India: IPAB Admonished The Trademark Registry

Last Updated: 11 September 2013
Article by Vaibhavi Pandey

The arguments related to the pendency and backlog of proceedings in the Trademark Registry or the cases where its negligence and indifference have been pointed out by the courts and tribunals are no more new or unique to us. Once again, in its decision dated 5th June, 2013 in the matter of NWL FRANCE SERVICES SAS vs. DEPUTY REGISTRAR OF TRADEMARKS, the Intellectual Property Appellate Board (IPAB) has chided the Trademark Registry for their indifferent and irresponsible attitude towards the applicants. In the order dated 5th June, 2013 Hon'ble Smt. Justice Prabha Sridevan in clear and distinct words termed this case as "a classic case of official indifference." This case throws light on the lack of transparency and failure to respond to the communication letters of the parties on the part of the Trademark Registry.

The factual circumstances in which the present case arose were: The applicant applied for the registration of his trademark "WATERMAN" in class 16 on 14th May, 1992 as a mark to be associated with the trademark no. 147630. The application was published in the journal of the Trademark Registry on 8th January, 2001 with the disclaimer stating that the registration will give no right to the exclusive use of the letter 'W' except as substantially shown in the representation. The second respondent in the above case filed a notice of opposition in March, 2001 under the provisions of Section 21 of the Trademarks Act, 1999. As per the provisions of Section 21 of the Act, the Registrar is required to serve a copy of opposition to the applicant and the applicant is required to file a reply to that opposition within a period of two months failing which his application shall be considered as abandoned. However, no such notice was served to the applicant by the Registrar and three years later, in the year 2004, the applicant came to know about the said opposition through the online status of the application available on Registry's website. Through a letter dated 15th June, 2004, the applicant stated that three years have elapsed and they have still not received any copy of opposition. The Registry never responded to the letter of the applicant, in addition to that the status of the application as observed by the applicant in the year 2008 was appearing as abandoned. On 23rd July, 2008 the applicant again addressed a letter to the Registrar stating that the abandonment was wrong and immediate steps should be taken to consider the matter. The applicant also filed an application under The Right to Information Act, 2005 and wrote several other letters to the Trademark Registry but no communication or reply was ever made by the Registry to the applicant.

Later, on 29th June, 2011 the opponents wrote to the Registrar that they and the applicant have arrived at an agreement and the opponents now want to withdraw the opposition. This letter was also received by the Registry on 8th June, 2012, almost after one year in May, 2012 the applicant found from the online status of the application that the Order of Abandonment was passed by the Senior Examiner on 3rd December, 2009.

The IPAB expressed its shock and surprise to the irresponsible behavior of the Registry. The documents filed by the applicant clearly showed that he has not left any possible way to find out what happened to their application but they could not find even a single response from the Registry in the period of these 10 years. The Board highly criticized such an irresponsible attitude by an authoritarian body with quasi-judicial powers. One of the most important and mandatory duty of the Registrar is to reply to the letters precisely and as soon as possible. Another very shocking fact is that the status of the application was shown as abandoned when checked in July, 2008 and the order of abandonment was passed in 2009. What kind of anticipation is that? Was the order presumed by the Registry almost a year earlier to which it was actually passed? Keeping in view all the above ambiguities, the learned Chairman asked for a reply from the Trademark Registry seeking answers on the following issues-

  • How even before the order was passed the online status treated the mark as abandoned? One of the most dubious acts of the Registry that have emerged in this case is the question as to how can an order be presumed by the Registry a year before it was actually passed. What kind of anticipation is this? An order dated 2009 and its consequences imposed in 2008 itself? Such actions on the part of government offices not only make us ponder about the case in issue but also alarm us as to how many other such cases can possibly be lying with the registry. How many other status updates have merely been "ANTICIPATED" by them? The answers lie with the Registry itself.
  • Why none of the letters written by the opponents received any reply? This is a practice which almost everyone dealing with the government offices are familiar with. The letters sent to them are usually addressed after a very long period or they are lost somewhere in the bulk of letters pending over there. But this is not the question of one or two letter, almost a series of letters have been sent to the registry by the applicant in the period of 8 long years i.e. from 2004 to 2012 which according to the applicant have not received any response from the registry.
  • Why even after the opponent has indicated their opposition was withdrawn no communication was sent regarding order of abandonment? An opposed application is considered as abandoned if there is no reply to the opposition from the applicant. However, in the present case the applicant entered into an agreement with the opponents and they subsequently withdrew their application. It was the duty of the registry to communicate the present withdrawal to the applicant and reconsider their abandonment, but no such communication was ever made regarding this to the applicant.
  • Why was the order of the abandonment passed by an examiner and not "The Registrar"? As we all know there is a departmental hierarchy within which every office needs to work upon. Any order as to abandonment, rectification, opposition etc is passed by the Registrar himself. An examiner is only entitled to examine and publish the examination report of the application and not to pass the order of abandonment of an application.
  • If there is documentary proof that the notice of Opposition was communicated to the appellant or the counsel, the same shall be furnished. The registry has been given an opportunity to present any evidence or proof in case any letter or correspondence as to the Opposition was made by it to the applicant.

CONCLUSION

Discrepancies, ambiguities, such words are not new or unusual to us when we talk about government offices. As appropriately described by the IPAB, this is a "classic case of official indifference". Such cases not only create annoyance and anguish in the minds of the general public but also adversely affect their faith in the administration. Apart from this, such irresponsible behaviors from the administrative authorities may result in severe financial losses and mental agony to the applicants. In the present case, the reply of the trademark registry is much awaited as it is going to answer several questions running in the minds of the general people.

Transparency and accountability at the administrative level are the key ingredients of a democracy like India, where the government is supposed to be "of the people, for the people and by the people". The purpose of the Trademarks Act itself provides "...to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks..." But with such cases arising every other day we can say that merely setting up goals is not sufficient but the actual spirit of the legislations enacted should also be incorporated and visible in the actions of the offices as well. Then only we can reach the expectations of our legislations and strengthen the faith of the general public in the administration.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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