5 June, 2015
Indian Trademark Registry often comes under the scrutiny for its delayed processes and heavy backlog of pending applications and other matters. It has become a common concern for the stakeholders who wish to get their marks registered in India. It is quite evident that there is an apparent delay in Registry’s functioning. However,the applications filed after implementation of Madrid Protocol by the Indian Registry, are proceeding much faster to meet the time lines prescribed under International System. Also the registry is trying hard to cover up the backlog of back dated applications both digitally and manually. Some of the recent efforts taken up by the Registry are enlisted below:
- The records at the Indian Trademark Registry are 90% digitized.
- The Registry’s website facilitatesthe applicant with the complete process from filing till maintaining the registrations of marks, electronically. E-process enables the applicant to file application, receive application number and filing date immediately, retrieve office action, file response to office actions, check advertisement, file or defend opposition, retrieve certificate of registration and renew the registrations. In addition, all amendments and recordal of change during application or registration stage can also be requested electronically.
- Trademark Index is available online and all marks whether pending, advertised, registered, and abandoned or withdrawn can be searched using online system, free of cost.
- Status of the application and registration can be checked online.
- All examination reports issued by the Registry are now available online and unlike in the past the Registry does not send office actions by post. This procedure shifts the burden on the applicant/agent to keep a watch over its application and download office actions as soon as they are retrievable. One month deadline to file response to the office action starts from the day the applicant/agent downloads the office action from the Registry’s website. Trademark Practice Group at LexOrbis perform bi-weekly online status check for all trademarks under its responsibility and office actions along with the draft response are reported immediately to the applicant.
Appointment And Special Drives:
Not only at the digital upfront, efforts have also been taken up manually to clear the backlog of pending applications and other matters at the Registry.
- Recently, Trademark Registry appointed 55 new Examiners and same number of new Examiners is expected to be appointed in the current year.
- Trademark applications (International & national) filed after July, 2013 are being examined within 12-15 months’ time period and if not opposed registrations are issued within 24 months;
- The delay is often cleared up by conducting special drives at the Registry. With the above mentioned recruitments it is expected that more drives would be initiated to dispose of old applications.For instance, Registry recently initiated a special drive to dispose of recordal of post registration changes including assignments. The drive was a huge success and facilitated to clearing the back log of such cases pending for many years.
- Another special drive was initiated to dispose of opposition/rectification matters which during the pendency of the opposition were settled between the parties or where the opposition or application under opposition was withdrawn by the respective parties. Once this drive is over, the Registry is expected to take up the opposition which are to be contested by the parties on merits.
- The Registry has also nominated one official in each branch to dispose of the pre-registration amendments including change of name, change of address, change of address for service, or change of applicant due to assignment, etc.
- The Court system in India is also supporting Indian IP regime by laying down unequivocal principles and procedures.
- While in most of the trademark and copyright cases, the Courts grant ex parte preliminary injunctions, Anton Pillar or John Doe types of orders at the start of the suit proceedings, there are a very few cases that are contested by the parties for damages and that procedure currently take about 3-4 years’ time. The Courts are now allowing mediation and examination of witness to be done by Local Commissioner to expedite the trial and to reduce the time to 24 months.
- The Courts on many occasions have directed the Registry to improve its functioning. While deciding a writ petitionfiled by the Intellectual Property Attorneys Association, the Delhi High Court directed the Registry to consider amendment in the date of use of the application on case to case basis, but the Registry is yet to implement that direction in letter and spirit.
- Also in another verdict the Madras High Court directed the Union of India to reconsider the selection process and selection criteria for appointment or technical and judicial members at Intellectual Property Appellate Board (IPAB) so as to bring in more effectiveness in the overall functioning of the Board. Carrying this forward, Delhi High Court has directed the Indian Government to evaluate if there is a need for having more permanent benches of IPAB in light of huge backlog (currently only one Permanent Bench of IPAB for trademark cases is in operation based in Chennai and the same conducts circuit sittings in Delhi, Mumbai, Kolkata and Ahmedabad). More benches of IPAB in the near future are expected to expedite the disposal of appeals and nullity/cancellation actions.
With all these efforts being in action it is expected that soon the Registry would be able to clear up the backlog of pending applications and other matters.
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