India: Indian Trademark Office: A Journey Towards A Better Future

Introduction :

For decades, the Indian Trademark Office was termed as the slowest office in terms of getting a trademark registration. The scarcity of staff combined with the lackluster attitude of the Officials working had given Indian Trademark Office a tag of being the least efficient office till early 2000's. Then came the transformation period wherein the government changed the rules of appointment of the Controller General (CG) in the year 2009 and an 'Indian Administrative Services (IAS)' Officer took over the reins for the first time. When Mr. P. H. Kurien was appointed as CG of the Indian Patent and Trademark Office, there was a lot of pendency and lack of transparency in the working style of the Office. The very first step taken by him was digitization of all the files related to Patent and Trademarks. From that point onwards, the Indian Trademark Office has not looked back and is now going at a steady pace wherein there is less pendency and adequate transparency.

Transformation in Indian Trademark Office

Availability of free search of trademark database:

Before adopting or filing a trademark, a proprietor needs to ensure that the mark is available. Earlier a trademark search, after payment of an official fee of INR 500, used to take more than 2 months . It was a big headache for an owner as he was required to wait for a long time for the search report to reach him and that too after a lot of hassle. In the year 2011, Indian Trademark office made database available for the general public and trademark search become free. This has helped tremendously as people file trademark after getting it thoroughly searched and making sure that the applied trademark is available.

Transparency: With the digitization of the Indian Trademark Office, all the documents related to the trademark applications are available online without any hassle. Even the orders passed by the hearing officers are available online, obtaining a copy of which was earlier a hard task and an Applicant was required to either visit the office numerous times or had to pay under the table to get a copy. The availability of all the documents and orders online helps the Applicant's in checking the progress of the trademark registration without expending much effort. This has also helped in uplifting the image of the office in the eyes of the Foreign Applicants, as they can also keep a track of the progress of their trademark application without relying on the local agents, who in past took them for a ride due to lack of transparency.

Introduction of Online filing: With the introduction of Madrid protocol and online filing, Indian trademark office had taken a long leap of faith amongst the Applicants. Not only this helps businesses and applicants in saving time and effort but it has also helped trademark office saving valuable resources by utilizing the staff in other processes where they are required rather than spending time in time-consuming processes of filing of application such as making data entries in the database, maintaining physical files etc which were eating into a lot of resources.

Appointment of new staff: In the recent years, the government has undertaken the task of appointment of the new staff at the Indian Trademark Office as same was required due to the increasing workload of the officials and manifold increase in new filings due to increased awareness and knowledge of IP rights among the business class. People now are more diligent about their IP rights and try to secure them first hand before moving forward with establishing business. Government is also giving push to manufacturing in India and promoting the entrepreneurs to establish their businesses through various schemes like Make in India, Start-up India and Digital India. This has led to a sudden surge in seeking protection of IP rights be it a Patent, Trademark or Copyright etc., as people want to protect the rights first and then move forward. With this, the workload at the IPO of India has increased tremendously and requires a larger work force. During the last five years the situation regarding the work force at the IPO has improved and new staff at all level has been hired. Due to this, the situation at Trademark Office has improved up to a level that now a trademark gets registered within six months from the filing.

1. Least pendency: As explained above, with the improvement in the number of people working in the IPO, the pendency at the Indian Trademark Office is at its lowest. Each department of the Registry consciously works towards the reduction of pendency. A number of drives across all departments of the registry are undertaken where the applicants are called upon to provide the necessary documents so that a pending action can move forward. There are numerous drives taken up by Indian Trademark Office such as taking up post registration, show cause matters and pending replies to the examined applications in order to reduce pendency.

2. Introduction of new Trademark Rules: The new Indian Trademark Rules of 2017 have been adopted by Indian Trademark Office in the month of March and subsequently more procedures have been undertaken or streamlined to make Indian Trademark Office an efficient office. The outline of the new Rules of 2017 is to make Indian Trademark Office a paperless office and to have proper procedures in every department. The effort is being made in the new Rules to encourage people to go for online filing which is helping in improving the services at the Indian Trademark Office. A 10% Discount is provided to an Applicant if the application is filed online and same is also easy to access.

3. Timeline for the process: With the introduction of new Rules of 2017, effort is made by the legislature to introduce a timeline for each procedure. Earlier an Opposition proceedings would go on forever but the new Rules of 2017, lays a special focus on the speedy redressal of disputes amongst the parties embroiled in a dispute for the trademark. Hence, under the new Rule 50 of 2017, it is mentioned that no party shall be given more than two adjournments and each adjournment will not be more than thirty days. Further, effort has been made to reduce the timeline for procedure of registration to a minimum and there are lots of cases where this procedure has been completed within 6 months. The Opposition proceeding under the Rules 50 to 52 of 2002, had provisions related to the extension of time but the same are now done away with, under the new Rules of 2017. There are no provisions related to the extension of time for filing evidences in the Opposition proceedings. Hence if a party to the proceeding does not file evidences or fails to intimate the Registrar that he wishes to rely on the documents already filed, within stipulated time period provided under the Rules 45 to 47 of new Rules of 2017, then it will be deemed that he has abandoned his application/opposition.

4. Proper procedure to declare trademarks as wellknown: Under the new Rule 124 of 2017, an owner of a trademark can apply to Indian Trademark Office, to recognize his trademark as a well-known trademark by paying an official fee. Until now, a trademark could be recognized as a well-known trademark by a court in a proceeding related to trademark infringement. Now, an owner of a trademark can file an application to this effect, along with all the evidences and documents on which the Applicant wants to rely in support of his claim. The Registrar will go through the application and may ask for the additional documents and evidences in this regards from the Applicant and if satisfied with the claim, can determine the trademark as a wellknown Trademark. The Registrar can ask public for objection against the said application and within 30 days any person can object the application. The Registrar on acceptance of a trademark as a wellknown trademark will publish it in Trademark Journal.

5. Least interference of Officials: With technology taking over most aspects, the India ITO is also moving in the same direction and all the procedures in the Indian Trademark Office are now being monitored and processed with the help of special software. All the procedures are maintained with the help of this software and the human intervention relating to the appointment of hearing, allotment of files etc, is now at a minimum. As everything is published online, there are less chances of getting an arbitrary or an out of turn order. With the fear of somebody constantly monitoring, the official are more diligent about work and chances of fiddling with the procedure is now minimum.

6. Email now a way of Official communication: Under the new Rules, the Indian Trademark Office has also recognized email communication as the official mode of communication. For the same, an Applicant/Agent has to provide an email address at the time of filing of an application and all the official communication will be sent to the Applicant/ Agent on this email. The deadline to respond to the official communication will be counted from the date of communication of email to the Applicant/ Agent. This is also a step forward in the direction of making Indian Trademark Office a paperless office as an Applicant can also file replies to the examination report and other communication from Indian Trademark Office through online portal of Indian Trademark Office.

The changes mentioned above have not taken place overnight and it took a lot of effort from the stakeholders and government to bring Indian Trademark Office to a position where it can compete with any international office. Although work is still far from over and there is a scope of improvement in each department of Indian Trademark Office and all the parties related to the office. All should work in consonance with each other so that registration of trademark in India should become a smoother procedure rather than a hassle which people faced in past.

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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