On 31 March 2016, the Indian Registrar of Trade Marks
announced the mass abandonment of nearly 200,000 trade mark
applications and oppositions. The decision was taken with the aim
of clearing the mounting backlog of cases.
The applications were purportedly abandoned for non-filing of
responses to examination reports and non-filing of
counter-statements in oppositions. Unfortunately, the Registrar
failed to conduct proper checks as to whether the examination
reports/opposition notices were properly served on the Applicants,
or whether submissions or other documents filed in response were
entered into the "internal module system" at the
Registry. This oversight resulted in the majority of cases being
Following objections from applicants and agents, the Registrar
issued a Public Notice on the TMR India website on 4 April 2016
acknowledging the fact that applicants may not have received
examination reports and that applications/oppositions may have been
abandoned despite the proper submission of responses and
documentation. The Notice allowed applicants and their agents until
30 April 2016 to submit representations and supporting documents
related to any wrongful abandonment.
However, on 5 April 2016, in response to a writ filed by the
Trademark Attorneys Association regarding the action of the Trade
Marks Registry, the Delhi High Court temporarily stayed all the
abandonment orders, pending a hearing on 12 May 2016. In compliance
with the order of the High Court, the Registrar issued a further
Public Notice on 11 April 2016 indicating that the abandonment
orders for individual trade mark applications passed by the
Registrar after 20 March 2016 were set aside and that aggrieved
applicants or their agents can file a reply to the examination
reports. However, it is unclear as to what deadline applies to the
In response to this arbitrary action by the Indian Trade Marks
Office, Shelston IP conducted urgent status checks with our Indian
agents of all pending applications and oppositions of our clients,
and any affected case(s) have been reported to our client(s).
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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