Delhi High Court’s Continues the Abandonment of Trademark Applications
The Delhi High Court’s stay on the abandonment of unusually huge amount of Trademark Applications has brought relief to thousands of applicants.
The Delhi high court last week stayed as many as 193,908 orders issued by the Comptroller General of Patents, Design and Trademarks between 28 and 31 March, scrapping the trademark applications.
The Intellectual Property Attorneys Association filed a petition in Delhi and called for an urgent hearing on Tuesday, alleging that the trademark registry cancelled an unusually high number of trademark applications without issuing notices to the applicants or lawyers.
Elaborating the matter, Vedant Pujari, Patent Attorney said, “According to Section 128 of the Trade Marks Act, 1999 the Registrar of Trade Marks shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within prescribed time) giving to the person an opportunity of being heard. Further, Section 132 of the Act requires the Registrar to give appropriate notice to the applicant before passing an order to abandon the application. These provisions are under the Act and therefore are mandatory in nature.”
Pujari said such abandonment of explicably huge number of trade mark applications would not stand the test of law.
He pointed that the plea filed with the Delhi High Court said, “On March 31st alone around 52,000 abandonment orders have been passed by the Trade Marks Registry, which clearly shows there is no application of mind.”
Such hasty actions and abrupt deviation from the well-established legal procedures was surely going to come under scanner. It is strange that, instead of creating a bigger and better infrastructure to deal with the backlog in a systematic manner, the Registry is trying to get rid of the backlog in such a way, it added.
Trade Marks Registry makes the examination reports available to the applicant –
1. Via the status update on the comprehensive e-filing module.
2. By uploading a copy of the examination reports on the Trade Marks Registry’s database, so that the applicant can download the same and take appropriate action.
3. By sending a notification via email to the applicant; and
4. By sending the examination report via registered post.
The reply to the examination report is to be filed within 1 month from the date of receipt of the same. What should be considered as the ‘date of receipt’ is unclear.
Pujari said, “Being a Patent Attorney, we usually keep scanning the Trade Marks Registry’s website on weekly basis for the trade mark applications filed by us and, if available, download the examination report. This gives us ample time to prepare and file the reply to the examination report within the prescribed time.
The stay by the Delhi High Court is timely and did safeguard the interest of thousands of applicants,” he added.
In a notification, the Controller General of Patents, Designs and Trademarks said, “This office has taken steps to treat the applications as abandoned in which no reply to examination report containing office objections to acceptance of the applications for registration has been received within the period of 30 days as per Trade Marks Act, 1999 and rules made thereunder. It is pertinent to mention that in all such matters the examination reports were already posted on the official website and were also sent to the applicants or their authorised agents concerned individually.
Some complaints have been received claiming that some of the applications have been treated as abandoned even though the reply on behalf of the applicants have been submitted but the same was not considered; some complaints have also been received to the effect that the examination reports containing office objections have not been received by the applicant or their authorised agent concerned as such the same could not be replied and the applications were treated as abandoned.
In view of the above and in the interests of justice, it is decided to provide an opportunity to the applicants or their authorised agents concerned, the notification dated Aril 4, 2016 said.