On March 29, 2016, the Indian Trademark Registry in a bizarre attempt to reduce pendency of outstanding applications at Indian Trademark office, abandoned nearly 200,000 Trademark applications and 20,000 oppositions (as per sources). This order amounts to around 4,700 % increase to the previous months’ (February 2016) dispositions.
The reason provided for such action lies in the registrar’s opinion that many of these applications are unneedful and have not been responded to, and therefore ought to be abandoned to open the way for applications in which the applicants are genuinely interested. Further, the Indian trademark office conveyed that, they have been uploading the examination reports onto its website and applicants are supposed to respond to the uploaded examination reports in a timely manner.
However, these arbitrary abandonments in many instances also include properly prosecuted trademarks where responses to examination reports, requests for extensions of time and other affidavits were not uploaded in the “internal module system” at the Indian Trademark Office.
There were severe oppositions from various quarters of IP practitioners and stake holders, after which the Indian Controller General of Patents, Designs and Trade Marks issued a formal direction to the applicants and their agents to make necessary representations related to the wrongful abandonments and substantiating their cases with supporting evidence, until 30 April 2016.
Most recently, the High Court of Delhi on a writ petition, 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. This matter is listed for next hearing in the month of May.
KA Suggestion Portfolio Audit
Even after the recent relief provided by the Honorable Delhi High Court, we strongly advise our clients and other Trademark owners to undertake a thorough Audit of their TM portfolio including updated status check of their registered marks. This would ensure that your registered marks continue to be enforceable and devise strategies for pending applications to be on the right track with the TM Registry.
KAnalysis has extensive capabilities to undertake all such activities in a prompt, timely and cost effective manner. Please get in touch with us to discuss, how we can help you navigate this crisis via business@kanalysis.com.
