Jack Ellis

Trademark application and registration rates in India went through the roof last year, indicating success in terms of both streamlining the prosecution process and dealing with a hefty filings backlog. However, it remains to be seen whether the national registry’s human resources can keep up with this positive trend.

India’s Office of the Controller-General of Patents, Designs, Trademarks & Geographical Indications (CGPDTM) experienced a huge surge in trademark applications last year, according to its recently published annual report for 2015-2016. Over the 12-month period, 283,060 trademark applications were submitted to the agency, representing a massive 34.5% year-on-year increase in filings. Of these, 15,670 (5.54%) were filed by foreign applicants. While this was more than double the number of non-resident filings received in 2014-15, the vast majority of year-on-year growth was down to domestic applications.

The largest proportion of applications was made in Class 5 (‘Medicinal, pharmaceutical, veterinary and sanitary substances’) which accounted for 14.93% of all filings. The next largest classes by application volume were Class 35 (‘Advertising, business management, business administration, office functions’) with 10.11% of the total; Class 9 (‘Scientific, nautical, surveying and electrical apparatus, etc’) at 5.96%; Class 30 (‘Coffee, tea. Cocoa, etc’) at 5.46%; and Class 41 (‘Education, providing of training; entertainment, sporting and cultural activities’) at 5.16%.

Also during 2015-16, CGPDTM examined 267,861 trademark applications in total – a significant 59.42% more than it had managed the previous year. A total of 65,045 of these examinations resulted in a registration, representing another massive increase of 56.42% on 2014-15. Notably, the disposal of cases by other channels – such as rejection, refusal, abandonment or withdrawal – also rose, by 38.87% on last year’s figure.

However, the increase in non-registration disposals would have been much, much higher, if the trademark registry’s decision back in March 2016 to classify tens of thousands of applications as abandoned, without any obvious justification, had been allowed to stand.

The move – which created chaos and drew derision from home and abroad, including interventions from the Indian IP Lawyers Association and INTA – was rapidly stayed by the Delhi High Court. This meant that thousands of rights holders were given the opportunity to rescue their applications; nevertheless, the reputational damage had been done, and a spotlight was shone – not for the first time – on the agency’s capabilities.

The Indian trademark office has for years been plagued by a massive applications backlog. Significant efforts have been made of late to address this, including the government sanctioning the hire of dozens more trademark examiners. According to the CGPDTM’s report, the registry’s current working strength in terms of individual trademark examiners is around the 120-mark – though about three-quarters of these are employed on a contract, rather than a permanent, basis.

To build on the positive trend in filing and registration rates, the registry will need to be able to retain staff, and more likely than not add significantly more in the near future. The recent adoption of revised prosecution rules has been seen as a further step in the right direction – though stakeholders will want to see that the substantially raised fees introduced by the new rules are properly invested back into maintaining and improving the registry’s performance.

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