Expedited Examination of Trademarks in India – How fast is fast?

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To all who read this, my aim here is to share something that I have been brooding about…It may even be something “you” have been brooding about.. Hopefully someone or maybe even the  Indian Trademark Office will come up with a satisfying answer?

All IP Attorneys in India (and even from other jurisdictions) would be all too familiar with “expedited examination of trademark applications” and the corresponding provision (Rule 38 of the Trademarks Rules, 2002). In fact I’m sure most can’t do without Form TM-63 (which is by the way the all-important form for making a request for expedited examination) considering the pace at which applications get examined by the Indian Trademark Office otherwise (but to be fair, the time span taken for examination has improved considerably now). My blog this time though (I say ‘this time’ since I’m saving up this matter of examination of trademark applications or rather the delay in the same for later) is not about the delay in examining applications but to determine the extent of utility of expedited  examination and shortfall  which I hope the Trademark office can at-least now fathom.

The Provision

As the Rule 38 goes,

“……an applicant may request for expedited examination of an application for registration of a trade mark in Form TM-63 together with a declaration stating the reason for the request, on payment of five times the application fee. (2) If the Registrar is satisfied on the basis of declaration filed under sub-rule(1) that an expedited examination of the application is warranted, he shall cause the expedited examination of such application in the order in which the requests are filed and may ordinarily issue the examination report within three months of the date of such request. “

The Hypothesis

Now your client for some justified business reason requires a trademark to sail through the registration process expeditiously and knowing full well that examination per se would take months, we take the expedited route. Quite natural and a seemingly wise decision. So we file a TM-63 request (not to forget the enormous “five times the application fee!”) and Voila! Your application gets examined within the time frame of 3 months (dear readers, please do not mistake this for some guarantee that expedited applications do get examined within 3 months. Hypothesis is the word here!). We also do our part of replying to the examination report…

The Problem

So…What next? Does the Trademark office help any further with/without the Attorney’s follow up? Unfortunately the answer is a BIG NO. Once the application gets examined expeditiously, the duty of the Trademark office is over or so it says. The remaining procedure including hearing, acceptance, advertisement and registration take the normal course of time. But what if your client, as mentioned above, wants to expedite the registration process per se a tad bit for some justified business reasons? Is there a way? An expedited examination will help, no doubt. At present, in fact, it is the closest that we have to expedite the registration per se. But will it be sufficient for ‘that extra mile?’

Cure?

The Indian Trademark office does not, as far as I know, provide that “extra mile” and this leaves us in a fix. With fee as huge as 5 times the normal fee, my humble opinion is that the scope of TM-63 might be enlarged or a separate provision be introduced to include expedited hearing and acceptance/revocation as well.

Still doubtful ?

Well, I can already hear many enquiring, “this expedited examination is strictly expedited examination ONLY in many jurisdictions and why and how are you asking for more?” To those I would first like to point out, “What I am talking about here is the Indian scenario” and on the same note, ask:

a) are applications filed in India normally processed at the same pace as in such jurisdictions?(I read in some UK Attorney’s website that UK Intellectual Property office, under the expedited route, examines application in 10 days!)

So it all boils down to this: Will the Indian Trademark office install a separate expedited route or expedite the normal registration procedure itself. Well, the latter seems a little far away..

So now that I’ve worded what I was brooding about, is there anyone out there with similar thoughts? I’d be more than happy to know that I’m not alone in this (which will be kind of bizarre!) or is there someone who holds different views? Do let me know… EXPEDITED please! I’m all ears!

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