Current trends in the functioning of Trade Marks Registry
The advent of Trade Mark Rules in 2017 (“Rules) has seen many positive changes at the Trade Marks Registry (“Registry”). The objective of the Rules was simplification and digitization of the registration process, and it appears that the functioning of the Registry has improved significantly to move in the direction of meeting those objectives.
For years the Registry worked at a very slow pace and it was often the case that applications languished for years and, in some cases, decades. The tardy pace of examination and advancement of applications in the registration process is history now. In recent times, Applicants have witnessed record examination times, often receiving an Examination Report within weeks of filings. In fact, since 2017, many applications have matured to registration less than one (1) year after filing. Moreover, the quality of examination has improved significantly! On the subject of quality, very recently, the Delhi High Court, in Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr., W.P.(C) 3851/2019, held that the Registrar of Trade Marks must provide reasoning for refusal/conditional acceptance of a trade mark application. It remains to be seen how this directive is implemented in practice.
Expedited processing is not only limited to examination, but also to oral hearings and post-registration procedures such as renewals. As for oral hearings, although the pace at which oral hearings are scheduled has been quickened considerably, sometimes, hearing officers tend of take a rather straight-jacketed and narrow view of a case. Moreover, sometimes, the approaches taken by hearing officers to the identical issue differ. For example, in some cases, even where there is no objection against an application on the ground of lack of distinctiveness, a hearing officer might ask for an affidavit of use. Furthermore, the Registry has started conducting hearings via video conferencing. This is a very positive development.
Another positive development is that the Registry requires trade mark applicants to file affidavits attesting to use of a mark in those cases where an application is based on use of a mark in India. The affidavit must be accompanied by appropriate evidence showing use of a mark as of the date of earliest use claimed in an application. Filing such affidavits has and will, undoubtedly, reduce incorrect use claims in applications.
The opposition procedures at the Registry have also seen many positive developments. Service of Notices of Opposition (that sets the deadline rolling for filing a counter statement) is happening nearly contemporaneously with filing via email (as opposed to post)! Moreover, orders of abandonment are being processed very rapidly, thereby bringing closure to uncontested proceedings or proceedings that were not defended. These new procedures have helped chip away at deadwood oppositions. However, substantive hearings in opposition matters continue to lag!
The efforts taken by the Registry are, undoubtedly, praiseworthy. We look forward to streamlining of procedures relating to cancellation actions as well as license recordals. In addition, we hope that, in 2020, opposition hearings will be scheduled, thereby reducing the backlog in opposition matters.