A number of SpicyIP readers have often bemoaned the fact that this blog is more partial to patents than copyright or trademarks. We stand guilty of this charge and have been making efforts to traverse other IP areas with equal vigour in the recent past.Our patent transparency campaign began with letters to the Prime Minister’s Office (PMO). In a similar vein, we plan to lodge another petition with the PMO on the dismal state of affairs at India’s trademark office, highlighting the issue of missing files, recurrent problems of under-staffing and several errors and discrepancies in the TM database, making it largely unreliable.
Prior to publishing this petition and requesting your endorsement through signatures, we thought it might be useful to first extract snippets of the draft petition and call for your comments. Based on your inputs, we hope to produce a more potent and nuanced petition.
We are optimistic that many of you will lend your time and support to help improve the functioning of an important IP institution.
In this post, I extract that part of the petition dealing with missing files. But prior to this, let me take a moment to thank Shan Kohli and Prashant Reddy, the key architects of this petition.
Draft Petition for Improving TM Registry
“This petition, submitted on behalf of several IP stakeholders, requests an urgent revamping of the Trademark Registry (the ‘Registry’). The Registry has had a controversial recent past, with the arrest of the Deputy Registrar of Trademarks Ms. Kasturi on corruption charges; the disappearance of thousands of files; and the overall poor quality of trademark examinations.
We believe that the root cause of many of these problems lies in the failure to staff the Registry adequately. As also in the failure to build a credible trademark database widely accessible to the public. It bears noting that more than half of the available positions at the Registry remain vacant and have not been filled, despite a significant efflux of time.
Before detailing our specific grievances, it is relevant to highlight the importance of an efficient trademark registry for India. Trademark law essentially aims to prevent consumer confusion in the market by providing certain rights in favour of the trademark owner. It also provides brand owners with adequate incentives to invest in their brands and the goods/services that they sell under its banner. As such, it is a very important economic and wealth creation tool.
The Trademarks Act 1999 draws a careful balance between the interests of a trademark owner and those of competitors and of the public to use certain words and marks. The process of grant of trademark rights is therefore one that is of critical importance to the economic well being of the nation. It must be transparent and subject to adequate checks and balances.
Unfortunately, owing to several systemic issues and a history of mismanagement and corruption, the Indian trademark office has acquired one of the worst reputations ever and the public have all but lost their faith in the integrity of this system. The Trademarks Registry is beset with a number of problems including the loss of thousands of files, endemic delays in processing applications, the registration of very low quality marks and a very poor database.
It may be noted that the registration of a ‘bad’ trademark can lead not only to an injunction (and shut down a legitimate business), but also flood courts with lawsuits and add to the existing problem of backlogs. It is true that the Registry’s functioning has marginally improved due to efforts of honest and efficient bureaucrats. But as explained below, the malaise is so deep that it will require a gigantic effort by the government, and especially the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry, to bring about radical reforms in the workings of the Registry.
We outline below the key problems with the Registry, and our suggested solutions:
1. Missing trademark files
In 2011, the DIPP filed an affidavit before the Delhi High Court, stating on oath that the Trademark Registry had lost 44,000 files relating to trademark registrations and oppositions.[1]
Soon after, the Registry released a public notice stating that further stock-taking had ascertained that only 8,000 files were missing, and not 44,000 as originally reported.[2] It bears noting that the entire audit on the missing files was effectively an ‘in-house’ audit, conducted by Registry staff. Also, in response to our application under the Right to Information (RTI) Act, 2005, the DIPP revealed that no administrative or criminal proceedings had been initiated against any official in connection with the missing files.[3]
The numbers may not be entirely accurate and this missing file episode may only be the tip of the iceberg. We therefore request that you immediately investigate this issue in greater detail.
(a) Sudden Move to Divest CGPDTM of Trademark Portfolio
It also bears noting that in June 2010 (a little after the claim of the missing files first came to light via a Delhi High court case:[4]), there was a sudden move to divest a honest bureaucrat (PH Kurian who is now the Controller General of Patents and Trademarks) of his trademark portfolio.[5]
More specifically, the suggestion was that the CGPDTM, who was effectively responsible for all patent and trademark administration would now be divested of his control over trademark administration.[6]
This is particularly surprising since Mr Kurian has been widely acknowledged as an honest and efficient official credited with changing the face of the Indian IP administration and bringing in a slew of reforms to improve the functioning of the offices, In particular, he is responsible for a number of measures aimed at improving the transparency and governance of Indian IP institutions.[7]
We are not certain as to why the move the divest him of the trademark portfolio came immediately after the missing files episode was first brought to light through a case before the court, and we think that there may be more to it than meets the eye. A detailed investigation is certainly the need of the hour. Our request: The Comptroller and Auditor General (CAG) should conduct an independent audit on the number of missing files at the Trademark Registry. Simultaneously, the CAG should also conduct an audit on files at the Patent Office, (where we have reason to believe that there are similar instances of missing files).
