Undue Abandonment of Trademarks in India

An unexpected notification issued by the Patent and Trademark Office (PTO) of India in recent weeks caused an uproar among trademark owners in that country. Through said notification, the Trademark Office reportedly mass abandoned approximately 160,000 trademark cases, while in the four previous months it had only proceeded with the abandonment of around 8,000 cases representing thus an increase of approximately 2,000%!

To better understand the reason of so surprise it is necessary to understand the trademark prosecution system in India.

Differently from Brazil, after the examination of formalities, the registration request goes to the local Examiner for analysis and opinion regarding the registrability of the mark. At this point – before any opposition – the Examiner proceeds with the analysis of the case (formal examination of the application, analysis of distinctiveness and of prior registrations) and decides about the registrability of the trademark.

If the opinion is positive, the mark is published in the Official Journal and if no opposition is lodged within the statutory period of four months it will turn intoa registration.

However, if the opinion is negative the applicant is notified of the decision and the deadline for submission of the response starts. It is important to note that the term does not begin from the date of the decision is uploaded, but from the date where communication is received by the applicant. This is the point where the whole mess began. As in Brazil, Indian trademark law predicts the definitive closure of a case in the applicant fails to manifest and / or meet the formalities required for the progress of the case.

The Indian PTO in an attempt to eliminate the backlog on the examination of merit on the trademark cases, decided to abandon on their own initiative, all the applications, recent or old, that had, in its historical, no response to the formal requirements. That is, in theory, abandonment of cases in which applicants had the opportunity to express themselves, but failed to comply with such task, as a result they accepted the punishment of having their requests abandoned as soon as the deadline for meeting the requirement expired.

Well only this had occurred, there would be no problems. However, along with the cases that should be effectively abandoned the Trademark Office also abandoned in the same batch, thousands of other processes by mistake and without the consent of the respective applicants who had indeed filed replies within the deadline and even those who were not even notified that there was any pending matter to be solved !!!

Dissatisfied with such a situation Indian IP law firms joined forces and questioned the PTO decision before the Supreme Court of New Delhi, which suspended all trademark abandonments, published after March 20, 2016. This decision was based on their understanding that no measure that may result in the abandonment of a trademark application may be adopted without a prior notice to the applicant. This measure will be in force until May 12, 2016.

In contrast, the Indian Trademark Office issued an official statement in which it set a deadline of April 30, 2016 for applicants who felt that they were disadvantaged by the undue abandonment of their cases to inform them and have the opportunity to recover their trademarks. Still, it is a very delicate situation and that certainly causes concern to trademark holders in that country, since the deadline is too short, especially for the presentation of evidence.

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