Note: At the outset, please note that this is not an April Fool’s joke! This is very real, though the timing of it is unfortunate.
The end of the financial year in India, generally has companies on edge. Accounts teams rushing to make sure all amounts are tallied, outstanding bills are sought after with a greater vengeance and yearly targets are reviewed. It appears that this rush, affects the Indian Trademark Office [TMO] as well. Trademark lawyers in India woke up on Thursday March 31, 2016 to messages from others in the fraternity ringing alarm bells urging people to check their trademark portfolios. News on the vine was that the Indian Trademark Office had ordered the abandonment of applications – a lot of applications.
As news filtered in, a picture was slowly beginning to form. In the general, the trademark office uploads examination reports which have been issued onto their own website. As per the law, a trademark applicant has 30 days to respond to the objection from the date of receipt of the report [key word here being receipt and not on the date it was uploaded]. The problem was that the Registry never actually dispatched them to the applicants. So what in effect happened, was that the applications were processed in sequence and some applications which have examination reports uploaded but weren’t responded to, were fixed for hearing along with the ones that were responded to.
Mid-January 2016 – between 13th and the 16th, saw the Indian Trademark Office dispatch a truckload of examination reports to the applicants – ones that were examined years ago to some which were examined a few months back. Life carried on as usual, until March 30, 2016, when the Indian Trademark Office abandoned all the applications for which they never got a response. It appears that they did the same for opposition matters where either side hadn’t responded in a while.
Over 160000 applications in a month:
To understand the scale of this action, we need to look at the history of the way things were processed based on the information available on the Indian Trademark Office’s website:
Sounds Fair:
Legally, it seems fair, as the applicants were notified of the examination reports and they failed to comply with a requirement.
However, it doesn’t always seem that way. I’ve been hearing through the day, of cases, where the actual post with the reports were never received; cases where replies to the examination reports have been filed and the marks have still been abandoned.
Personally, we noticed a week back, that the postman, had delivered a large bunch of letters from the TMO to our office instead of a law firm’s down the road. We handed it over to them, but the postman assumed that since we usually get a lot of post from the TMO it must have been for us.
We are uncertain of how many such notices were either not delivered, delivered incorrectly or worst still generated but not dispatched to begin with.
Wait and Watch
In addition to the outrage that’s been pouring in, law firms around the country are preparing for battle and are considering various options from discussion with the Controller, involving the International Trademark Association [INTA], to filing a writ petition against the order. We will have to wait and see what happens.
In the mean time I guess, all trademark applicants need to conduct an audit of their files, registered pending or opposed, just to verify that they are all alive.
When things happen with the TMO, they tend to be large scale – it lost 44000 files a short while back, and with the now infamous order of March 30, 2016 executed across the branches of the TMO [much like the Senator Palpatine’s order 66 executing the Jedi simultaneously across the empire – Yes I am a Star Wars fan] we need to see how the Controller handles the backlash!
Update: As on April 05, 2016: Delhi High Court grants stay on all #trademark abandonment orders passed by the Indian Trademark Office after March 20, 2016.
This article has been authored by Navarre Roy, an IP Law practitioner.
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