Trademark Office Will Have to Wait to Clear its Backlog
Tatas, others drag entity to court for rejecting filings, treating them as abandoned
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.