Indian Trademark Office strikes again- Default notice to 9000 applications
Let’s brush our memories and remember the infamous order of the Indian Trademark Office abandoning more than one lakh trademark applications by end of March, 2016. The dreadful saga saw a lot of oppositions from trademark attorneys/agents across the country, a stay order from the Delhi High Court and eventually the Trademark Office providing an opportunity for reinstating the applications.
After all that drama one would definitely expect the trademark attorneys/agents/applicants to take the examination reports seriously and file a reply within the deadline to avoid any further mishaps. But the recent notification issued by the Indian Trademark Office dated July 15, 2016 puts forth a very different, rather disturbing picture all together.
The notice regarding default in filing the replies to examination reports states that 13,062 examination reports were dispatched during the month of March and April, out of which, no reply has been received yet for 9578 applications (literally more than 70%), even after a month post the 30 days deadline period.
Prima facie, this notification highlights two points:
- The Indian Trademark Office is very stringent about complying with the deadlines;
- The trademark attorneys/agents/applicants, even after the disastrous abandonment spree of March-April, still aren’t serious and taking the deadlines for granted (no offence).
Moving on, the notification further states that a list of these 9578 applications has been published in the Trademarks Journal no. 1753 between page nos. 7100 to 7276. A reply to examination report for these applications can still be filed on or before July 31, 2016 by mailing a scanned copy of the replies at email@example.com (a second chance, which the Trademarks Office tends to offer time and again).
Failing to file the replies within the prescribed (extended) deadline of July 31, 2016, the respective applications will be treated as Abandoned.
If no replies are filed within 31st of this month, the Trademark Office will go ahead and abandon those applications. If at all another case if filed challenging such abandonments, I hope the Trademark Office has sufficient proof of dispatching as well as receipt acknowledgment of those 9578 examination reports.
Speaking of proof, it would be highly recommended if the Trademark Office, like the Patent Office, could notify the applicant/attorney/agent of the examination report through email notification in addition to dispatching a physical copy through post. It would definitely make the whole procedure more transparent and help the Trademark Office is substantiating their abandonments.
Having said that, all those genuine attorneys/agents/applicants who have not received the examination reports (but have read this notification of the Trademarks Office) still have an opportunity to file the reply within July 31, 2016 and protect their corresponding trademark rights.
Effect on Madrid applications
Firstly, this notification very much applies to the Madrid applications designating India.
Although the procedure of notifying a provisional refusal is different but the 30 days deadline remains the same. Considering the fact that the Indian Trademarks Office off late is very stringent in complying and implementing the deadlines, it is advisable that all foreign counsels be vigilant and comply with the deadline or at least file extensions (Form TM-56) to keep their trademarks alive.
A welcome step
Personally I consider this notification as a welcome step which should be encouraged and acknowledged. The Trademarks Office certainly seems to set out a stern warning that they are taking things very seriously, particularly the deadlines. The Office is fairly justified in scrutinizing all trademark applications and strictly complying with the deadlines.