06 April, 2016

Ensuring your Trade Mark Applications in India are not Abandoned – Ongoing Developments

Ensuring your Trade Mark Applications in India are not Abandoned – Ongoing Developments

In an attempt to clear the trademark application backlog at the Indian Trademark Office, on 29 March 2016 the Indian Trademark Registry abandoned approximately 200,000 applications and 20,000 oppositions.

Where submissions such as responses to examination reports, requests for extensions of time and affidavits required for hearings were not uploaded in the “internal module system” at the Indian Trademark Office, the trademark applications were abandoned.  However, many trademarks that have been properly prosecuted to date were abandoned as the Indian Trademark Office failed to enter all information for all matters into the “internal module system.”

In opposition cases, relevant checks relating to the proper submission of relevant documents were ignored. In addition, counter statements which were physically filed were not considered as well.

Needless to say, this development is of great concern to brand owners as many properly prosecuted trademarks have been abandoned.

To address the above issue, the Indian Controller General of Patents, Designs and Trade Marks issued a formal direction where the applicants and their agents are given until 30 April 2016 to make necessary representations related to the wrongful abandonments and substantiating their cases with supporting evidence.

However, based on a Writ Petition filed on 6 April 2016, the High Court of Delhi, has issued a stay on all the abandonment orders that have been passed and directed not to undertake further abandonment of any trademark application without following due process provided under the Act.

Currently, this matter is listed for further hearing in May.

Despite the order issued, we strongly encourage brand owners to audit their Indian applications and conduct updated status checks as soon as possible. This will enable clients to determine the best strategy to adopt so as to ensure their applications are placed on the right track with the Registry. If you need assistance with trademark audits and status checks, we will immediately assist you upon receiving instructions.

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