The Delhi High Court calls upon the Office of the CGPDTM as well as various stake holders to streamline the processing of applications at the Trade Marks Registry

The Delhi High Court on October 31, 2019, in a Writ Petition (C) 11284/2019, passed directions which in effect called upon the Office of the Controller of Patents, Designs and Trade Marks through its head of office of the Trade Marks Registry, Delhi to file an affidavit detailing the various steps and processes involved in the filing of a trademark application up to grant as well as the steps included in the processing of the related forms that are filed such as in respect of post-registration formalities like renewals and assignments as well as if such requests pertaining to an application are handled by one officer or different departments. The Court also inquired whether it would be expedient to allocate a particular trademark application to a specific officer who would then process the various forms filed in respect of that application so that the familiarity of the officer with the file would enable efficient processing of the same.  The said Writ Petition arose out of the removal of a registered trademark from the Register on account of non-renewal, which was a result of the Registry sending the renewal notice to the old address of service of the Registered Proprietor as opposed to the one mentioned in the request for change of address filed later.

On being provided with a flow chart which depicted the processing of a trademark application from filing up to grant/refusal, wherein Applications are centrally examined in Mumbai as opposed to the local branches in which they are filed, the Hon’ble Court on December 05, 2019, in connected writ petitions observed that “….that there is enormous confusion in the manner in which trademark applications are dealt with inasmuch as the transmission to the Mumbai office becomes quite cumbersome as invariably in most trademark, objections are raised by the Examiner…”

The Hon’ble Court expressed its opinion by saying that the purpose of passing such directions, “was to ensure that the various forms which are filed by the applicants are processed in a chronological manner and preferably by one officer/one desk in order to ensure that there is no lack of coordination in the various steps that are undertaken in the processing of the same”. The Hon’ble Court was in favour of passing directions whereby one application would preferably be handled by one officer/desk instead of different departments handling different forms in relation to the same application. The clear purpose was to streamline the processing of applications with the ultimate aim of resolving any technical glitches arising in the processing of trademark applications by different departments/officers resulting into the likely loss of valuable rights of an Applicant.

Interestingly the Hon’ble Court also allowed the intervention of Associations of Trademark practitioners, namely, APAA, AIPPI, IPAA and IPLPA and directed that such associations and any other practitioners/stakeholders who wish to give suggestions be given a hearing, by the Controller General in order to ensure that the views of all the practitioners are also ascertained and a comprehensive affidavit is filed before the next date which is January 13, 2020. Such meetings between the Controller General’s office, the National Informatics Centre (NIC) in charge of the maintaining the technical modules of the e-register and the stakeholders are scheduled to take place in New Delhi, Mumbai and Chennai.

Debjyoti Sarkar

Having been a part of the firm for over 9 years, Mr Sarkar handles large trademark portfolios for clients in sectors of engineering, healthcare, fast-moving consumer goods, food and beverages, clothing and footwear, among others. He advises on all aspects of trademark laws ranging from availability searches the pre-filing stages through trademark clearance phases, applications, prosecution, oppositions, cancellations, maintenance of registrations to other post-registration activities. He also advises on trademark licensing and assignments. Also dealing with contentious matters concerning our clients’ foreign trade marks’ portfolios, Mr Sarkar is actively involved in matters concerning passing off and infringement actions before the courts and domain name disputes before the World Intellectual Property Organization (WIPO) and the.IN Registry. He engages in enforcement actions before the Customs Office. He is also an active member of the Copyright team and advises Authors on their business dealings with film producers in so far as it deals with adaptation rights. He is a member of INTA and APAA.

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