Trade­mark Of­fice Will Have to Wait to Clear its Back­log

Tatas, oth­ers drag en­tity to court for re­ject­ing fil­ings, treat­ing them as aban­doned

The Economic Times - - Companies - Maulik.Vyas@ times­group.com

Mum­bai: The patent and trade­mark of­fice’s ap­par­ent drive to clear its back­log of ap­pli­ca­tions has hit a le­gal road­block, with the Tatas and a group of in­tel­lec­tual prop­erty at­tor­neys drag­ging it to court.

A fil­ing by Tata Steel to reg­is­ter ‘ACE+’, its ser­vice cen­tre cer­ti­fi­ca­tion pro­gramme, as a trade­mark was among nearly two lakh ap­pli­ca­tions that the Con­troller Gen­eral of Patents, De­signs and Trade­marks re­jected af­ter be­ing treated as aban­doned, lawyers deal­ing IP is­sues said. The aban­don­ment pro­vi­sion al­lows the ap­pli­cants to aban­don the ap­pli­ca­tions that have al­ready been filed but not yet con­sid­ered by the au­thor­i­ties. But in Tatas’ and many other cases, the lawyers claimed, nei­ther did the ap­pli­cants want to aban­don them, nor did the trade­mark of­fice in­ti­mate them of the de­ci­sion to drop the ap­pli­ca­tions.

In a re­cent pub­lic no­tice, the reg­is­trar said it fol­lowed the due process. But those chal­leng­ing its de­ci­sion say the ap­pli­ca­tions had been re­jected by the trade­mark of­fice in a hurry in or­der to come out with a “no-back­log” re­port.

On a com­plaint by Tata Steel and the In­tel­lec­tual Prop­erty At­tor­neys As­so­ci­a­tion (IPAA), the Delhi High Court stayed all aban­don­ment or­ders passed be­tween March 20 and April 5, the day of the stay or­der. The court also told the trade­mark of­fice not to pass any new or­ders of aban­don­ment with­out giv­ing due no­tice to the af­fected par­ties by reg­is­tered post. The mat­ter will come up for hear­ing on May 20.

An of­fi­cial at the patent and trade­mark of­fice said she can­not com­ment on an is­sue that is in court.

In its April 11 pub­lic no­tice, the reg­is­trar said it had treated many ap­pli­ca­tions as aban­doned where the ap­pli­cants didn’t re­spond to its ob­jec­tions that were sent to them or their agents. Sub­se­quently, some com­plaints were re­ceived claim­ing that ap­pli­ca­tions had been treated as aban­doned even though the re­ply on be­half of the ap­pli­cants were sub­mit­ted. Some oth­ers said they didn’t re­ceive the of­fice’s com­mu­ni­ca­tion, it said.

The reg­is­trar said it has kept all aban­don­ment or­ders since March 20 in abeyance fol­low­ing the court or­der and told the ap­pli­cants to pro­vide de­tails of their claims.

“The ac­tion of the trade­marks of­fice was an over­sight and not in ac­cor­dance with law, and hence, was li­able to be set aside both by courts or reme­died by ad­min­is­tra­tive ac­tion,” said Safir Anand, se­nior part­ner at Anand & Anand.

Lawyers rep­re­sent­ing var­i­ous com­pa­nies in IP is­sues said au­thor­i­ties re­jected their trade­marks ap­pli­ca­tions with­out giv­ing any in­ti­ma­tion un­der the law. The Mum­bai-based In­tel­lec­tual Prop­erty Law Prac­ti­tion­ers As­so­ci­a­tion had ear­lier writ­ten to the reg­u­la­tor chal­leng­ing the move. “This is un­heard of in­ter­na­tion­ally,” said Chan­der M Lall, pres­i­dent IPAA.

In­dia is a mem­ber of the ‘Madrid Pro­to­col’. It is a one-stop so­lu­tion for regis- ter­ing and man­ag­ing trade­marks world­wide, where a com­pany or an in­di­vid­ual can file one ap­pli­ca­tion, in one lan­guage, and pay one set of fees to pro­tect its mark in the 97 mem­ber coun­tries.

The reg­is­tra­tion process needs to get com­pleted within 18 months from the date of fil­ing a trade­mark ap­pli­ca­tion, if the country wants to be a mem­ber of the sys­tem. Hav­ing a long back­log wouldn’t serve In­dia’s case.

“Un­der the pro­vi­sions of law, it is a manda­tory re­quire­ment that an ap­pli­ca­tion must be ex­am­ined and the ex­am­i­na­tion must be com­mu­ni­cated by proper ser­vice of the ex­am­i­na­tion re­port upon an ap­pli­cant or his des­ig­nated agent,” said Rahul Chaudhry, man­ag­ing part­ner of Lall Lahiri & Sal­ho­tra.

The no­tice is­sued by the reg­is­trar di­rects com­pa­nies to sub­mit de­tails of trade­mark ap­pli­ca­tions by end of the month, with rel­e­vant doc­u­ments.

“The registry has asked at­tor­neys to bring all wrong­ful aban­don­ments to their no­tice by April 30, 2016. But it sim­ply does not re­solve the is­sue and the onus would now be on at­tor­neys to cite ev­i­dence that they were ‘not served’,” said Sh­we­tas­ree Ma­jumder, man­ag­ing part­ner of bou­tique IP law firm Fidus Law Cham­bers.

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