Indian Trade Marks Registry gives opportunity for reviving applications abandoned in the last week of March

April 4, 2016

The Indian Trade Marks Registry had very recently ordered the abandonment of an unusually high number of trademark applications. The said number of applications have been abandoned for lack of prosecution wherein examination reports is claimed to have been dispatched by the Trade Marks Registry but not received by the applicant or wherein reply to examination report had been filed but not considered by the Registry.

It is pertinent to mention that as per the judgement passed by Bombay High Court in 2013 in Writ Petition No. 2088 of 2012, titled “The Institute of Cost Accountants of India v/s Registrar of Trade Marks & Anr”, (56) PTC 229 [Bom] [DB], the Court had held that “mere posting/ uploading of the examination report does not constitute communication to the applicant or his attorney. The examination report is required to be communicated in writing as per the rules laid down in the Trade Marks Act, 1999 thus, the application cannot be deemed to have been abandoned”.

The Court further stated that “under the said rule, there is no requirement that the applicants are required to take notice of anything that is posted on the respondent’s website and the mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by rule 38 (4).”

On April 4, 2016 the Office of the Controller General of Patents, Designs and Trademarks, released a public notice as a step taken in the interest of justice, especially after receiving complaints from various stakeholders, stating that such applications which have been treated as abandoned without giving applicants a proper opportunity to be heard.

To redress all the parties who are adversely affected by all such scenarios, the Office of the Controller General has provided an opportunity till
April 30, 2016 to file all such representations and reply to all such examination reports. If it is found that indeed parties are adversely
affected by it, then the Office will take appropriate action necessary to remedy it.

A copy of the said Public Notice can be accessed here.

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