19/01/2018
SUGGESTIONS ON OPPOSITION PROCEEDINGS
Trademark opposition proceedings delayed in India, i have some suggestions on opposition proceedings.
1) There should be detailed scrutiny of trademark applications prior to their publication in the Trade Marks Journal. Similar marks must not be easily allowed to be advertised. This will help to reduce the number of oppositions filed by third parties. We recommend that guidelines be framed for examination of applications to cover goods/services in different but related classes. Further, such applications/marks that are identical to well-known marks should be refused.
2) The Trade Marks Registry should seek to efficiently implement suggestions in the Draft Manual of Trademarks Practice and Procedure for digitization and storage of documents and exhibits submitted in relation to an opposition proceeding in soft copy in form of CDs etc. Opponents and Applicants should be directed to provide all evidence in CD Rom and also serve them upon each other to avoid delays (specifically in cases where exhibits are voluminous).
3) The online records for Opposition matters should be completely digitized. Further, online filing should be encouraged by offering incentives such as discount on fees.
4) The Opposition documents should be separately filed in the online database and a naming convention agreed upon to label the documents so that they can be easily tracked.
Service
There is a huge backlog of opposition cases waiting to be served. Rule 47(7) stipulates a timeline of three months for the service of a notice of opposition and Rule 49(1) similarly stipulates a timeline of two months for the service of a counter statement, both of which are not being followed. To remedy the situation, INTA makes the following suggestions:
1) The Trade Marks Registry should link the fee module with the opposition deadline calculator so that a fee receipt is generated only if the opposition is filed within the four-month period. Further, it should be made mandatory for all Applicants to provide email addresses so that the system serves the notice of opposition automatically to the Applicant and updates the online platform for service. Essentially, the online platform should be made to scrutinize the opposition deadline and to serve the notice of opposition automatically.
2) For the counterstatement, again, the fee module should be linked to the deadline calculator so that no fee receipt is generated if the counterstatement is filed beyond the two-month deadline. In case the counterstatement is not filed or filed beyond the statutory period, an email order abandoning the application should be sent automatically and the system updated.
Hearing and Order of Examiner
1) There is also a considerable backlog of opposition cases where pleadings have been completed and hearings have not been appointed. The hearing notice is required to be served within three months from the completion of evidence. (Rule 56(1)). This is not being followed.
2) The Trade Marks Registry may require the parties to opposition proceedings to mandatorily file written submissions along with case law pursuant to or during opposition hearings. This will make it easier for the Trade Marks Registry to pass an order on the opposition proceedings.
The hearing officer should be required to pass an order on hearing within six weeks of completion of hearing. There are many cases that have been heard and awaiting formal orders.
4) There should be a limit to the number of adjournments of hearing in case of non-appearance of a party.