We believe that only the CAG has the resources and expertise to carry out an audit of this scale. We also believe that this is only the tip of the iceberg. Complaints of missing files routinely creep up in the trademark and patent prosecution process, and there are allegations that this deliberate practice of displacing files is resorted to by those officers against applicants who fail to grease their palms. It would therefore help if the CAG or other body appointed to investigate this issue could solicit information from trademark users of all instances of missing files.
Footnotes:
[1] Affidavit of Shri S.K. Lal, Under-Secretary, DIPP. in Haldiram India Pvt. Ltd. v. Union of India, W.P. (C) 12505 of 2009, Delhi High Court
[2] CG/F/Public Notice/2011/360 dated 28th July, 2011
[3] RTI reply, dated 14th November, 2011 from DIPP
[4] Haldiram India Pvt. Ltd. v. Union of India, W.P. (C) 12505 of 2009, Delhi High Court
[5] The ‘’Fishy’’ Trademark Handover dated 4th June, 2010
[6] C.H. Unnikrishnan, Trademarks section to move out of IP office, dated 3rd June, 2010.
[7] Shamnad Basheer, The Benefits of a Successful Crusade, dated 1st September, 2011
Before I sign off, let me wish all our readers a very colourful Holi.
WISH YOU VERY HAPPY HOLI !!
–TC
The list of missing files as released by CGPDTM has drastically reduced which the TMR claims to have completed the files by getting the papers from the applicants/agents. This speaks of the files pertaining to registered trade marks only. Though I doubt if actually these are the files which are missing as claimed by CGPDTM. Assuming it to be correct, there is no list of the missing files of pending applications and opposition files. I have seen, whenever we ask for certain papers/information, the reply comes from TMR that the file is not available/missing.
There were may Registration Certificates destroyed by TM Officials and the applicants/registrants are in a soup. Those who were intelligent/vigilant enough had filed the requests for renewal of the marks merely upon information that the mark has been registered, but those who were not intelligent/vigilant, their registrations have expired and removed from the register of trade marks no matter whether you have been asking for the service of the registration certificate. For this, in a meeting with CGPDTM, a suggestion was made that the certificates/copies be issued to the applicants/registrants free of charge so that they can file the application for the renewal. The message did go. BUT however, when the Rules were amended, the Registrar was given power to issue the copy of the certificate without the fee PROVIDED the copy of the certificate will not be issued where the original validity period of the registration has expired. I ask what was the purpose of amending the Rules if this was to be done. One could in any case get a duplicate copy of the registration certificate by filing request in form TM-59 by paying the fee of Rs500/-. But getting the duplicate certificate would not give right to the registrant the right to apply for renewal after the period of registration has expired, while issuance of the copy of the certificate with its forwarding letter would have given right to the registrant to file the renewal. In any case, it will be of interest to the readers to know that there is no module in the computer of the TMR by which they can issue the copy of the registration certificate without the payment of the fee as per the amendment in the Rules. The result is that the applications which have been filed for the issue of the copy of the certificate, the original having not been received, are lying idle without any body bothering about it. His has resulted in negating the very amendment.
Further comment follows.
The certificate which I am talking about were perhaps not signed but the entry made in the status or so indicating the registration certificate number but not giving the date (in some cases, not all) in some cases the dates of the registration certificate is available but as stated the RC was not served on the registrant. During those days, the registration certificates were issued and sent by Mumbai Office as such Mumbai office should have the details of the issue date, dispatch number, mode of dispatch, actual date of posting, proof of posting and proof delivery. The TMR Claims to have been sending the registration certificates through courier service. But in fact they do not have the said details on account of the fact that the certificates were destroyed.
I have had the occasion to see just one page of the alleged dispatch register of TMR Mumbai whereby the TMR Mumbai claims to have dispatched the certificates on a particular date. That page merely gives the application numbers. I have checked up from the details of the numbers that have been mentioned on that page, in respect of the registrations which were over due for renewal at the time of the alleged date of dispatch, about 80% of the registrations have been removed on account of non payment of renewal fee. This could not just be a co-incidence. My point is that they must not have received the registration certificates, like me. This itself shows that the certificates were perhaps not actually dispatched but an entry made in the register of allegedly sending the registration certificates. They do not have the other particulars/proof except the entry in the dispatch register. This is the plight of a valuable right that has accrued on account of registration, but lost on account of pathetic situation that has been created by the TMR Mumbai. On court directions, the TMR branch has asked the office of TMR Mumbai to give the further particulars, stating to TMR Mumbai that THE FILE IS NOT AVAILABLE. Hence this too is a case of missing file which does not find mention in the list of missing files. This way we will come across scores of files which are missing and no body is bothered about those missing files.
It is true that the issue of missing Certificates sealed during 2005-06 is yet to be addressed by the Registry. The TMR also tuns blind eye towards our request to return Certificates which are shown as returned in the website of TMR.
Thanks for all your comments. And in particular, thanks for reference to extra missing files. Only a complete audit can now unearth all of this.
Shamnad,
Can we do something to get the complete audit done as you have stated? I think something should be done. May be first asking under RTI act about the details of the missing files section wise (like TLA/TOP/PR etc). The list which was published was with respect only to the registered files. You people are experts in RTI. Kindly do it. If nothing turns out from RTI applications, think about the possibility of filing wit petition(s).
4/4/2012