In April 2016 we were made aware that the Indian Trade Mark Office abandoned a large number of pending trade mark applications due to actual or assumed belief that the deadlines to respond to office objections or pending disputes had not been met. We posted a blog on this article on 7 April 2016, please see the link here.
Last month, the Government of India issued a Public Notice providing an update regarding the status of the 13,062 abandoned trade marks. The wording of the public notice slightly fudges the issue of the abandonment by claiming that they were office actions – this might be in response to the public outcry from brand owners and the IP profession. The recent Public Notice reports that of the marks affected, only 3484 were successfully reinstated following objections from their proprietors or local agents.
We advised our clients to review the status of their portfolio following the initial abandonment . For Fieldfisher's clients, where we are currently responsible in India, we have conducted a review of our database against the official list of trade marks by owner still due to be abandoned, and we were pleased to inform our clients that no intellectual property rights have been affected. We recommend that brand owners review their portfolio of trade marks in India to assess if any rights have been affected.
In addition, last week the Indian Trade Mark Office issued a further Public Notice stating that from 1 August 2016 trade mark registration certificates will now only be issued by the registry electronically and through an automated system. This appears to be an effort to further expedite the registration process to comply with the World Intellectual Property Organisation's examination guidelines, in particular the length of time it take for an application to proceed to registration from the filing date. Hopefully this new practice will prove to be more well-informed and more carefully implemented than their previous attempt at expediting the examination process, through the unilateral mass abandonment of trade mark applications.
If you do have any questions or concerns regarding India, please do not hesitate to get in touch with me or your usual IP contact at Fieldfisher.
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