A Public Notice issued by the Trademarks Registry has clarified some concerns about how pending trademark (TM) applications and registered marks will be treated as per the newly expanded classification of services in the Trade Marks Act 1999. We have discussed this previously here and here.(Image from here)
In re pending applications: 1. Pending applications filed in class 42 will now have to seek reclassification through Form TM-16 (with fees of Rs 500) to change the specification of services. TM-16 deals with “Request for correction of clerical error, or for amendment.”
2. Where a single pending application in class 42 falls into multiple service classes, a fee of Rs 2,500 per additional class plus Form TM-16 needs to be submitted. It appears that applicants will be able to benefit from the original filing date, since that will remain unchanged.
In re registered marks:
3. Marks registered in class 42 but which now fall into other classes will need to be reclassified using the powers of form TM-40 (plus the statutory fee of Rs 1,000). TM-40 deals with Application by the proprietor of a registered trade mark for the conversion of the specification.4. Similarly, where registered marks will be split across classes, TM-40 needs to be accompanied by a fee of Rs 2,500 per additional class.
In both these cases, there will be no change in the date of registration.
If applicants/registered proprietors choose to dawdle over their various reclassifications, the Registry has its penalty in place — TM registrations in services were introduced in 2003, and applications made then will be scheduled for renewal circa 2013. The Registry adds the nota bene that no renewals will be effected until the amended classification is adhered to.
TM searching for applications is also going to be a combined effort until the reclassification procedure is complete — the notice says that public searches, and requests for official searches should be made in both class 42 and the amended class.
Procedurally, I can see one glaring non-clarification — wherever the Registry has asked for official fees of Rs 2,500 to be paid towards adding a class to a mark, there is no clarity on whether or not fresh applications have to be made (i.e., Form TM-1). (Image from here)
Other than that, I see this is going to be quite an exercise for applicants and TM agents. But more than that, it’s going to be a nightmare for the Trade Marks Registry. Already, the Registry is facing a giant backlog of pending applications that is threatening to get out of hand.
TM Registry having workload issues?
Well, workload may hardly be a new concern for the Registry. But a spate of recent notices warrant some cause for concern. The latest TM Journal (technically issued every fortnight), for instance, published over 10,000 trade marks. I haven’t waded through the journal myself, but reliable sources tell me that this edition contains a sizeable number of marks that have been published in duplicate., which means there are problems with quality control.
The Registry has also announced it will not be able to publish journals on time, according to a disclaimer in Journal 1442, until the backlog of about 2 lakh applications are cleared. I speculate that while the Registry attempts to clear this backlog, another couple of lakh applications will have been filed, leaving little breathing time or space.
The Registry has also not been able to despatch Registration Certificates for nearly a year (maybe more?), leaving a lot of registered proprietors without any formal legal title deed to show ownership of the mark. Of about 63,000 certificates due for issuance in 2009-10, only about 9,500 certificates have actually been issued, according to Journal 1442.
All of this suggests that the current strength of the Registry is out of depth in tackling the volume of work that it already has on its plate. The amended procedures in response to the expanded classification will only burden the office more. (image from here)
The upside for the Registry is that it will earn a lot more money than before! I have heard anecdotal stories (and readers can tell me if it’s true) that the TM Registry is/was the highest revenue-earning department for the government of India – if true, new earnings will surely make the competition tough!
Tell you what, the biggest challenge with the Registry in their database . For example, if you file for a divisional application for a multiclass, the new application is granted with the application date mentioned as the date of filing of the divisional application. This is contrary to the specific provision under the Trade Marks Act. When the matter was taken before the officials at the Trade Marks Registry, we were informed that the software cannot take the old date with the new application number. I guess this would be the case in this situation also. I hope the Registry has clarified this issue internally.
It’s a big mess out there!!!
It is true that Trade mark registry is having heavy work load which is disproportionate to the available human source. To clear off the existing backlog Trade Mark Registry has invited applications from the retired Judicial and Quasi Judicial officers who are aged below 68, on contract basis with monthly remuneration of Rs. 50,000, up to December, 2011. I discern this recruitment as an invitation to the retired Trade Marks Registrars.
Two conditions to be satisfied by the candidates to the above post seems something strange. They are:-
1. The candidate at the age of 68 should be physically fit and mentally strong.
2. They should dispose of at least 75 opposition cases per month.
After the administrative bifurcation of Power between Trade Marks and Patent, nowadays, none of the notification, circular or recruitment notice concerning trade mark registry is not having signature of either Kurien or Ravi.
While the existing Registrars could not dispose of 75 cases per month,how is it possible by retired officers? What is the guarantee for 75 cases.
Why don’t they think and act on long term approach on clearing the pending cases. What prevents them from recruiting by UPSC? Is there any lobby, for their own promotional benefits, prevents them from direct recruitment? These are definitely needs to be debated.
continues
In trade marks registry no one has good knowledge and comprehensive understanding on Vienna codification of marks. This complicated task has been assigned to daily wage labours who have matric qualifications. While searching the marks, particularly device mark, Vienna codification plays a crucial role in getting relative marks. This area needs close attention and truly, is a debatable issue on reliability on Indian trade marks data base.
