Lawyers complaining about the delays and hassles faced at the ‘Trademark Registry’ is commonplace. However in a recent role-reversal, the CGPDTM has put up two public notices complaining about the incompetence amongst lawyers who are practicing before the Trademark Registry. Image from here.
In the first notice (available over here), the Trademark Registry has complained about the large number of incomplete applications that it has been receiving from applicants. Some of the regular flaws and the remedial advice from the Registry are as follows:
(i) Several TM applicants are apparently not mentioning the actual description of goods/services in respect of which trademark is proposed to be used. Instead of being as precise as possible with regard to the goods and services with which the trademark is proposed to be used, reference is usually made to generic phrases such as “all goods/services”, “all other goods/services included in class….”, “goods/services not limited to.…….”.
(ii) In the case of ‘User’ of the trademark, the actual date, month and the year should be given and not just the year and/or month.
(iii) Proper translation/transliteration of the trademark should be provided in case of Non-English/Hindi characters appearing in the mark.
(iv) The Trademark should be clearly visible.
In the second notice (available over here), the Trademark Registry has complained that cheques submitted for fees toward expedited legal certificates and expedited certificates for ‘copyright purpose’ are bouncing and that this information is usually received from the banks only after the requests themselves have been processed by the Trademark Registry. Hereafter the Trademark Registry has decided to accept such fees only by means of Demand Drafts. The fraternity of trademark lawyers would do well to heed the advice of the Trademark Registry and hopefully aid in the more efficient functioning of the Trademark Registry.
Sir,
Under what circumstances the Trade Marks Registry can stop / decline the receipt of fee by cheque, which would not only violation of provision of rule 11 (3) of the Trade Marks Rules, 2002 but also against the judgement passed by Hon`ble High Court of Gujarat in the matter of Troikaa Pharmaceutical Ltd. Vs. Asstt. Registrar of Trade Marks, Reported in PTC-2002 (24) page 497
You raise a valid concern Mr. Manchanda. I suppose the rules will have to be amended.
Prashant
This is clearly a case of penalizing the majority of the public instead of the offender! We were refused a patent related service by the Mumbai patent office on cheque payment – the Patent Office insisted on a DD. In these days of core banking there is no difference between outstation and local cheques, i.e. there are no collection delays/charges.
The TM office is becoming more and more incompetent and in order to hide their incompetencies the TM officials are giving these kind of excuses to CG and CG is accepting these and issuing circulars.
Prashant: You must also write the problems faced by the TM practitioners because of stupid mistakes and unnecessary delay. We would list out the problems with the examples to you and you can bring it to CG’s notice.
@ Anon – Please feel free to send in a ‘ghost post’ on the issues faced by you at the TM Office – we will gladly post it.
The latest folly on the part of the TM Office is that they are asking for filing of TM50 in case the renewal application is filed by some other lawyer/agent other than the one who had filed the original application for registration. The new Lawyer/agent only asks for sending the renewal of the registration certificate/intimation at the address of the new lawyer/agent and not for changing the address for service.
In any case if one reads carefully, the form TM-50 is to be filed for recording the change of address for service in India only if the registrant is a foreign national/company and the address for service in India is to be changed. Unless the form TM-50 with fee of Rs500/- is filed, they are not renewing the mark.
I have come to know that this thing has been brought to the notice of the CG, but he is unwilling to listen/budge saying Mr. so and so don’t talk about the petty amount of Rs.500/-. The question is, is it for petty amount of Rs500/- or is it the talk about the illegal demand by the TM Officials. I think the TM Officials would be getting medals by collecting money in the name of fee by illegally demanding the same as stated above. This I am saying that in Delhi Office, there is a notice put up on the notice board asking for deposit of Rs60/- for the RTI application as against the Rs10/- as per the RTI Act. They say that the sum of Rs50/- is for sending the reply by speed post. I ask where do they get this power (of asking additional sum of Rs.50/-) from?. Besides sending of reply by speed post in Delhi (Local delivery) is Rs12/-. So they are earning Rs38/- in the name of speed post. Ironically, the other TM Offices are not asking for sum of Rs60/-. It is only Delhi Office. In Kolkatta office some one was depositing Rs.60/- and the office refused to accept the sum of Rs.60/- but instead asked to deposit Rs10/- which is the amount payable as per the RTI Act.
Is CG listening and would he order for corrective measures for both the issues raised above?
Earlier, Indian patent office had a post of Law officer. Now there is no such officer working in IPO. I do not know whether the post has, now, been abolished or not. The procedural irregularity/illegality could have been avoided had it had appointed a good Law officer. The parliamentary committee on subordinate legislation had recommended in its all reports that every Ministry/Department should have one law officer. So that the delay and confusion in drafting, interpreting and implementation of rules could be avoided. In the last recommendation, the committed has castigated the Ministry of Parliamentary Affairs for not obeying or implementing its recommendations.
K.Muthu Selvam
Advocate