Readers may remember the recent guest post that highlighted the Trademark Registry’s notices deeming 98000 and 82000 trademark applications as abandoned. These notices were challenged before the Delhi High Court in Intellectual Property Attorneys Association (IPAA) & Anr. v. The Controller General Of Patents, Designs & Trade Marks & Anr. (pdf). Via order dt. April 13, 2023, it was revealed that the Indian Trademark Registry has undertaken to withdraw the above notices bringing the applications back to their original status. This incident is an addition to the trail of misadventures that trademark practitioners have faced before the Registry and we thought it would be beneficial to invite an experienced practicing trademarks lawyer to share with us their insights on this and the state of affairs before the Registry in general. We are pleased to bring our readers a guest post by Raja Pannir Selvam, Managing Attorney, Selvam and Selvam, who specializes in trademark law and domain name disputes, with several years of experience before the registry under his belt. Views expressed here are those of the author’s. We also invite our readers to leave any comments with their own experiences, whether positive or negative, with the registry.
The Backlog Challenge Faced by the Indian Trademark Office: Addressing Inefficiencies and Ineffectiveness
Raja Pannir Selvam
On April 13, 2023, before the Delhi High Court, (pdf) the Indian trademark office agreed to withdraw public notices issued in February (here and here) and March 2023 (here and here), which resulted in the arbitrary abandonment of over 170,000 trademark applications without following due process. This situation reminds me of a quote by Henry Ford, “The only real mistake is the one from which we learn nothing.” Unfortunately, this is not the first time the Indian trademark office has engaged in mass abandonment of applications, only to be reversed by the High Court. In 2016, a similar incident occurred, and the High Court reversed the undue mass abandonment of trademark applications.
Reflecting on how we arrived at the current situation, it is notable that the trademark office has faced criticism for the significant backlog of matters before it, and the pressure to clear this backlog is apparent. The backlog is a consequence of years of delays resulting from resource constraints at the trademark office and loopholes exploited by some practitioners. To clear the backlog, the trademark office takes various steps, but some of these steps can cause irreparable harm to the rights of the applicants or trademark owners, prompting the courts to step in to protect their rights. However, in doing so, many applications that were rightfully abandoned are also now reversed, resulting in an additional burden on the trademark office. Clearing the backlog is a gradual process that cannot be accomplished overnight.
The trademark office currently faces a range of challenges that affect its efficiency and effectiveness. However, many of these issues can be addressed by making minor changes to the process, doing away with hiring contract examiners, providing proper training to its examiners & using technology.
Contract Examiners
As per the information available in the latest annual report, 47 out of the working staff of 61 Examiners in the Trademark Registry operate on contractual basis (page131). This is against the sanctioned strength of 160, (which prescribes that only 60 employees should be recruited on permanent basis). Recruiting the major proportion of these examiners on a contractual basis results in a situation where there is absolutely no accountability for the quality of the examination reports issued by them. These examiners lack experience and the training provided to them to get them started is also very limited.
Quantity over quality
These examiners focus on the number of applications examined each day rather than the quality of these examination reports issued since an unspecified target on the number of applications to be cleared is fixed for them by the trademark office. There are several instances when the only objection in the examination report in respect of a trademark application is on relative grounds of similar/identical marks existing in the register. If only the examiner reviewed the report, it would be evident that the applicant of the application examined & the cited mark is one and the same. Ideally, the application should have been allowed to proceed to publication. However, now the application will go through the process of filing a response, a hearing & thereafter publication resulting in a backlog, not the mention the costs of time & money to the applicant.
Lack of review for responses to examination reports
The responses to examination reports are mostly never reviewed by the examiners and as a matter of practice, a hearing is scheduled in almost every application where a response is filed. There are very few instances, like the examinations conducted during the COVID-19 pandemic, where the examiners reviewed the response to the examination report and allowed the applications to proceed further.
Insufficient time allotted for hearings
Each hearing officer is allocated about 60 – 75 hearings per day and counsels appearing in the matter are not given sufficient time to adequately argue the matter, as the hearing officers appear to rush the counsels to quickly conclude their arguments. Additionally, the hearing officer would also not have sufficient time to review the documents submitted. This has resulted in either adverse orders or merely adjourning the matter to another day. It is also important to note that the hearing officers write speaking orders in respect of the refusal which would require sufficient time & research and in the absence of the same, the matters are kept pending before them for several years before the speaking order is issued.
Service of notice of opposition & counter statement
When an opposition is filed against an application or when a counter statement to an opposition is filed, the service of the same on the opposition party is delayed for several months. This could be easily automated to be served to the applicant immediately upon the filing of the same especially if the opposition is filed using the e-filing system. Likewise, when the counter statement is not filed within the time the order for abandoning the application can also be passed immediately using, technology reducing the matters pending with the trademark office.
Removal of registrations for non-renewal
Several registrations that have lapsed remain in the register without being renewed or restored. These can also be removed to keep the register clean.
The trademark office’s intentions are good when embarking on missions to clean up the trademark register. However, good intentions alone are insufficient to guarantee success. To be effective, such actions require careful thought and consideration before implementation. If the trademark office proceeds with public notifications without proper application of mind, it can undermine its good intentions. Upon reviewing some of the applications abandoned by the trademark office, practitioners may observe that not all matters were wrongly abandoned. Only a few were wrongfully abandoned, but the principle of natural justice does not allow collateral damage for the greater good, which nullifies the entire act.
The way forward
This exercise of abandoning and then reinstating can be a valuable lesson for the trademark office to look at its existing practices and adapt itself to the changing and tasking times. Perhaps some of these changes can be adopting a more process oriented approach whereby it generates independent electronic notices to the applicants in respect of defects & non-compliances and thereafter pass necessary orders and serve again electronically. Similarly, another much needed change is by getting permanent Examiners on the payroll instead of contractual employees, who should be routinely trained on the nitty gritty of the trademark prosecution process. Lastly, the Registry must also consult with stakeholders and take feedback seriously and take steps to implement them over time if not immediately.