In February 2023, the Trade Marks Office published a list of thousands of applications facing abandonment — for missed examination replies and counter-statements. If your mark was on it, you had 30 days to prove you’d filed. Here’s what happened, and the deeper problem it exposed.
The notice
The CGPDTM issued a public notice on 6 February 2023 identifying thousands of trademark applications at risk of abandonment, aiming to clear backlogs in prosecution and opposition. It covered two categories:
1. No response to the examination report
Applications where applicants failed to respond to the examination report within the deadline were listed. Applicants had 30 days (before 7 March 2023) to email proof of a timely response to mumbai.tmr@nic.in. Without it, “applications will be deemed to be abandoned under the provisions of Section 132 of the Trade Marks Act, 1999.”
2. No counter-statement in opposition
This covered applications where proprietors didn’t file counter-statements to opposition notices. Those listed had 30 days to provide proof of submission (a Cash Book Receipt or acknowledgement); failing that, the status would be updated to abandoned.
The problem it overlooked
The notice ignored complications where applications transfer between agents, or where assignments or name changes are pending. In those transitional periods, an agent may miss a deadline — risking unintended abandonment of a mark whose owner did nothing wrong.
Suggested fixes
Two systemic improvements would help:
- API access. Give practitioners and applicants API access through a common portal linked to the Registry’s online records — so applicants can monitor their own applications and mass-abandonment lists become unnecessary.
- Expunge unrenewed marks. The CGPDTM should identify and remove marks past their renewal deadlines from the Register (even after O3 notices). Unrenewed marks get cited as conflicting marks during examination, needlessly slowing legitimate applications.
The takeaways
- Watch the abandonment lists. The Office periodically flags applications for abandonment — check whether yours appears.
- Keep proof of every filing — a timely examination reply or counter-statement, with acknowledgement, is your defence.
- Transitions are risky. Agent changes and pending assignments/name changes are where deadlines slip.
- Systemic fixes are overdue — self-service monitoring and expunging dead marks would prevent much of this.
Frequently asked questions
Why were thousands of trademark applications flagged for abandonment? The CGPDTM’s February 2023 notice listed applications where applicants had missed responding to examination reports or filing counter-statements in oppositions.
What did applicants have to do? Provide proof of their timely filing within 30 days (by 7 March 2023) — by email for examination replies, or a Cash Book Receipt/acknowledgement for counter-statements.
What happens if no proof is provided? The application is deemed abandoned and its status updated accordingly.
What risks does the process overlook? Deadlines missed during agent transfers or pending assignments/name changes, which can cause unintended abandonment.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India