Trademark

Judicialising the Executive?


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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!

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

2 comments.

  1. AvatarGuest

    It is true that the Patent Office started operating in a professional quasi-judicial manner since the reforms initiated by Mr. Kurien took roots. This is quite evident in the reasoned decisions issued by many Controllers, which are quite well-written.
    But, this trend is now slowly getting hazy ever since the new performance measures are introduced to evaluate Officers performance. This is turning the Patent Office into some kind of a ‘factory’ to ‘produce’ patents. The Examiners and Controllers are being threatened to issue more reports/ decisions and patents, or else face transfers or show-cause notices. The situation has become so bad that shabby reports are being issued and bad patents granted. Generally only those cases go for refusals, where the Applicants show little or no interest i.e. ‘safe refusals’. Examiners who are simply copying International Search or Examination reports are praised, and Controllers who are ‘printing’ letter of patents are ‘rewarded’. In reality, Examiners who are working hard on their reports are being given transfers and show-cause notices.
    There are Controllers who are simply granting patents, even when Examiners objections are pending, by waiving such objections without offering any hearings, or at most giving decisions by merely writing one liners, e.g. ‘in view of Agents submissions, objections are met’ etc. (Several of such reports and decisions can be found on the patent office’s websites). These Controllers are giving anything but reasoned decisions.
    Infact, recently several first examination reports were issued by some Controllers were extremely shabby, so much so that the CGPDT had to intervene. Still, the same negligent ‘printing’ trend is continuing, as the Officers also know that the CGPDT can not reverse the trend he himself has set.
    This blatant violation of procedures done in the name of ‘performance’ has immense potential to harm nation’s interests in the medium to long term. It will definitely harm India’s status of International Searching Authority. It is also in violation of Higher Court’s and IPAB’s orders, where it has been explicitly expressed that quotas and targets should be reasonably fixed and should in no way result in unreasoned or bad decisions. It seems hilarious that while in the international fora the Government is fighting tooth and nail to put brakes on wide patenting claims of the developed world, on the other hand the Patent office itself is indulging in glaring infraction of Sections 3(d), 3(k) and 3(p) of the Patents Act.
    A joke in the Patent Office equates the ‘Kurien era’ with UPA-I, and the present era as UPA-II. But the serious question raised in view of such shabby decisions and indiscriminate grants is: What is the Motive?

    Reply
  2. AvatarJagdish Sagar

    This particular order putting limits on the right to amend a trade mark registration application seems more like an executive order limiting quasi-judicial discretion.

    Reply

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