When Chaitanya Prasad was named Controller General of Patents,
Designs and Trademarks, he was not only replacing the visionary
Controller General PH Kurian; he was also joining an office which
is under a myriad of backlogs and pending matters along with
operational and organizational issues to deal with. Reportedly,
there were some 439,910 pending trademark applications in the year
2009-2010. Prasad has promised to reorganize the Indian
Intellectual Property Office with the aim to clear its huge
backlogs and upgrade its technology. Prasad has been holding
meetings with stakeholders to discuss the issues and demands of the
industry. As many as 13 office orders were issued by the CGPDTM
regarding reorganization of the functioning of the Trade Marks
Registry with directions for constitution and reconstitution of
several departments/sections and defining their functions and
responsibilities. This article explores some of the major reforms
that would be brought out by such notifications.
The Examination/Publication and Registration Section (EPR)
Applications are to be examined through the Trade Marks
Automation System. Each examiner is to examine at least 50
applications per day. Examination reports proposing to accept or to
advertise the application before acceptance and 20% of examination
reports containing objections to acceptance of the application
shall be randomly sent to Supervisory Examiners (SE) for their
approval. It is interesting to note that neither the Examiner nor
SE would know which reports are being sent to the SE. Five percent
of the cases approved by the SE shall be sent to the officer in
charge of the Examination Section for review and comments, along
with a daily report, would be sent to the Controller General. The
officials at the Pending Application Record Management (PARM)
sections are directed to take up at least 75 cases per day wherein
replies to the examination report have been received by the
Registry. The Backlog PARM section has also been constituted to
deal with old cases which have not been processed or updated in
Pre-Registration Amendment Section
The notification specifically prohibits the amendments seeking
substantial alteration in the trademark application. It therefore
seeks to curtail the practice of making changes in the statements
as to the use of the mark after the issuance of examination report.
The broader ramification of this notice is yet to be seen.
The Hearing Officer at the Show Cause Hearing Section shall be
allotted 300 cases on the basis of seniority of applications with
directions to dispose of at least 200 cases per month. The Record,
Inspection and Legal Certificate Section entrusted with the
responsibility of serializing of records and files along with
digitization of old records. The Amendment and Renewal Section is
directed to electronically generate O-3 notices in cases where
renewal is due to expire. From now on only authorized agents shall
be able to file the renewal, and a request for substituting an
address for service along with power of attorney shall be required
to be filed if the renewal request is not filed by them. It is yet
to be seen if similar change shall be made with respect to patent
renewals as well.
The Controller General has also taken care of innumerable
pending request for recordal of assignment, transmission or
registered user agreement and has directed the hearing officer to
dispose of at least 200 requests in a month. The Controller has
further directed the officials at Assignment and Registered User
Section to liquidate the backlog by September 30, 2012.
The functions and responsibility of the Trade Marks Registry
have been reorganized, keeping in view important issues which need
to be addressed on a priority basis including digitization, the
updating of records of registered trademarks and the liquidation of
the backlog in examination and post examination disposal. With the
specific targets set for each section and formulations of various
policies, an inclusive approach has been adopted by the Controller
General to make the Registry more responsive to the needs of right
holders. Known among his peers as tech-savvy, Prasad intends to
encourage agents and applicants to opt for online filing so that
manual errors may be obviated. With an ever-increasing number of
trademark applications filed at the Registry, impending proposed
accession to the Madrid Protocol and the demand to adopt
globally-accepted IP policies, the restructuring of the Registry is
more than called-for to increase the pace of examination and
enhance its efficiency and transparency.
Previously published in IP Analysts June/July 2012
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