With newly amended TM rules, will India keep up the pace with other global countries?

30th May, 2011 - 10:07 am Categories: IP Practice in India 0 Comments

The Process of trade mark registration in India being very slow is not only time consuming but also sometimes frustrating. Hopes soared high when in the beginning of year 2010, Trade Marks Registry assured attorneys and applicants that all records of the TM Registry were being digitized and on completion of digitization process, the movement of the filed would become faster. But despite whole of 2010 and half of 2011 gone, there is no visible relief. The process has only slowed down in the name of digitization and bringing transparency in the working of the TM Registry. The Registry issued a public Notice on 18 November 2010 informing general public that due to administrative reason all hearings of show cause notice for the month of November and December 2010 were canceled and fresh notices would be sent. Till date no notice for fresh hearing have been issued. Also no action seems to have been taken in case of responses to office actions filed as long back as May 2010.

Very recently a public notice dated April 25, 2011 has been posted on the India Trade Mark Office website, explaining that 44,404 trademark files have gone missing. What is interesting is that these missing files came to light not as a result of normal file maintenance practice but rather from the India Trade Mark Office’s efforts to modernize its files.

Admittedly, the office of the Controller of Patents, trade Marks and designs in India has recently introduced some new features to their official website to keep pace with the fast changing IP scenario in India. The Trade Mark Rules, 2002 have been amended and Trade Mark (Amended) Rules, 2010 have come into force with effect from May 20, 2010. The major change is amendment in Fourth Schedule of the Trade Mark Rules i.e. adoption of all 45 international classes.

Earlier international classes 43, 44 and 45 were merged in class 42 in India, but from May 20, 2010 separate application has to be filed for services covered under International class 43, 44, 45.

Another change in insertion of proviso to Rule 62(3), that provides for issuance of copy/ duplicate registration certificate without any additional cost, if the Registrar is satisfied on a claim of Registered Proprietor supported by evidence that registration certificate has not been received by him.

The Indian Trade Mark Laws continue to move forward to ensure “universalization” of its systems and processes. By way of notification dated 29th December 2010, published in the Gazette of India on 13/01/2010, the Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, has made amendments to the Trademark Rules, 2002 (Rules). The Department has made Indian trademarks freely available for public search from the Registry’s website.

Although the free trade mark search was made available from 13th January 2011, the initial results obtained from the website were far from satisfactory. In the public search section, there were provided three grounds, for searching similar marks namely, word mark, device and phonetics. Whereas the device and phonetic search engines were not operational, the search for word mark did not yield complete results. But the working of the IPO search website has considerably improved recently with the operation of word as well as phonetic search criteria.

The amendment aims at bringing greater transparency and efficiency in the functioning of the Registry and also to “facilitate business decisions to apply for a trademark on an immediate basis from anywhere in the world”. By the same Notification, the Department has also increased the Official Fees for filing one trademark application in one class from current Rs.2500/- to Rs.3500/- and corresponding changes in the Rules.

The ongoing cascade of changes at the Indian Trademark Registry reflects its resolve to expeditiously adopt the International System for Trademark Registration in accordance with Madrid Protocol. The Indian Parliament has already passed the Trademark (Amendments) Act, 2009 to introduce the Madrid System in Indian Trademark laws. The Amendment Act is likely to be notified by the Central Government once all necessary systems and procedures are laid down at the Registry.

Following the judgement of Honorable High Court of Delhi in the case of Haldiram India (P) Ltd. Vs Union of India, the functioning of the Trade Marks Registry has been re-organized with the objective of establishing complete transparency and professionalism in the Registry. The Office of the Controller General has issued a Public Notice on 06/5/2011 enclosing a series of office orders detailing the re-organization of the Registry, where the functions of the Trade marks registry have been streamlined into 11 sections coming into effect from 02/05/2011. Each section has to carry out its functions purely on order of seniority.

Under these office orders, while the Trade Mark office functions relating to Examination of applications, Issuing Exam Reports and Considering reply to exam reports has been centralized at Mumbai, functions relating to Receipts and EDP section, Inspection and records, Opposition and Rectification Matters, Show-cause hearing notices, Assignments, Renewal and Registered user section are assigned to a separate section in each Registry under the supervision of an Officer in charge who is responsible for monitoring time bound implementation of the measures undertaken by the Registry to improve efficiency.

About the Author: Mr. Mohinder Vig, Senior Trademark Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: iiprd@iiprd.com.