by Hana Onderkova
Head of IP - European Business Technology Center
Growth of the trade mark filing in India and its challenges
Over the past decade, there has been a substantial rise in trademark applications filed in India. As a matter of fact in 2020 India overtook Japan in number of filed trade mark application and become fifth largest trade mark filer worldwide.[1] With the ever increasing number of applications how does the Trade Mark Registry cope with this growth?
To answer this question, we need to look at the recent past. In 2016, the Indian government formulated a National IPR Policy to strengthen the Indian IPR ecosystem including speeding up registration proceeding and reinforcing enforcement mechanisms and processes for all IP rights. Before implementation of this Policy, processes of application, examination, hearing, and disposal of trade marks were all done in physical/offline mode, and thus there was a significant delay in securing the registration due to backlog of the trade mark applications at all stages of registration.
As result of the Policy implementation, the Trade Mark Registry overhauled its internal processes, increased its use of technology and boosted manpower which resulted in improved efficiency of the proceedings and accuracy of records at the Registry.
The trade mark registration process nowadays
A trade mark which is to be registered at the Trade Mark Registry needs to meet two essential requirements: the trade mark must be capable of graphical representation and it must be capable of distinguishing the goods or services of the trade mark holder from those of its competitors. Moreover, the trade mark must not similar to an already registered trade mark, or to a trade mark for which an application is already pending with the registrar.
Quick analysis of the process for trade mark registration at the Trade Mark Registry, we can see that the applications are examined in two stages, which consist of firstly formality checks and then a substantive examination of the applied trade mark in itself. The formality check is performed immediately after the filing of the application to ensure that all formal requirements are met (i.e. all the paperwork has been filled in properly and all necessary documents have been presented as part of the application). Thereafter, the application is subjected to extensive scrutiny on absolute and relative grounds on basis of which the Examination Report is issued by the Registry. The applicant is required to submit a response to the Examination Report within 1 month of its issuance. If the applicant fails to address objections in the Examination Report, the Examiner schedules a hearing to submit oral arguments in support of the application.
However, if the Examiner is satisfied with the response, the mark is published in the Trade Marks Journal for public scrutiny. Following this publication, any third party which would like to oppose the mark, can file an opposition within four months of the date of publication. If no opposition is filed by a third party, the mark the proceeds for registration.
Challenges and improvements in the trade mark registration process
There is still space for improvement when it comes to examination, hearing proceedings and oppositions which lead to procedural delays in registration of trade marks and resulting higher costs for applicants. In 2020, the Trade Mark Registry reported around 450 000 pending applications in various stages of registration. Having said that, for new applications it has announced that the average time from filing to examination is only 40 days, showing notable improvements[2].
When it comes to oppositions by a third party, there is close to 200 000 pending oppositions which the Trade Mark Registry will have to deal with in near future. The extent of the problem has been recognised by the Delhi High Court which has ordered the Trade Mark Registry to come up with a strategy to address this backlog of pending applications[3].
On the brighter side, the online servicing of notice of oppositions and counter statements and filing of evidence in support of opposition/application via e-mail has brought significant efficiency to the entire process. In the instance that the opposition on the mark is not defended by the applicant, the Registry is issuing abandonment orders electronically.
Conclusion
In effect, the Registry has come a long way to make the registration of a trade mark as fast and simple a process, especially with the adoption of online services. However, it has still a long way to go to match pace with the international standard. The same can only be effectuated with more strength in terms of manpower and infrastructure and this is where the role of the government comes into play. With more foreign investors interested in the Indian market, the ease of doing business becomes a critical factor for the country to be able to encash the opportunities. A fast and simple mechanism to secure the IP rights and in term to secure the business, is tantamount and a need of the hour.
[1] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2021.pdf
[2] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2021.pdf
[3] Dr. Reddy's Laboratories Limited vs. Controller General of Patents Designs and Trademarks and other connected matters (CGPDTM): https://indiankanoon.org/doc/106500551/
Details
- Publication date
- 14 June 2022