Landmark interpretation could bring significant changes to Indian trademark practice

A ruling was issued on 28 April 2022 in an opposition matter - M/s Bunge India Pvt Ltd v Hatsun Agro Product Limited – in which, after the conclusion of pleadings and evidence, the applicant had filed a request on 14 December 2021 under Rule 34 to expedite processing of said trademark application, on the ground that it had remained pending for more than four and a half years. This led to a hearing being appointed in the matter.

Until recently, most trademark practitioners in India believed that a request to expedite a trademark application offered no additional benefits in terms of the proceedings that follow examination. However, the Trademarks Registry in New Delhi has interpreted the relevant provision (Rule 34(1)) of the Trademarks Rules 2017 widely to hold that all proceedings post filing of an application − until final disposal − can be fast-tracked by filing a suitable application at the appropriate time. This is a landmark interpretation, which, if followed widely, has the potential to bring about significant changes to trademark practice in India – particularly for oppositions, where there is still a large backlog of cases.

The above-mentioned Rule 34(1) reads:

Expedited Processing of Application- (1) The applicant may, after the receipt of the official number of the application, request for expedited processing of application made for the registration of a trademark in Form TM-M on payment of fee as specified in First Schedule. Such an application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the following proceedings viz. the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously subject to such guidelines as may be published in this regard by the Registrar in the trademarks Journal.

The opponent argued that an application to expedite processing of an application under this rule cannot be filed after the examination stage. Counsel for the opponent also remarked that the practice of expediting the processing of an application at any stage on the mere basis of payment sets a precedent of justice only being for the rich, and would lead to the abuse of the legal system.

The applicant’s counsel argued that a submission could be filed at any stage up until the final disposal to hasten its processing, regardless of the stage at which it was stuck. Given that examination is now so quick (there is currently no backlog in trademark examinations at the IP Office), the opponent’s interpretation of Rule 34 would render it redundant. Rather, a more purposeful interpretation was required to make Rule 34 meaningful. The primary principle of interpreting any provision, as per the applicant, was to look at the intent behind it, that is, identify the mischief it intended to remedy. Various rulings from the Supreme Court were cited in support of this principle, and it was argued that “interpretation must depend on text and context”.

The deputy registrar noted that, when a draft of the current rules was introduced in 2015, there was large pendency at every stage of the processing of applications, including examination. By 2017, when the draft rules were finalised, pendency at the examination stage was reduced significantly, but the cumulative pendency at other stages had increased significantly. The Central Government introduced Rule 34 to provide a mechanism for expediting the processing of applications stuck at any stage until final disposal - thereby ensuring that pendency could be liquidated at every level. If the intention of the legislature was primarily to enhance expediency only at the examination stage, it could have simply retained Rule 38 under the old rules that merely enabled ‘expedited examination’, and there would have been no need to evolve Rule 34 under the current rules.

As to use of the language “…application shall be examined expeditiously thereafter, the following proceedingsshall also be dealt with expeditiously” in Rule 34, which the opponent argued supported its contention, the deputy registrar ruled that:

the word ‘thereafter’ is merely indicative of the sequence of the second obligation... it is certainly not suggestive of the fact that if the first application for any reason cannot be complied with then the occasion to comply with the second obligation does not arise or that it automatically comes to an end. It would be unthinkable that that could be the intention of the legislature.

Rule 34 only prescribed two conditions per the deputy registrar − one being that an application to fast-track processing could not be filed simultaneously with the application to register a trademark, and the second being that such an application must be filed on the requisite form. To interpret the word ‘thereafter’ to read a third condition implying that expedited processing of subsequent stages was only possible if a request to fast track was filed before examination was absurd.

The deputy registrar also remarked that trademarks are valuable business assets and commercial disputes need speedy resolutions. The option to pay an extra fee was a justified step to guarantee quicker processing as the Trademarks Registry would need to invest in resources and a higher fee would help cover such monetary investment. It was also pointed out that the Indian Trademarks Registry had one of the lowest fee slabs internationally. Hence, the extra fee was not towards the ‘costs of justice’, but for the ‘delivery mechanism’.

The deputy registrar ultimately ruled that processing of a trademark application can be expedited at any stage up until its final disposal by filing a suitable application at the appropriate time. Will this ruling transform trademark practice as we know it? Well, it does not automatically become binding precedent and it remains to be seen how the other five offices of India’s Trademarks Registry view it. But, given its ramifications, it is bound to come up for analysis again sooner rather than later.


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