On 31 March 2016, the Indian Registrar of Trade Marks announced the mass abandonment of nearly 200,000 trade mark applications and oppositions. The decision was taken with the aim of clearing the mounting backlog of cases.
The applications were purportedly abandoned for non-filing of responses to examination reports and non-filing of counter-statements in oppositions. Unfortunately, the Registrar failed to conduct proper checks as to whether the examination reports/opposition notices were properly served on the Applicants, or whether submissions or other documents filed in response were entered into the "internal module system" at the Registry. This oversight resulted in the majority of cases being wrongly abandoned.
Following objections from applicants and agents, the Registrar issued a Public Notice on the TMR India website on 4 April 2016 acknowledging the fact that applicants may not have received examination reports and that applications/oppositions may have been abandoned despite the proper submission of responses and documentation. The Notice allowed applicants and their agents until 30 April 2016 to submit representations and supporting documents related to any wrongful abandonment.
However, on 5 April 2016, in response to a writ filed by the Trademark Attorneys Association regarding the action of the Trade Marks Registry, the Delhi High Court temporarily stayed all the abandonment orders, pending a hearing on 12 May 2016. In compliance with the order of the High Court, the Registrar issued a further Public Notice on 11 April 2016 indicating that the abandonment orders for individual trade mark applications passed by the Registrar after 20 March 2016 were set aside and that aggrieved applicants or their agents can file a reply to the examination reports. However, it is unclear as to what deadline applies to the latest notification.
In response to this arbitrary action by the Indian Trade Marks Office, Shelston IP conducted urgent status checks with our Indian agents of all pending applications and oppositions of our clients, and any affected case(s) have been reported to our client(s).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
