The Intellectual Property Appellate Board (IPAB) passed an order a couple of days back, which brought on record the problems faced by trademark proprietors with the functioning of the Trademark Registry.

They recently heard an appeal from an order of abandonment passed in an opposition matter along with several miscellaneous petitions which can be found here (OA/31/2013/TM/MUM).

The Appellant had filed it’s trademark application in May 1992 through its Indian counsel. The mark went through the examination process and was advertised in the journal on January 8, 2001. On March 02, 2001, the respondent had filed a Notice of Opposition opposing the registration of the mark. On May 15, 2001 the present counsels filed an application to take over the matter.

Since the new counsels had not received the notice of opposition, on June 01, 2004, they filed a letter with the Registry requesting a copy of the notice so that they could proceed, but this was not responded to (no surprises there). Finally when the documents of the Registry digitized and with the records made available online, the counsels for the appellant found out that the mark had been abandoned. Seeking clarification on the matter, they filed a letter with the Registry on July 23, 2008, which was also not responded to.

The next logical step, since the Registry was not responding to any letter, was to file an application under the Right to Information Act, which forces the Registry into replying (we’ve blogged about using this tactic over here). The RTI application was filed for which the Registry responded to in September 2008 stating that an investigation was going on.

On January 16, 2009, the counsels wrote another letter to the Registrar asking for information on how the mark could be abandoned when they had not received the notice which was also not responded to (since this is quite repetitive from now on all letters filed will be treated as not responded to unless otherwise mentioned)

In April of 2009, since the Registrar was not taking any action, the counsels dispatched a letter to the Controller General asking for intervention.

In June and July of 2011, more letters were filed with the Registry.

In June 2011, the Appellant and the Opponent decided to settle the matter and accordingly the Opponent filed a letter withdrawing the opposition. The Appellant’s counsels wrote to the Registry with this information mentioning that since the opposition was withdrawn the mark should be registered.

Finally in May 2012, the Registry website carried an order passed by a Senior Examiner abandoning the mark. The Appellants then filed the appeal against the order in August 2012 within three months of them finding the order.

The IPAB did not mince words on this matter where they stated

We disapprove of this attitude of an authority vested with quasi-judicial powers.  When letters are written on behalf of a party pursuing the statutory proceedings, it is in fact the duty of the Trade Marks Registry to give replies accurately and as early as possible. 

The IPAB after hearing the facts has directed the Registry to respond to certain questions within two weeks of receipt of the order

  1. Why did the online status mention ‘abandoned’ in 2008 when the order was passed only in 2009?
  2. Why weren’t any of the letters filed by the Appellant not responded to?
  3. Why was there no communication on the order even after the Opponents withdrew the opposition?
  4. Why was the order passed by a ‘Senior Examiner’ and not the ‘Registrar’?
  5. Is there any evidence to show that the notice was served on any party?

While the Registry is yet to respond to these pertinent questions, one just hopes that they buck the trend and actually respond for a change.

While this case does bring to light the shocking apathy of the trademark office, unfortunately, it is not a single incident. At present there are several files that I’m working on various stages of inertia because of the mistakes and non-responsiveness of the Trademark Registry. The problem with inaction by the Registry is that no counter positive action can be taken. Only if an order is passed, denying something, can a party approach the IPAB on appeal. By delaying the order, the Appellants were unable to do much for close to 12 years.

The positive to take away from this case was seeing the IPAB’s response. They looked into the facts with a great deal of sympathy for the Appellant who had done everything in its power to get matters moving.

Trademark Prosecution work is challenging, but it does provide counsels with an opportunity to explore the law and use it creatively. From filing RTI applications to approaching the courts and the IPAB, as Trademark Lawyer you’ve got to think outside the proverbial box. That does make my job very exciting indeed.

Raja Selvam

Founder & Managing Attorney, Selvam & Selvam | Practice areas include Trademarks, Patents, Domain names & Business law. Visiting faculty, Department of Journalism, Madras University where I teach copyrights & trademarks law. Passionate about entrepreneurship, start-ups, stocks, farming, technology and law.