Spadika’s well written post exemplifies a good trend in executive decision making. That even in matters hitherto considered to be within the administrative/executive realm, our patent and trademark office (IPTO) follows a judicial process. In other words, prior to promulgating an executive decision (order), the office hears the parties and renders a speaking (reasoned) order.
Of course, this “judicialising” of an executive order came about owing to a suggestion from the Delhi High Court. The IPAA challenged the initial IPTO order that no amendments could be made before the Delhi high court. The IPAA mentioned that it had a pending representation with the CG. The court therefore took the easy way out and suggested that the CG hear the parties and passan order on their representation. Although this was prompted by the court, there there is no reason why such a judicial process cannot be institutionalised for future decision making by the IPTO.
One hopes that reasoned decision making pervades more of the IPTO processes henceforth. And that more executive and administrative agencies don their quasi judicial mantle and bolster more confidence through a rigorous and transparent decision making processes.
The CG order succinctly traverses the contesting positions and the background statutory framework and offers what I thought was a well articulated decision. However, the CG’s reasoning is wanting on several counts:
1. Cost Benefit Analysis:
On a cost benefit analysis (and indeed this is what the CG appears to have done), the costs in permitting such amendments do not appear to be colossal. After all, even if the user date is amended, the party would still need to submit evidence (during a contentious proceeding) to substantiate the user. The CG’s fear that unscrupulous traders would amend the user date to impact the rights of other legitimate traders using the mark appears a bit exaggerated. Since one could easily sort this out through evidence and if need be, through a judicial process. The CG;s ruling does a great disservice in painting all traders with the same negative brush .
No doubt, the administrative costs to the trademarks office may increase, owing to such amendments..and perhaps even the inconvenience to parties who may be affected by an earlier user date, but such costs do not outweigh the need for a party to amend an application owing to an earlier mistake.
2. Filing New Application?
Filing a new application is not really a solution, as the CG appears to suggest…as this would mean that in an already clogged office, the party suffers a severe setback in terms of time lines and date of application etc. Further, in order to provide public notice, one can simply have a process, where the amended application is mandatorily advertised (much like the patents act, where even claims can be amended so long as the amended application is again advertised).
3. CG Assumptions on trademark nuance?
Further the CG’s assumption that traders are expected to know their date of user would have held good, if the “date of user” was a term of common parlance. Unfortunately, it is not. It is a legal terminology exclusive to trademark law and includes even the date that the trademark was first used on advertisement pamphlets or other documents (which may not strictly comport with the term “use” in ordinary parlance). Expecting all traders to have this nuanced trademark understanding of use and date of user is a bit much. From my personal experience (during my time as a practitioner), I’ve witnessed a number of cases where clients would revisit their earlier user dates after I’d pointed them to the fact that any use of the mark (even on advertising pamphlets) would count as use.
4. Language of Section 22:
More importantly, section 22 of the trademarks act which permits amendments to trademark applications does not leave much scope for the kind of interpretation that the CG is proferring. Or support the kind of policy based cost benefit analysis that he predicates his decision on. My guess is that a court of law will reverse this. But we need to wait and watch.
IPAA and Guest Post
The Intellectual Property Attorneys Association (IPAA) needs to be commended for this initiative and for sparking this wonderfully welcome trend of executive decision making through a judicial process. Would be great if we could have one of the attorneys (either part of the IPAA or outside) to offer us a guest post on this issue, bringing out a more nuanced discussion on the pros and cons of this decision. Thanks!