201911.14
13

Delhi High Court intervenes to streamline functioning of Trademarks Registry

The Trademarks Registry recently received a directive from the Delhi High Court to lay down the Standard Operating Procedures (SOPs) to be borne in mind by the officials working at the Registry to improve efficiencies and facilitate the process of prosecution and other related matters.

The directions have been issued in the case of writ petition filed in the Delhi High Court titled Asianet Star Communications Pvt. Ltd. v/s. The Registrar of Trademarks WP no. (C)11284/2019 vide order dated October 31, 2019. In the said case the Hon’ble High Court noted that due to lack of coordination amongst departments of the Trademarks Registry that deal with different forms such as renewal request/s and post registration request/s, there is huge inefficiency in the processing of the trademark applications. The Court further observed that the processing of a trademark application should be efficient and timely.

In this case, the Trademarks Registry:

  1. failed to take on record the application for change of address (Form TM-34) despite the passage of ten years;
  2. Since the change of address was not processed, the renewal notice i.e., the O-3 notice was sent at the wrong address of the Petitioner;
  3. As a result the Petitioner’s trade mark was abandoned for non- renewal;
  4. To compound the confusion the renewal (O-3 notice), though dispatched to the incorrect address, was not even uploaded on the website of the Trademarks Registry, contemporaneously;
  5. The said O-3 notice was not visible to the counsels for the Petitioner as of May/June, 2019, when inspection of the file was requested; and
  6. ‘Uploaded Documents’ chart, visible on the Registry’s website, show that renewal intimation (O-3) notice was uploaded only in July, 2019 i.e., a gap of almost three years.

The court noted that the Trademarks Registry need to provide for proper procedure by employing efficient and effective methods of communication between various departments which will result in transparent and seamless functioning. Accordingly, the Court directed the Head of Trademark Registry, Delhi, to file an Affidavit detailing the following aspects:

  • the current procedure for processing of trade mark applications, including the various steps starting from filing, acceptance of fee, allocation of application number, examination and generation of examination report, acceptance of responses, hearings held, if any, orders passed on the said files, grant of trade mark registration certificates, change of address, change of name, processing of licences and assignments, renewal notices, etc. and whether they are dealt with by one officer or by different departments, even if they relate to same application. The same may be explained by means of a flow chart;
  • the manner and procedure for uploading of documents which is currently being followed at each and every stage by the Trade Marks Registry;
  • whether it is considered efficient 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;
  • insofar as post-registration formalities, such as renewals, assignments, etc. are concerned, whether the same should be dealt with by a separate department and if so whether post registration formalities of specific registered trademarks ought to be handled by a single officer.”

The matter is now listed for further hearing in December and it will be interesting to keep a watch on how it shapes up.

Our comment

While digitisation has helped to drive efficiency in functioning of the Trademarks Registry, the challenges remain in clearing backlog of post registration changes (change of name, address and assignments) and opposition cases. Further there is a pressing need to prepare flow charts as to functioning of trademarks registry that should be shared with stakeholders. A standard naming convention for uploaded documents is also a need of the hour. It is widely expected that the court’s intervention may help to streamline the processes.