Trademarks Office initiates special project to clear backlog

India

Close on the heels of an earlier drive to clear oppositions which have been settled by the parties, the Controller General of Trademarks has initiated a new project to clear the backlog of requests pending before the Trademarks Registry relating to post-registration changes. This ambitious project aims to clear all requests filed up to December 31 2012.

A notice issued by the controller specifies that requests will be examined based on their registration number, and not on the basis of the date/year on which the request was filed. It is worth mentioning that the annual report prepared by the controller for the year 2010-11 does not specify how many requests relating to the assignment of marks, name changes and other post-registration changes are pending. It is estimated that several hundreds of such requests are waiting for the attention of the registrar.

Post-registration changes have been the most neglected activity at the Trademarks Registry. Therefore, the controller’s initiative in this regard is praiseworthy. Once the records at the Trademarks Registry have been updated to show the current owner of each mark, it will no doubt help brand owners to prove their ownership, which would thus simplify the enforcement of their rights. It would also help to ascertain clear title to a registered trademark and assist in concluding any assignment/transfer transactions.

It is interesting to note that the notice puts the onus on the subsequent proprietor to produce all documents, including fee receipts, in support of a request that has already been filed. The notice also requires that a fresh affidavit be submitted affirming that no litigation/dispute concerning the marks involved in the assignment/transfer is pending. A general hearing notice will be issued (as opposed to individual intimations to agents) when the cases are examined, and the authorised agents of brand owners will be expected to be present to have the changes recorded.

The move, while positive in its intent, will require brand owners - and especially their lawyers/agents - to devote significant resources to benefit from its advantage.

Ranjan Narula, Ranjan Narula Associates, New Delhi

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