On the 5th of July, 2013, the Intellectual Property Appellate Board passed an order admonishing the Trademark Registry for their uninterested and indifferent attitude. The order worded by Hon'ble Smt. Justice Prabha Sridevan, in no uncertain words, speaks of the deep malaise in the Trademark Registry that has led to them not fulfilling their statutory duties.
The factual matrix in which the order arose was thus: The appellant had applied for a trademark WATERMAN in May 1992. An advertisment with the caveat that the registration would not give the appellant the exclusive right to use the letter W except as used in the representation was published in the Trade Marks Journal in January, 2001. The second respondent filed a Notice of Opposition in March, 2001 under Section 21 of the Trademarks Act, 1999. Under Section 21(2), Trademarks Act, the Registrar is required to send a copy of the Notice of Opposition to the applicant, the appellant in this case. However, this was not done by the Registrar and it was only in 2004, three years after the second respondent filed the Notice of Opposition, that the appellant became aware that their application had been opposed from the Trade Marks Journal. The Counsel for appellant sent a letter to the Registrar regarding this issue.
Not only did the appellants not receive a response from the Registry, but they also became aware in 2008, on checking the Online Status Facility that their application had been declared as abandoned. Under Sec. 21(2), Trademarks Act, once the Registrar sends a copy of the Notice of Opposition to the applicant, the applicant is required to file a counter statement within two months of receipt of the copy of the Notice of Opposition. If the applicant fails to do so, he/ she would be deemed to have abandoned his/ her application.
As the appellant hadn't received a copy of the Notice of Opposition in the first place, they wrote to the Trademark Registry stating that the abandonment was wrong and requesting the Registry to take the necessary steps to restore the application. The appellant also filed a RTI application and received the response that the necessary investigation was ongoing. The counsel for appellant wrote to the Registry a series of letters in the period from 2009-2011, none of which elicited a response from the Registry.
In June, 2011 the second respondent wrote to the Trademark Registry stating that they were withdrawing their opposition. In May, 2012 the appellants found online an order of the Senior Examiner of Trademarks dated 3rd December, 2009 which stated that their application was to be treated as abandoned. Within three months of becoming aware of this order, in compliance with Sec. 92, Trademarks Act, the appellant approached the IPAB.
The IPAB noted shock and surprise at the non-responsive attitude of the Trademark Registry in this matter. Justice Sridevan noted that even after the 2009 order of abandonment, the Registry had not replied to any of the appellant's letters. The IPAB stated that the Registry, as an authority vested with quasi-judicial powers had a duty to respond to parties complying with the statutory requirements and following the procedures specified therewith. The IPAB has posed five questions to the Registry, one of which is regarding the complete absence of communication by the Registry as a response to any or even one of the appellant's letters.
The remaining questions mainly dealt with the various discrepancies that could be observed in the actions taken by the Registry in this matter, which includes the fact that the Online Status of the appellant's application was abandoned since 2008 when an order regarding the same was passed only in 2009. Additionally, the 2009 order was passed by the Senior Examiner and not the Registrar. The IPAB while asking the Registry to furnish documentary proof that a copy of the Notice of Opposition was sent to the appellants or their counsel also asked for reasons why there was no communication to the appellants even after the second respondent withdrew its opposition in 2011.
The IPAB held that the appellants application could not have been treated as abandoned if there was no evidence to show that they had been served a copy of the Notice of Opposition. The IPAB has ordered the Registrar to reply to the questions posed by them and to issue appropriate orders within three months from the date of receipt of the order.
I would add to the above. The Trade Mark Officials do not respond to the letters of stakeholders is also proved from the following:
ReplyDeleteThe Rules were amended long back to give power to the TM Officials for issue of another copy of registration certificate to the applicant who has complained of having not received the Certificate when it is shown in the status that the mark is registered and the date of certificate is months earlier. There is catch in the said rule that the TM Officials would not issue the copy of the certificate when the period of renewal has expired.
There are scores of cases where the status of mark is shown as registered and the applicant has not received the certificate and is repeatedly complaining about the same, but the TM Officials do not respond. It has been learnt that in fact the TM Officials have not made any amendment/provision for issue of the certificate under this provision. So this provision becomes a useless thing.
The TM officials do not have particulars/proof of the dispatch and delivery of the certificate to the applicant, but would insist that the certificate has been sent and would refuse to issue the certificate under the said new rule and would insist upon your applying for the duplicate certificate. They would not respond to any of your letters for the same. One can conclude that TM Officials do not have ears, or they refuse to use them if they have.
The trade marks registry does not respond to any of the letters (called PUCs) of the applicants. The communication is one sided. What the officials write at the first instance, you must comply with the same in letter and spirit even if the official is wrong. Otherwise you keep on writing and you will not get any response come what may. If you have complied with the requirements in letter and spirit, even if it is wrong, your work may be done at the time whenever the TM Officials come in mood which is of course scarce.
ReplyDeleteI have heard that in one of the cases, the TM Officials had given an undertaking that they would respond to the letters (PUCs) within the period of perhaps two months or so. But I am yet to see any response from the TM Office.