India: Judicial Analysis Of Order Of Abandonment

INTRODUCTION:

The office of the Controller General of Patents, Copyrights and Trademark on 04.04.2016 issued a public notice abandoning nearly 200000 trademark applications which were due for processing at various stages. The said act by the TMR resulted in outrage amongst several TM Agents and Applicants. Despite having a well-established and detailed procedure which has been laid down elaborately in the in The Trade Marks Act, 1999 and The Trade Mark Rules, 2002; the actions taken by the TMR in the present situation is said to be erroneous.

The reasons for the mass abandonment of the applications have been cited in the order of Registrar published on the official website as:

"It was clearly mentioned in the examination report that if no reply is received or a request for a hearing is applied for within the above mentioned stipulated time, the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of The Trade Marks Act, 1999"

The applications have been said to be abandoned in light of the Rule 38 (5) of the Trade Mark Rules which specifically speaks that "if no reply or correspondence to the examination report is received within one month from the date of issuance of the report, the application shall be deemed to have been abandoned".

The course of action undertaken in the present scenario is said to be wrong and erroneous as the opportune parties have not been given a proper scope to represent their matter. The India Constitution has provision which speak of equality before law and principle of natural justice. It has noteworthy that, this act of abandonment has been carried out without giving the applicants a chance of being heard and hence amounts to violation of law and basic fundamental principles.

In the course of Trademark registration, the next step after issuing of an Examination Report is to file a reply to it, then if the examiner is satisfied with the submitted reply to the report he shall "advertise the application before acceptance" or schedule a hearing in case he is not satisfied with the examination report. On the contrary the act of abandonment has been carried out without notice which makes the entire system arbitrary and questionable. Another factor which seeks attention is that as per the procedure prescribed and established as per the Trade Marks Act, 1999 by the Examination Reports so generated by the Registrar have to be delivered by Post and upon receipt of the same, the reply to the said report has to be filed within one calendar month from the date of receipt of such application. It has been a common affliction of several Trademark Agents and Applicants that the examination reports were never delivered to them and that they're unable to further take any actions in the matters. It has occurred on several instances that the applicant of the trademark is awaiting response from the registry of trademark in the pertaining matter and even after several months / years of waiting no response is being given. However, it is surprising to see the online records of several trademark applications being read that the examination report has been delivered and the notice of abandonment is served because no response was given from the applicant in relation to the examination report. The situation is so alarming that several trademark applications have to be vigilantly tracked online and yet no response from them is observed.

PROVISION RELATED TO ABANDONMENT OF APPLICATION:

The act of abandonment of trademark is an extreme step and has to be taken after keen perusal and in unavoidable circumstances. Before a mark can be abandoned, proper communication to the applicant/ agent must be issued and ample opportunity must be given to reply to the objections/allegations raised in the said mark. Abandonment u/s 132 of the Trade Marks Act, 1999 reads:

"Where, in the opinion of the registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this act, the registrar may by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, that the application as abandoned, unless the default is remedied within the time specified in the notice" The very reason of carrying out abandonment is to establish the purity of the register, i.e. to enhance the functioning and reliability of the office, but the actions taken here have been showcased rash and negligent behavior of the TM Registry which has caused unnecessary trouble and hardship to several applicants of the trademarks.

In case of NWL France Services SAS vs. Deputy Registrar of Trademarks1, the Intellectual Property Appellate Board (IPAB) has criticized the Trademark Registry for their indifferent and irresponsible attitude towards the applicants. This case highlights the lack of transparency and failure to respond to the correspondence of the applicant. 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 behaviour from the administrative authorities may result in severe financial losses and mental agony to the applicant.

In the case of K S Raja VS The Registrar OF Trademarks2, adjudicated by the IPAB, the applicant had filed for an application, which upon further processing was advertised and subsequently opposed; however, the notice of opposition was not served the applicant did not submit any reply in the stipulated time period. Without giving any notice, communication, correspondence the application for the mark of the applicant was abandoned. The IPAB considering the facts and circumstances of the case was of the view that the notice of opposition was served, whereas no notice of any form was served. Upon further discussion IPAB reached upon conclusion that the order of Abandonment passed against the mark of the applicant in the given scenario was unsustainable.

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. . . "The objective for a procedure to be established is to maintain a protocol and to stimulate equality. Like goodwill of a trademark the trust and belief of the people is vested in the law as long as it keeps functioning as per the established guidelines. Any violation or misuse shall cause an irreparable dent and erode the trust and faith vested by the people in the said process. Being internationally compliant is necessary but secondary to the primary responsibility of functioning in an error free manner at the national level.

In the case of Institute of Cost Accountants of India (ICAI) V The Registrar of Trade Marks, Mumbai & the Registrar of Trade Marks Kolkata3 the Hon'ble Bombay High Court held that "the Registrar of Trademarks (Respondent) was bound to communicate any objection or proposal in writing to the Applicant. However The Respondent admittedly did not do so. Placing the notice on the web site does not constitute compliance with Rule 38 (4) of Trade Mark Rules, 2002. The Respondents had not indicated anything that obliged the Petitioner to inspect the web site on a daily basis. Nor did they indicate any rule or practice by which the Petitioner was bound legally to take notice of anything that is posted on the Respondents' webs ite. Rule 38 (4) by itself does not require an Applicant for registration to inspect the Respondents' web site. The Petitioner therefore could not be imputed with the knowledge of the said letter dated, 19th September, 2011. Mere posting of the letter on the web site does not constitute communication of the objection or proposal in writing as required by Rule 38 (4)."

Therefore it is not wrong to say that the order of Registrar of Trademarks abandoning the numerous applications with providing an opportunity of being heard was not only harsh but also bad in law.

Incorporating and rectifying the internal laws and processes are more important than encompassing to global changes. 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 legislation enacted should also be incorporated and visible in the actions of the offices as well. Then only can we reach the expectations of our legislation and strengthen the faith of the general public in the administration.

CONCLUSION:

The objective for a procedure to be established is to maintain a protocol and to stimulate equality. Like goodwill of a trademark the trust and belief of the people is vested in the law as long as it keeps functioning as per the established guidelines. Any violation or misuse shall cause an irreparable dent and erode the trust and faith vested by the people in the said process. Being internationally compliant is necessary but secondary to the only primary responsibility of functioning in an error free manner at the national level. Incorporating and rectifying the internal laws and processes are more important than encompassing to global changes.

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.

Footnotes

1 In the Intellectual Property Appellate Board, M.P.No. 105 of 2013 in SR.No. 340 of 2012/TM/MUM.

2 SR.NO.346/2013 INOA/44/2012/TM/CH, (No.222/2013)

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