Indian Trademark Office: A remarkable transformation

Authors: Manisha Singh and Aprajita Nigam

The Annual Report of the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) for the year 2016-2017 demonstrates dramatic achievements in terms of numbers of applications processed by it in the reported year. Some of the transformative processes initiated by the Government around 2012 -13 including capacity building, digitization and streamlining of examination and prosecution processes, are now reflecting in the high standards achieved by the Indian Trademark Office in the past year.  The Annual Report captures the transformation and we are pleased to highlight some of those salient achievements here:

1. Introduction of Trademarks Rules 2017: Setting up user friendly processes

To establish a faster, easier and efficient trademark registration system and to catch up with the changing needs under the new digitized environment, the Government of India introduced new Trademarks Rules, 2017 from March 6, 2017. Replacing the old procedures and forms, the new rules are designed to meet the new requirements. Some of the salient features of new Rules are:

• Number of Forms in the entire life cycle of a trademark registration have been reduced from 74 to 8
• One Application Form for all types of trademark applications
• Concessions to Startups, individuals and small enterprises,
• Video conferencing facility for hearings,
• Emails are accepted as a mode of service of documents,
• Limited the numbers of adjournments sought by the parties for hearing to two. No adjournment beyond 30 days.
• Electronic filing incentivized by extending 10% concession in official fees.
• A fast track procedure created for expedited processing of trademark application at each stage of prosecution procedure, on payment of additional fees
• Provision for seeking extensions in opposition proceedings removed.

2. Process Re-engineering:

Some of the procedural reforms and re-engineering in trademark process has brought in the following improvements in the system:

• Online Search Facility upgraded to further streamline the trademark search system
• A transparent and automated system introduced for allotment of applications for examination. The new system moves the application based on their seniority and eliminates the need for human intervention.
• Registration and renewals of trademark also brought under new automated system: Under the current system, after completion of a specified time after the publication of the trademark, registration certificates are automatically processed and dispatched to the designated email- id of the applicant. The certificates are also uploaded in the Electronic Register maintained by the office on a real time basis. The process for renewal of trademarks has also been automated where renewal request (filed in due time) is processed and validated automatically.
• The process for weekly publication of trademark applications on every Monday is further improved.
• Official communications are sent electronically by Trade Marks Office on the designated email ids of the applicants or their agents.
• Cause list for hearings in trademark applications are uploaded on the TMO website.
• Systems are built for effective consultative process by holding periodical stakeholders’ meetings

3. Results demonstrated:

The results of the aforesaid initiatives and process re-engineering have been demonstrated in the numbers achieved by the TMO in the past year. The pendency in examination of trademark applications reduced to 1 month resulting in a dramatic increase of 98.7% in the number of applications examined in 2016-17.The number of registrations issued increased by 284.5% and the overall disposal rate of applications (withdrawn+ abandoned+ refused+ registration) increased by 150%.

Source: Annual Report 2016-17

Filing trend:

There has been a dip in filing of applications.The number of applications filed by Indian applicants has come down marginally from 267390 in 2015-16 to 266730in 2016-17 and number of applications from foreign applicants has decreased from15670 in 2015-16 to11440 in 2016-17.

Some other interesting numbers:

• 56270 registered trademarks renewed
• 19500 requests for post registration changes (including assignments) received and 13094 requests disposed of.
• 9169 certificates were issued under Section45(1) of the Copyright Act,1957 for registration of artistic work in trademarks
• 333,673 trademarks published as against 117,408 trademarks published in 2015-16.

Trademark Oppositions-Still remain an area of concern:

Trademark Registry over 33,882 Notices of oppositions and applications for rectification of the Register during 2016-17and processed only 23,902 such cases.The below table reflect the branch wise details of the oppositions/rectifications filed with the Registry:

4. MADRID System for International Registration- till 2016-2017

Madrid Protocol for International registration of Trademarks came into force on July 8, 2013. The progress thus far has been as follows:-

• WIPO notified 33,788 International registrations to Indian Office.
• Trademark Office notified 17,157 provisional refusals.
• Out of which 113 cases of provisional refusals notified based on 3^rd party oppositions.
• Grant of protection communicated to WIPO for 4283 marks.
• Indian office received only 619 applications for international registrations
• 523 applications were certified and forwarded to WIPO.
• WIPO granted registrations in 357 applications.

The Annual Report also enumerates the initiatives and steps to be taken by the Office of the CGPDTM in the coming year to improve functioning and service delivery of the Trademark Office and resolve grievances. Some of the features which we may see in the coming year are:

• launching of SMS Alert service regarding Examination reports and time bound actions to be taken on them,
• Publication of Periodic List of First examination Reports (FER) issued in the Patent Office E- journal on IPO website so as to enable all stakeholders to know the status of issuance of FER online,
• introducing the facility for e-verification of signature in addition to the present mode of digital signature to make online filing easier and more user-friendly,
• introducing updated facility for hearing with the Controller through Video-conferencing from the applicant’s office and
• developing Mobile App service for providing IP-information and service to stakeholders.