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After the Indian Trade Marks Registry unexpectedly abandoned hundreds of thousands of applications, lawyers have taken matters into their own hands, as Nancy Roy of Singh & Singh Lall & Sethi reports.
In March the Indian Trade Marks Registry, in an unprecedented and senseless attempt to cope with the pressure of clearing the backlog of pending Madrid Protocol applications, started a drive that affected more than 193,000 applications over a period of 16 days.
On a regular day, the number of applications disposed of by the registry varies from 3,000 to 4,000. The registry neither appointed any hearing nor provided an opportunity for applicants to seek a hearing before treating a substantial number of pending trademark applications as ‘abandoned’.
This led to utter chaos among applicants, attorneys and agents dealing with registration of trademarks. The official status of such applications was changed on the official database, and a communication stating that the applications were being treated as abandoned was uploaded on the same day.
On March 30, the news of the abandonments reached the entire fraternity of intellectual property lawyers across India. Before people could make sense of what was happening, more applications were abandoned, an average of 55,000 applications per day based on the records available on the registry’s official website.
A careful examination of the online records of the registry revealed that most of the orders of abandonment were passed in from March 28 to 31, making it apparent that such orders were passed in haste, without application of mind, arbitrarily and/or for some ulterior motives.
This is also evident from the fact that the registry has, after passing such across-the-board arbitrary orders and causing further prejudice to the applicants, once again sought to shift the onus to the applicants. This was by issuing an office order dated April 4 asking the applicants whose applications had been abandoned in error to submit a representation with details and documentary evidence before April 30.
The provisions of Indian law stipulate a two-pronged process before an application can be treated as abandoned. First, the registry is required to inform the applicant of its inclination to exercise its discretion adversely and call on the applicant to respond with whether it wishes to be heard.
"The registry, without communicating or serving any examination reports or the notice of oppositions to the applicants, merely passed abandonment orders mechanically."
If upon receipt of such a notice the applicant fails to respond, the only option for the registry is to pass an order of refusal or conditional acceptance, recording in writing the reasons for it. The registry is mandated to put the applicant on notice of its intention to abandon and give the applicant an opportunity to remedy this fault.
Likewise, if a notice of opposition has been filed, the procedure prescribed under the law is that the registry shall serve the notice of opposition to the applicant. Only if the applicant fails to file its counter statement with the prescribed fee within two months is the application deemed to have been abandoned.
The registry, without communicating or serving any examination reports or the notice of oppositions to the applicants, merely passed abandonment orders mechanically without due application of mind and verification of its own records. The applicants paid all the requisite fees for all applications, which cover the examination of such applications by the registry, filing the counter statements and communicating the examination reports to the applicants, and processing the applications/oppositions until final disposal.
Having accepted the applications and allegedly examined such applications, the registry failed and neglected to communicate such objections to the applicants, or to consider the response duly filed in many of the applications and wilfully treated the said applications as abandoned with a view to reducing the backlog, which has piled up over the past several years.
For the wrongly abandoned applications, the registry not only failed to serve the examination report but also failed to serve such a notice before treating the applications as abandoned, acting in complete contravention of the law as well as established office procedures.
It cannot be a matter of coincidence that the examination reports in thousands of abandoned applications are shown on the online records of the registry to have been dispatched in the month of January 2016 on a few dates, even though such applications were examined way back in 2012 to 2015.
It also cannot be a matter of coincidence that none of the examination reports allegedly dispatched was received by the applicants. The records of the registry also seem to have been manipulated for some ulterior motives and the back-dated examination reports were generated by the registry solely to abandon the applications.
The registry has not only acted unfairly but such acts are also in gross violation of the statutory right, fundamental right, public Interest as well as public policy and gross negligence of duty and diligence on the part of the registry. Despite the fact that there was no fault on the part of the applicants, they are to their detriment on the verge of losing protection of their valuable trademark rights.
Pained by such an act on the part of the registry, a writ petition was filed on behalf of the Intellectual Property Attorneys Association. Chander Lall, president of this association, personally signed this petition. The Delhi High Court, after hearing the grievances of the petitioners, passed an order granting a stay against all such abandonment orders granted by the registry on or after March 20.
The registry has been further directed not to pass any more orders of abandonment without giving due notice to the affected parties by registered post, as mandated by law. The petitioners have also sought an inquiry by a central government agency into this act of the registry.
The controller general has been directed to file its reply to the writ petition and the petition is listed to be heard before the Delhi High Court on May 12.
The entire IP fraternity is fighting together to ensure that the registry remedies its unfair acts. It is hoped that this is the last time the registry acts in such haste. Rather than clearing backlogs, the registry has burdened itself with more work as the applicants and their attorneys are not willing to let this go.
Nancy Roy is a senior associate at Singh & Singh Lall & Sethi. She primarily focuses on IP-related litigation and enforcement as well as consumer disputes. Roy has assisted with arguments before the Supreme Court of India, Delhi High Court and Calcutta High Court. She can be contacted at: firstname.lastname@example.org
Nancy Roy, Singh & Singh Lall & Sethi,