Opportunity to Avoid Abandonment of Trademark Applications

The Office of the Controller General Patents, Designs and Trademarks, India issued two public notices dated February 06, 2023 (https://search.ipindia.gov.in/IPOJournal/Journal/Trademark), to deal with trademark applications pending before all their offices and expedite their disposal. Both public notices deal with the prosecution of trademark applications that were pending for mandatory actions on behalf of the Applicants in respect of either filing response to the examination report or filing of counterstatement against a notice of opposition.

Notice Regarding Examined Trademark Applications

These trademark applications were examined by the Examiners and official examination reports were issued to the Applicants, giving them an opportunity to overcome the official objections. The Applicants are required to respond to the issued examination report within one month (prescribed time) of the date of issuance of the examination report.

As per enlisted trademark applications accompanying the first public notice, around 98,900 trademark applications remain unprosecuted i.e., no response to the examination report was received/submitted before the concerned Trade Marks Registry. Under Section 132 of the Trade Marks Act, 1999 and Rule 33(4) of the Trade Marks Rules, 2017, such unprosecuted trademark applications shall be treated as ‘abandoned’.

The Applicants/owners/stakeholders have been called upon to take note of their trademark applications and in order to ensure that they are not erroneously affected by enlisting of their trademark applications which would be treated as abandoned, the said Applicant must make appropriate submissions before the Registrar of Trade Marks. In case a response to the examination report has been filed by the Applicant within the prescribed time and it has acknowledgement/stamped/non-cash receipt for submission of its response, the Applicant needs to inform the Registrar of Trade Marks by March 06, 2023 (30 days from date of public notice). The format of such an intimation email is as below:

These applications will be verified by the Trade Marks Registry and then processed as per the Trade Marks Act, 1999 and Trade Marks Rules, 2017. In case no email/ grievance is received in respect of any enlisted trademark application, the same will be treated as ‘abandoned’ and online status will reflect the same.

Notice Regarding Opposed Trademark Applications

These trademark applications were opposed by the Opponents and notices of opposition were duly served upon the Applicants directing them to file the counterstatement within the mandatory deadline of two months from the date of issuance/service of official notice upon the Applicants/agents.

The second public notice enlists around 82,700 opposed trademark applications where the concerned Trade Marks Registry has not received the counterstatement in defence of such applications within the statutory deadline of two months. Under Section 21(2) of the Trade Marks Act, such trademark applications shall be treated as ‘abandoned’ owing to non-prosecution.

Similarly, the Applicants have been called upon to take note of their trademark applications and in order to ensure that they are not erroneously affected by enlisting of their trademark applications which would be treated as abandoned under Section 21(2) of the Act, the said Applicant/owner/stakeholder must make appropriate submissions before the Registrar of Trade Marks. In case a counterstatement has been filed by the Applicant within the statutory timeline of 2 months and it has stamped/cash book/fee receipt for submission of its counterstatement, it needs to inform the Registrar of Trade Marks by March 06, 2023 (30 days from date of public notice). The format of such an intimation email is as below:

These opposed applications will be similarly verified by the Trade Marks Registry and then processed as per the Trade Marks Act, 1999 and Trade Marks Rules, 2017. In case no email/ grievance is received in respect of any enlisted trademark application, the same will be treated as ‘abandoned’ under Section 21(2) of the Act and online status will reflect the same.

These public notices deal with the issue of pendency, which has been a recurring concern before all Trade Marks Registries in the timely disposal of unprosecuted trademark applications that remain live in the Registry records. In case the trademark application has been wrongly enlisted in the list of trademark applications, proper submission in the requisite format, as above must be made on or before March 06, 2023, before the Registrar of Trade Marks.