For lawyers, nothing is worse than getting the basics wrong.
One would hope, therefore, that a quasi-judicial body like India's intellectual property office (IPO) would follow the letter of the law.
But a few questionable moves by the IPO in the last couple of months, which have left hundreds of stakeholders uncertain about their trademark rights, have cast doubt about its legal competency.
In February, the IPO suddenly threatened to abandon nearly 190,000 trademark applications via two notices. The notices listed two types of applications. First, cases where applicants failed to submit replies to examination reports, and second, where brand owners had not responded to oppositions.
Among the marks slated to be abandoned were those owned by several famous brands such as Colgate-Palmolive, Target, Lego, and Adidas.
The authority gave brand owners 30 days to prove why their marks should be retained.
In cases where those marks were subject to oppositions, the office operated outside of its powers by imposing a 30-day deadline.
In standard opposition cases, applicants are ordinarily allowed two months to submit responses.
Even though the 30-day period was quite short, and stakeholders told Managing IP that numerous trademarks were erroneously included in the two lists, practitioners and their clients ran from pillar to post to collate evidence and submit responses in time.
In a bizarre turn of events, some lawyers now claim that the IPO ignored their responses and abandoned most of the applications anyway. Managing IP has approached the IPO for comment.
One practitioner told me yesterday that they filed timely responses but that the IPO abandoned more than 80% of their applications.
What’s more, practitioners say the office did not report its decision to abandon the applications to the respective applicants or their agents nor provided any reasoning for its move.
Practitioners told me they found out about the status of their marks when conducting a routine check on the IPO’s online portal.
It’s surely not too much to ask that the country’s IP office at least keeps applicants and IP owners in the loop about what is happening to their rights.
On Monday, March 27, the IPO published two additional notices asking applicants to submit their grievances on paper. But the office did not clarify when, or if, aggrieved brands can expect their rights to be restored.
The IPO may have had the right intention in attempting to clear up an overcrowded register, but its actions must be balanced by ensuring aggrieved parties can also access their rights and communicate with the office.
Lessons forgotten
The office’s responsibility to allow stakeholders to be heard before taking any measure that could remove their IP rights should not be limited to merely publishing notices.
Firstly, the IPO should have updated each affected stakeholder individually about its plans to abandon their marks.
It is statutorily mandated to do this under Rule 36 of the Trade Marks Rules, 2017, which requires the registrar to communicate its decision to an applicant in writing.
When this was raised, the IPO sent a few notices to some applicants and their agents, but not all.
Secondly, when stakeholders took the pain of responding within the 30-day timeline, the IPO’s decision to still abandon their marks without informing them or providing any reasoning was flawed at best.
It seems the IPO has not learned from past experience either.
The office pressed ahead with its plans even though its last abandonment drive in 2016 also faced criticism from stakeholders.
The 2016 plans were later stayed by the Delhi High Court, and applicants were allowed to ask the IPO to reinstate their marks.
This time, stakeholders thought the situation might not be as bad because the authority at least had the good sense to notify stakeholders first.
But the IPO’s decision to abandon marks even after applicants filed their representations means stakeholders are now back to square one.
One would have hoped that the IPO would have learned its lessons from the last five years.
But it's increasingly becoming clear that the reality is far different.
The IPO needs to understand that its actions not only disrupt rights owners’ plans but could also paint a negative picture of a country that is one of the top trademark filing destinations.
Another court order to stay the move, which some practitioners say is quite likely, would cause the office to lose credibility and impose an increased burden on IPO officials to sort through the mess.
The IPO must take responsibility and assess what it can do to undo the damage.
For starters, let’s hope it will get the basics right.
