry has done away with extra space fee for characters above 500 and brand owners can choose to have expanded specification of goods/services for their mark without any restriction.
For convention applications where priority is claimed, the goods/services should generally match the goods covered by the convention application. Any additional goods (not part of the convention application) will result in an objection directing the agent/applicant to restrict the goods/services to those mentioned in the convention application.
The current examination module/system of the Trade Marks Registry is far better than the earlier system. Now examinations of applications are conducted in two phases: a) formalities checks; and b) substantive examination. The formalities check is carried out immediately after the filing of the application. The TM Registry checks if all the information/documents are in order to proceed to the examination. The registry now examines applications within two months of filing. This previously used to take three to four years.
The registry has a designated team of examiners (based centrally in Mumbai) who review and scrutinise the responses filed by the applicant/agent to the examination report on a regular basis. If the response/reply to the examination report is to the satisfaction of the registry, the application is accepted and published for opposition purposes. In the alternative, the application is set down for an oral hearing. Almost 60% of applications are accepted without the need for a hearing. The backlog of applications waiting for hearing (where the registrar maintains the objection after scrutinising the response) means it takes 18-24 months for a hearing to be fixed. The scrutinising of responses to the examination report, needs improvement as many a time cases are put up for hearing where the cited mark has lapsed, or been removed or withdrawn. Also, in some cases, marks standing in the erstwhile name of the applicant are cited whereas a request for change of name has already been filed and is pointed out in the response to the examination report.
Unfortunately, there is no consistency in decisions and handling by the Trade Marks Registry in show cause hearings. As a result, the outcome is quite unpredictable. For example, a few hearing officers raise a distinctiveness objection at the hearing stage while no such objection was raised at the time of examination. Thus, the application is once again sent back for a fresh examination. This not only delays the registration of a mark but also causes hardship to the agent/applicant. Further, many times the hearing officer insists on an applicant filing an affidavit to support use though there may not be need to do so when the applicant has a prior registration/accepted application for the same mark in the same class.
The registry has also started conducting hearings through video conferencing. However, challenges remain in terms of logistics and technical requirements. This needs to be addressed in terms of improving picture quality and voice quality to encourage agents to use this service. Furthermore, the restriction of 10 minutes on each hearing needs to be reviewed and is proving to be a stumbling block when it comes to agents using this service.
The marks are published in the Trade Marks Journal on a weekly basis. Previously, the registry would issue paper copies of the Trade Marks Journal. Afterwards, it started issuing the journal in CD form. Now for more than 5 years, journals have been printed online and uploaded on to the registry's website every Monday. The chances of errors in publication have been reduced to a large extent, which is primarily due to online filing and digitisation of records.
The registry has discontinued the issuing of paper copies of registration certificates. Instead, it is now issuing registration certificates electronically which are mailed to the registered email address of the proprietor or agent and simultaneously uploaded on the website.
The Trade Marks Registry has also simplified the renewal process through the online portal. Upon filing a request on the prescribed form and for a prescribed fee, if procedurally everything is in order, the mark is renewed within two or three days time and renewal of the mark is reflected in the registry's online portal. The registry will also issue renewal intimation and upload it at the same time on the website. No hard copy of the renewal intimation to the proprietor or his agent/counsel is issued.
The registry is now serving notice of oppositions and counter statements on the opponents/applicants electronically via email. Evidence in support of opposition/application can be filed electronically. The annex can be uploaded on the registry's portal. In cases where the opposition is not defended by the applicant, the registry is issuing abandonment orders electronically. The service of oppositions and counter statements is quite efficient (since 2018) through the TM office digital platform. However, there are certain old matters prior to 2018 which are pending service and need attention. Also, there continues to be a huge backlog of matters in the opposition department waiting for final hearing. The hearings are slow to be appointed and the number of matters waiting for hearing continues to pile up.
With the amendment of the Trade Marks Rules in 2017 which came into force with effect from March 6 2017, the provision for determination of well-known trademarks by the registrar was introduced. As of September 2019, 155 applications have been filed and the registrar has accepted eight applications while refusing 17. The refusal orders are not publicly available thus brand owners have little or no guidance to assess if they meet the criteria. The brand owners have shown keen interest in seeking well-known mark status for their brand, but the slow turnaround has been a dampener.
To sum up, there have been huge improvements in digital interface and the working of the Trade Marks Registry in the last five years. However, oppositions remain a problematic area. Further applications that are old and have been waiting appointment for hearing require attention. Hopefully, the office will take note of brand owners' concerns and address the issues.