My Christmas Present from the Indian Trademark Office
Two Thousand and Thirteen- Now that the New Year’s revelry has settled and the holiday spirit has diminished, I find myself getting back to the grind of following up on the trademark portfolio that I handle. As I stare at the list, I see that the marks are in different stages of prosecution but all of them have one common factor – “x filed over two years ago; awaiting action”. From examination report replies, amendment applications to journal advertisements, delay on the part of the Registry is something that we’ve become accustomed to. It’s also something clients and applicants have difficulty understanding. While lawyers haven’t been viewed as the best folk in the world, Indian lawyers in particular have been accused of benefiting from the delayed judicial system. I do have a few acquaintances who are guilty of that charge but by and large, we would benefit more from having smoother processes and quicker conclusion to matters. I’d be happier to tell people that I completed the trademark registration process within a year and a half and get more work rather than asking existing clients to file unnecessary affidavits/letters and applications because of the errors, delays and goof ups by the Registry.
Tired of having to make excuses to clients on the general delay in the processing of all applications by the Registry, a colleague of mine filed an application under the Right to Information Act with the Ministry of Commerce and Industry seeking information on some of the workings of the Registry. The questions were related to the strength of the staff and number of applications (new filings/amendment/renewal etc) that were received and processed each month.
The application was shunted from registry to registry for two months (we found out about this along with glares from the irate Registry staff at hearings) and we finally got a reply on Christmas Day. An interesting Christmas gift to say the least, but a gift nonetheless!
While the information provided, raises more questions and is not complete in itself because they have merely listed out the statistics on the number of applications that are received and processed each month, we felt this information ought to be shared. Given that there is quite a bit of information, I have broken them down into parts and will be posting them over the next few weeks. For the first part, we’ll look at the examination process.
Once a new application is filed, the first step that the registry has to take is the examination of the trademark. The mark has to be examined to see whether is meets with all the procedural requirements in terms of documentation (power of attorney, priority documents etc), official fees (if there are characters in excess of 500 in the specification of goods/services), and evaluate a mark on whether it is distinct either inherently or on account of usage and finally if there are similar marks already on the register.
This is a considerable amount of work for an official, to check for procedural compliance and finally examine a mark through the application of legal concepts.
According to the 2011-2012 annual report of the Department of Industrial Policy and Promotion there were 179,317 new trademark applications filed in 2011. While the report for this year has not yet been published, based on our records where we filed an application and December 29, 2011, and a new application exactly one year later we found that there were approximately 192,830 applications filed between. Based on the previous year’s report we were able to compile the number of applications that had to have been examined by the end of 2012. This can be seen below:
What the RTI reply reveals is that all new applications are examined in Mumbai and only 21 people have been assigned this mammoth task of examining the 386000 applications! To make matters worse out of the 21 people examining applications, only 4 are permanent staff. The remaining 17 are hired on and off on a contractual basis.
This data shows that by the end of December 2012, to complete examination of all the applications filed since 2006, each of the examiners has to examine approximately 12 applications each hour.
If I had to check procedural compliance, previous similar marks, test based on distinctiveness for one new trademark every five minutes all year through I would definitely make mistakes. A lot of them!
Which is exactly what happens, as we see examination reports requesting Power of attorneys and Priority documents when we’ve already submitted them, similar conflicting marks that belong to the applicant itself, conflicting marks which have already expired, transliterations of marks written in the English alphabet; the list is endless.
While I tend to sympathise with the examiners, the truth is that the Department is to be blamed. With over a billion people in India, it is shameful to have only 21 working on so many files. The Registry has to employ more qualified people to do the job so that the entire examination process is quicker and error free.
I can only hope that it happens this year.
I will be posting more information from the RTI reply for the other stages of trademark registration shortly.
For now I’ve got to get back to drafting those follow up letters….