When things are so bad in pendency clearance and administration of Registry, what is the urgency in introducing such a complicated 43 – 45 classes at this juncture. It may generate more revenue for TM Registries, but, on the other hand, it would add much more complicacy in clearance of pending applications. It is time to revamp the Trade marks registry completely.
A few controller of Patent in Kolkata have challenged the C.G.’s notification instructing the controller also to examine the patent application. High court of Kolkata has granted stay order against the notification.
No doubt that Trade Marks registry is the highest revenue earning department for Govt. as well as highest revenue earning for officials. Now, under Mr.Ravi it is going backwards.
An IP Attorney
(Former Examiner of Trade Marks)
Our comments to the above are as follows;
1. The International Classification of 45 classes existed when the Trademarks Act 1999 came in to force in 2003.
2. For reasons best known to the Registrar, the Registrar decided to make class 42 an omnibus class in respect of services that did not fall within 35 to 41.
3. One or more of the following situations arise as a result of the notification extending the classes from 42 to 45:
i. Where the Applicants have made an application in class 42 in respect of services which would now fall anywhere between classes 43 to 45
ii. Pending applications, where in the specification of services extend beyond the services under class 42 in addition to the services under class 42
iii. Marks that have already been registered in class 42 in respect of services which would now fall anywhere between classes 43 to 45
iv. Marks that have already been registered under class 42 wherein the specification of services fall under class 42 and may also extend to services that fall under classes 43 to 45
4. The Applicants are now left to bear the cost and burden of requesting for amendment in accordance with the new notification, which is unfair to the Applicants / Registered Proprietors of the mark
5. Given the facts and the circumstance of the inadequate personnel at the Trade Marks Registry, this would only increase the load on the Trade Mark Registry, and add to the confusion already arising as a result of this notification.
6. In the past , rarely has a TM-16 been allowed without a hearing, and the applications may have to be placed once again for hearing, which hearing may be indefinitely delayed.
In view of the above, and the anonymous comment on discrepancy in date of application in respect of divisional applications, our suggestions are that the REgistry consider modifying their notification as follows:
i. In case of applications for services made under class 42 but fall in any 1 class between 43 to 45, the Registrar suo moto convert the application to fall into the right class;
ii. In case of applications for services made under class 42 but fall in more than 1 class between 42 to 45, the Registrar suo moto convert the application to a multi class application and when registered at the time of renewal, the renewal fee be charged accordingly;
iii. In case of marks already registered under class 42 and wherein the services fall in more than 1 class between 42 to 45, the registration be considered as a multi class application and be renewed in the new classes with appropriate renewal fees;
As mentioned in Spicy IP bulletin on 14 July 2010, the Trademarks Registry is already the largest revenue earning department of the Government. They need not be scalpers calling upon Applicants to pay fees by way of TM-16 and application fees for the new classes for errors of deliberate omission at the time the Trade Marks Act, 1999 came into effect
From
Usha Chandrasekhar & Soumya Ahuja
ATHREYA ASSOCIATES
It is true that Trade mark registry is having heavy work load which is disproportionate to the available human source. To clear off the existing backlog Trade Mark Registry has invited applications from the retired Judicial and Quasi Judicial officers who are aged below 68, on contract basis with monthly remuneration of Rs. 50,000, up to December, 2011. I discern this recruitment as an invitation to the retired Trade Marks Registrars.
Two conditions to be satisfied by the candidates to the above post seems something strange. They are:-
1. The candidate at the age of 68 should be physically fit and mentally strong.
2. They should dispose of at least 75 opposition cases per month.
After the administrative bifurcation of Power between Trade Marks and Patent, nowadays, none of the notification, circular or recruitment notice concerning trade mark registry is not having signature of either Kurien or Ravi.
While the existing Registrars could not dispose of 75 cases per month,how is it possible by retired officers? What is the guarantee for 75 cases.
Why don’t they think and act on long term approach on clearing the pending cases. What prevents them from recruiting by UPSC? Is there any lobby, for their own promotional benefits, prevents them from direct recruitment? These are definitely needs to be debated.
In trade marks registry no one has good knowledge and comprehensive understanding on Vienna codification of marks. This complicated task has been assigned to daily wage labours who have matric qualifications. While searching the marks, particularly device mark, Vienna codification plays a crucial role in getting relative marks. This area needs close attention and truly, is a debatable issue on reliability on Indian trade marks data base.
continues——–
When things are so bad in pendency clearance and administration of Registry, what is the urgency in introducing such a complicated 43 – 45 classes at this juncture. It may generate more revenue for TM Registries, but, on the other hand, it would add much more complicacy in clearance of pending applications. It is time to revamp the Trade marks registry completely.
A few controller of Patent in Kolkata have challenged the C.G.’s notification instructing the controller also to examine the patent application. High court of Kolkata has granted stay order against the notification.
No doubt that Trade Marks registry is the highest revenue earning department for Govt. as well as highest revenue earning for officials. Now, under Mr.Ravi it is going backwards.
IP Attorney
Formerly Examiner of Trade Marks
i need a clarification, could anyone help?? when an online application status reads “Send for Vienna Codification” .. are those instructions for within the trademark registry or for the applicant to do something in furtherance of the application
my query is the same as the post above me. presently my application status comes as “send for vienna Codification”. does that mean any action to be taken on my pat or it is an internal instructions of the registry. please clarify