The procedure and timeline to obtain registration for a trademark have evolved over time. After the amendment of 2017, the entire timeline has become quite stricter and quicker. We have all seen a lot of positive changes happening in the IP regime, however, there are still areas where we lag and would do extremely well to have clearer rules and laws, especially with respect to trademark applications under the Madrid protocol.
Over the past years, in our experience we have seen the pool of chaos and the incertitude, accompanying International applications designating India. While International trademark applications are treated in the same manner as ordinary applications in terms of scrutiny, requests for amendments create hassles for the Applicant simply because of a lack of a modus operandi to file specific requests. Applicants and their agents have been vexed by the catch-22 situations very generously handed out by the Indian Trade Marks Registry in situations where amendments to applications are requested.
The Indian Trademarks remains silent as to where the Applicant should file the amendments which are requested by the Indian Trademark office during the examination of the Application. It is not uncommon for Applicants to receive instructions from the Indian Trademark office to correct the technical errors to accept the applications. However, when the Applicant does want to file those amendments, being country-specific requirements prompted by the Indian trademark office, they either get unprocessed or declined by the Indian trademark office. This leaves the Applicant with the only option to file the request with WIPO, which is neither time nor cost-effective to the Applicant. It takes a longer time for the WIPO to process the request and further inform the Indian Trademark office; not to forget the time taken by the Indian trademark office to process the same information and update the records stalling the registration process meanwhile. One infamous example of such an amendment is the exclusion of the ® symbol from the representation of the trademark. My colleague has explained this catch-22 in detail in the article here.
For the sake of clarity and spreading knowledge, we have compiled a simple table to understand which amendments can be filed with the TMO and which requests require to be filed with WIPO.
| Amendment type | Request through WIPO | Request to the TMO, India |
| Deletion/addition of specifications | √ | |
| Amendment of the classification | √ | |
| Deletion of the R symbol from the Trademark | Remains conflicted | Remains conflicted |
| Deletion of Priority claim | √ | |
| Division of the Application | Cannot be done | Cannot be done |
| Change of name of the Applicant | √ | |
| Change of Applicant’s address | √ | |
| Change of Ownership | √ |
Would a system to file such requests through the online filing portal not be an effective solution? For the sake of clarity, cost-effectiveness and efficiency, a system where amendments to International applications can be made locally through the online filing portal already available would be a viable option, especially for cases where the Indian trademark office has requested the amendment during the examination, which is very India centric and does not concern other jurisdictions. This would not only make the lives of the Applicants and their local agents easier, it would also speed up the process of filing and processing requests. A much-needed change!
