IPso Jure - intellectual property blog

INDIAN TRADEMARKS REGISTRY ABANDONS PENDING APPLICATIONS – GIVES GRACE PERIOD TO REVIVE

The Controller General of Patents, Designs and Trademark of India (CG) vide its notification dated 4^th April 2016 has given an opportunity to all Applicants and authorised Agents of Trademark Applications which were recently abandoned by the Indian Trademark (TM) Registry to (re)submit their responses or make submissions (where response was not submitted earlier) by 30th April 2016.

This action will benefit the several thousand pending Trademark applicants whose applications were abandoned by the Indian Trademarks Registry due to lack of responses.

For the last several years, the Indian TM Registry had stopped sending Office Actions through the postal service. Instead, they uploaded them online on the TM Registry website. However, there were always delays and other issues in the process. It appears that due to discrepancies and mismanagement, several files and documents were misplaced and the TM Registry could not locate the filed responses which apparently caused a chaos at the Registry. However, instead of attempting to trace the missing documents, the Registry took the decision to simply abandon all applications where the Office Actions were issued (on/off line) and the TM Registry could not trace the responses submitted.

After much ado, the TM Registry has granted a grace period of 3 weeks (until 30th April 2016) allowing all applicants who had filed their responses to re-send copies of their responses. The same grace period also applies to those who did not submit responses because they did not receive the Office Action even though it was uploaded / sent through post. All applications that do not receive responses by 30th April 2016 shall be treated as abandoned.

On the one hand, the move to abandon the applications has been criticised widely as a sign of the Registry not holding itself accountable. On the other, it is also seen as a smart move to clear off the overload that is sometimes caused by non-serious applications.

If you or any of your clients have filed any trademark application in India, you may wish to check the status with your concerned Attorney. If it has been “abandoned”, you still have time till 30^th April 2016 to take remedial action and submit a response.

If you are a Fox Mandal client, be assured that we are checking the status of your applications and shall be reaching out to the TM Registry to take necessary actions. Also, if your application has been examined, you must send your instruction to file a response immediately so a suitable response can be drafted and filed on or before 30th April 2016.

PS: As per the latest news, as a result of several writ petitions being filed before different High Courts, on 5^th April 2016, the Delhi High Court vide its Interim order has stayed the order of CG. We await the final order and shall keep you informed.