The Controller General of Patents, Designs & Trade Marks (CGPDTM) has taken recent initiatives to clear backlogs in trademark prosecution and opposition matters, and a public notice was issued on February 6, 2023 encapsulating a gargantuan list of trademark application numbers that are said to pertain those applications that could be “deemed to be abandoned” as per the provisions of law. The said list was published along with Trademark Journal No: 2090, and the Office has been simultaneously sending notices to the agents through email as a way of providing the applicant(s) a final opportunity to defend their marks.

Essence of the public notice:

The significance of the public notice dated February 6, 2023, issued by the CGPDTM is categorized under two heads:

  1. For abandonment of application due to non-filing of response to the examination report: This notice contains a list of trademark applications that were examined by the Trade Marks Office but the applicant did not file a response within the prescribed deadline. The list contains the following details – application number, application date, examination date, proprietor name, TMO branch and filing mode. The CGPDTM, as a way of giving the applicants a final chance to redeem their applications, are allowed to produce the non-cash receipt (NCR) within 30 days of the public notice i.e., before March 7, 2023, as proof of filing the response in time via email to mumbai.tmr@nic.in. The notice further states that in case of no intimation from the enlisted applicants within 30 days, the listed applications will be deemed to be abandoned under the provisions of Section 132 of the Trade Marks Act, 1999 and Rule 33(4) of the Trade Marks Rules, 2017.
  1. For abandonment of application due to non-filing of counter statement in opposition proceeding: This notice contains a list of trademark applications for which the applicant has not filed the counter statement in response to the notice of opposition served within the prescribed deadline. The list contains the application number, application date, proprietor’s name, opposition number, correspondence date and TMO branch. In case the Applicant’s trademark has been listed and they have filed the counter statement within the deadline, they are required to produce proof of such submission with the Registrar of Trademarks by way of a Cash Book Receipt (CBR) or any other acknowledgement within 30 days of the issuance of the public notice. In a similar manner, in case of no communication is received on behalf of the enlisted Applicants, their respective applications will be deemed to be abandoned and their status shall be updated accordingly.

An aspect of inconvenience to be addressed:

The CGPDTM should also take pertinent steps for matters, where the trademark application has been transferred from one agent to another and the same is still in transition.  Considering the scenario, there is high chance that those applications could go unattended or unnoticed. Further, in case of assignments or name change requests that are pending to be taken on record, the list cannot be segregated based on the proprietor’s name solely. In consonance with such practicalities, the office should have considered the aforesaid scenario and provided alternatives for the Intellectual Property law practitioners/ agents with respect to such matters.

Further future initiatives –The public notice is an appreciable initiative taken by the trademark office to clear all the backlogs. However, it is suggestive that the office can abide by following streamlined approaches to clear further backlogs.

  1. API access: The agents/applicants could be allowed API access to their applications through a common portal that is mapped with the Trade Marks Registry’s online records. This could help the office in saving more time without having to create such gigantic lists, but rather allow the agents/Applicants themselves to monitor their applications. As the CGPDTM has taken several positive initiatives towards creating a digital interface for the Intellectual Property records in India, it would be of great aid for practitioners and/or applicants to have an API access system in place for their IP matters.
  1. In line with the recent steps taken by the CGPDTM towards clearing backlogs and weeding out the Trade Marks Registry, the CGPDTM could begin by also making a list of matters that have past the renewal date even after the issuance of the O3 notice. However, this is not possible if the Registry has not issued the O3 notice to the Registered Proprietors. It would be an important change in the Trade Marks Register to have such un-renewed marks expunged because these marks are often cited as conflicting marks during examination hindering the progress of other applications. Therefore, removing them from the Register would allow bona fide marks to move further through the registration process at a faster pace, saving time for the Applicant as well as for the Registry.