Empire strikes again - Indian Trademark Office issues notice regarding non filing of reply to examination report & counter statement to oppositions

If one may recall, on April 1, 2016, the Indian Trademark Office abandoned 1,66,771 Trademark Applications on the ground that the reply to the examination report had not been filed within 30 days.

As you would have rightly guessed, the Delhi High Court granted a stay on the orders of the TMO. Subsequently, the trademark office issued another public notice providing an opportunity for the applicants to write to the trademark office stating that the application has been erroneously treated as abandoned.

Fast forward to 2023, the Indian Trademark Office (TMO) issued a public notice via Trade Marks Journal No. 2090 dated February 6, 2023, whereby the general public & IP practitioners were informed that

1. Applications for which a response to the examination report has not been filed within the prescribed time &

2. Applications that have received oppositions and for which the TMO has properly served the notice of opposition to the applicant but where no counter-statement has been filed with the TMO

shall be treated as abandoned in the absence of a response to the examination report or a counter statement in respect of the opposition is filed with the TMO, within 30 days of this public notice.

Thankfully, the Trademark Office has been careful this time around and has merely issued a notice with a time period to respond and not abandon the applications.

This is a positive step towards cleaning the trademark register. However, it would have been helpful if the names of the counsels were included in the list of thousands of applications and oppositions, making the work of IP lawyers easier and avoiding the need to cross-check every application number or learn to do a vlookup with the application number. 🙂

List of applications where the response to an examination report has not been filed

List of applications/oppositions where a counter statement has not been filed