Introduction
With India now ranked in the global top 10 for all three major categories of intellectual property rights (patents, designs, and trademarks), according to the World Intellectual Property Indicators (WIPI) (https://www.pib.gov.in/PressReleasePage.aspx?PRID=2072706), it follows that the Government of India – and specifically, the Department of Promotion of Industry and Internal Trade (DPIIT) – must double up its efforts at streamlining IP prosecution, and making processes more efficient and effective for all. In the trademark space, particularly, even small changes can dramatically alter the experience for stakeholders.
While problems abound, the largest elephant in the room is arguably delays. These delays are across the board, in examination, opposition matters, and the appointment of show cause hearings, and impact everyone, including applicants, attorneys, and even in-house legal teams. This backlog is not new but has certainly compounded over the years, and frustration is building up as timelines continue to stretch with little indication of whether things are likely to improve in the near future.
According to recent reports, with the consistent rise in the number of applications being filed each year, the government has initiated discussions on revamping the trademark framework. The DPIIT is reportedly working on amendments to the Trademark Rules, 2017 with the stated objective of reducing pendency, fast-tracking registrations and simplifying procedures.
Well-intentioned amendments are always welcome, but they serve no purpose unless actually implemented. At the very least, the speed and intent with which these new rules are brought into effect must not mirror the current pace of operations at the IP Office. Otherwise, it will just end up being another reform on paper, with little on-ground change.
The DPIIT's discussion agenda on the trademark amendments has not been made public as yet, but this is a good opportunity to wishlist some of the matters that could do with urgent attention from the authorities:
- Expedited Applications: The law provides for the filing of expedited applications. But in practice, such 'priority' applications are not examined or heard on priority basis at all. If the Trademarks Registry is unable to hear these applications on priority basis, the purpose of the facility is lost. It is particularly frustrating that the Registry charges additional fees,e., about four times the regular fee, for such applications, without providing the corresponding service. Prosecution reform on this front could entail either appointing a dedicated department/team to examine such applications, or the automatic pushing up of such applications as priority for examination.
- Examination Timeline: The examination timeline of newly-filed applications was earlier around 2–3 months. In other words, until some years back, if you filed an application, you could be assured that it would get ordinarily processed within 8-12 weeks. However, this period has now stretched to 8–10 months, and in some cases, longer still, even for marks with no objections or prior marks to compare with. The Registry could consider assisted adjudication methods, by using appropriate systems to identify the registrability of a trademark, and process non-contentious ones quicker.
- Trade Mark Application Queue List: Recently, the Registry introduced a tool on its website which allows applicants to track expected dates for examination or show cause hearings. In other words, it operates as a tentative calendaring estimate. But projected timelines are often absurd and inconsistent with the Registry's own (desired) best practices, e.g., showing 200+ days in some cases. Prospective applicants, already burdened with government fees and legal fees, can be thrown off with this added time and cost uncertainty.This is a clear example of a well-intentioned tool /service that is effectively dysfunctional. The marks of a sound public service delivery system are clarity, certainty and consistency, and the Registry must make efforts to restore trust in the system through ensuring that timelines are predictable, reasonable, and fair. With proper internal process re-engineering, the Registry should be able to determine the despatch of examination reports and scheduling of hearings with reasonable ease. Ideally, at the time of filing itself, an applicant should have a definite indication of the stages that their application will go through and how long they will take, analogous to pre-litigation procedural hearings that set expectations of timelines for dispute resolution. From a behavioural point of view, this also acts as a nudge, prompting a commitment to stick to the timeline from all sides, including the Registry, the applicant, and the agent.
- Well Known Trademarks: The Registry provides a special service to file for well known trademarks, but these applications also meet the fate of others, getting lost in the quagmire of bureaucratese and additional paperwork (since these are 'special' marks). If such an application has be to listed for show cause hearing, there is no clarity as to when the hearing will be appointed, or at what stage such a hearing will take place. There is no scope for communication or explanation. Similar to expedited applications, these too cost an extra administrative fee, but without the accompanying quality or guarantee of service.
- Opposition Proceedings: If a trademark application has the misfortune of running into an opposition, additional delays await. In several matters, pleadings completed 7-8 years ago are still stuck, with no new hearings scheduled. The result is that trademark owners cannot enforce their rights in a timely manner, or even move forward with their proposed usage with adequate confidence until the dispute is resolved.
Arguably, many of these issues stem from severe staff shortages, especially hearing officers and examiners. However, a staff crunch cannot be a perpetual excuse. Indeed, if that is the core problem, amended Rules must address this head on, perhaps with a staffing plan, digitisation of hearings, some degree of automation, or even outsourcing certain clerical review stages, to fix the system.
With the list of problems being as long as it can be, it is sincerely hoped that the proposed amendments to the Rules will take these realities into account. The reform must be both procedural and infrastructural and not just limited to rulebook-level changes. Stakeholders are not just looking for new provisions, they want accountability, transparency, and speed.
It is hoped that along with this proposed overhaul, the DPIIT also prioritises the resourcing of the Trademark Office adequately because the strength of our IP regime ultimately lies in how efficiently it is run.
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.
