With opposition cases on trademarks stacking up, the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), generally known as the Indian Patent Office, has promised to settle around 200,000 applications that have ballooned since December 2020 on priority basis by 2025. Concerned over delays in the resolution of pending opposition petitions on trademarks, the industry worried about further lengthy hold-ups seriously tarnishing the country’s business image.
With Delhi High Court (HC) giving CGPTDM a rap on the knuckles, the agency under the Department for Promotion of Industry and Internal Trade has drawn up a plan of action (PoA) for quicker disposal of tardy applications.
“The office is targeting the disposal of approximately 196,000 applications filed until December 2020 on priority basis by allotting these applications among authorised officers by the end of 2025. As far as 27,542 oppositions filed after 2020 are concerned, they will be taken up in keeping with their maturity for hearing by allotting them for disposal among the deputy registrar and above,” the CGPDTM said in its submission before the Delhi HC.
A trademark can be any word, phrase, symbol, design, or a combination identifying goods or services of a company, distinguishing its products from its competitors. According to the Trade Marks Act, 1999, any person can file a notice of opposition against the trademark proposed to be assigned to a company or brand within four months from the date on which it is published in the trademark journal. The Indian Patent Office in its submission before the Delhi HC chalked up a plan to fortify the workforce from 12 registrar-level officers presently working in the trademarks registry to 61 to dispose of pending opposition cases.
Of the 49 proposed new recruits, 30 officers are likely to join the various trademark registries in Delhi, Mumbai, Kolkata, Chennai, and Ahmedabad on a contract basis. While the recruitment of 11 assistant registrars by the Union Public Service Commission is expected to be completed by the end of this year, a promotion proposal of eight assistant registrars is also under consideration by the Ministry of Commerce and Industry.
“Let the recruitment process begin and be carried out expeditiously, considering the large quantum of oppositions pending,” the Delhi HC said in its reply to CGPDTM’s submission.
In addition, the CGPDTM submitted it intended to start a mediation and settlement drive in the trademark registry for quicker disposal of the trademark oppositions.
“Let a decision in this regard be taken in respect of implementing mediation/settlement drive, as also the hearing officers being placed at various offices within the next eight weeks, and a further status report be filed in this regard by the CGPDTM as to the progress of hearings and status of recruitment of officers for the pending oppositions,” observed the Delhi HC.
Hearing a host of petitions on the ‘completely arbitrary and discriminatory manner’ in which the CGPDTM disallowed some petitioners from filing opposition to the trademark applications during the pandemic years, the Delhi HC in March fined CGPDTM officials and asked the body to present a status report on how it intended to deal with the pending opposition cases. CGPDTM made a submission regarding its PoA on May 18. The matter will be further heard by the Delhi HC on August 3 for receiving further status reports to be filed by CGPTDM.
The Parliamentary Standing Committee on Commerce in its Review of the Intellectual Property Rights Regime in India submitted in July last year recommended that the time period of filing opposition against a trademark application be curtailed from four months to two to ensure speedy grant of trademark registration.
“This will be on a par with other nations, such as the UK, Spain, Belgium, Netherlands, Luxembourg, South Korea, Japan, Denmark, Singapore, etc,” it said.
The committee also recommended that the communication to and from the registrar or designated officer at the trademarks registry ought to be expedited using technology and encryption tools to ensure speedy redress.
“The committee recommends the (industry) department take steps in modernising trademark offices and workplaces by undertaking digitalisation of work processes and facilitating e-services for speedy redress of work,” it concluded.