Overnight Lakhs of Trade Mark Applications ABANDONED by the Indian Trade Marks Office- STILL SALVAGE

Sai & Mehta | Advocates & IP Attorneys | 2016-04-04

To safeguard your client’s interest, It’s a time to check immediately status of your Pending/Registered Trademark Portfolio in India, also (if any) pending Opposition/Rectification matter before the deadline of April 30, 2016 to salvage the same.

 

According to the sources in the last week of March 2016, the Indian Trade Marks Office has “ABANDONED” more than 2 Lakh pending Trademark Applications in India on the ground that Reply to the Examination Report has not been filed by the Applicant. This baffling move by the Indian Trade Marks Office will impact rights of lakhs of Trademark Applicants both domestically and internationally. The language of the ORDER passed by the Indian TM Office in all cases is more or less the same (please sees below):

 “The abovementioned application was examined and the examination report mentioned therein the objection(s) to acceptance of the application for registration of the trademark was posted on the official website and was also sent to the applicant/applicant’s authorized agent. The response to the examination report was required to be submitted on behalf of the applicant within one month from the date of receipt of the examination report.

 It was clearly mentioned in the examination report that if no reply is received or a request for a hearing is applied for within the above mentioned stipulated time, the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act, 1999 and thereafter the status of the application in the computer database shall reflect the factual position. However no response to the examination report has been received so far either mentioning the applicant’s comments on office objections or requesting for hearing.

The abovementioned application is therefore deemed to have been abandoned under Rule 38(5) of the Trade Marks Rules, 2002 and the status of the application is changed accordingly in the records of the Trade Marks Registry.

As per the procedure prescribed by the Trademark Rules, 2002, the objections raised by TM Office are communicated to the Applicant by way of Examination Report. The Examination Report is uploaded on the TM Office Website and a hard copy of the same is sent to the Applicant/Agent. Thereafter, the applicant has 30 days’ time period (which is extendible by 1 month on request) to file its reply from the date of receipt of Examination Report with the consequence of non-compliance being the abandonment of the application. Relevant Rule 38 (4) and 38 (5) are reproduced below:

“Rule 38 (4)  If on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think right to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant.

Rule 38 (5) If within one month from the date of communication mentioned in sub-rule (4), the applicant fails to amend his application according to the proposal or fails to submit his observations to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned”

As a practical routine matter, the Indian TM Office raises the formal objections by way of Examination Report and the same gets uploaded on the TM Office Website. However, the actual service of the hard copy of the Examination Report happens occasionally. However, there is ambiguity as to whether uploading/downloading of the Examination Report from the TM Office website construes as communication of the objections to the applicant.

In the present scenario, wherein, the lakhs of trademark applications have been ABANDONED by the TM Office on the alleged ground that Examination Report was dispatched to the Applicant and Reply to the Examination Report has not been filed by the Applicant. The bitter truth (which only TM Office knows!) is that the TM Office actually failed to deliver Examination Report to the Applicants. This wrongful action by the TM Office to clear their backlog has caused a grave hardship to lakhs of Trademark Applicants both domestically and internationally.

However, today TM Office has issued an official notification that they have received numerous complaints that the applications have been ABANDONED in those cases also wherein (i) Reply to the Examination Report have been submitted but the same was not considered; (ii) the Examination Reports containing office objections have not been actually received by the applicant or their authorized agent by post. 

So, in the interests of justice, a last opportunity has been given to the Applicants whose application have been Abandoned by the TM Office under this drive. To salvage their application Applicant's are require to send a representation with all details along with sufficient documentary evidence substantiating his/her case before the deadline of April 30, 2016. Any representation to this effect submitted after April 30, 2016 will not be considered by the TM Office.

So, please check immediately status of your Pending/Registered Trademark Portfolio in India before the deadline of April 30, 2016 to salvage the same. For any queries or assistance please do not hesitate to contact at amit@saiandmehta.com.