EXPEDITED EXAMINATION AND PROCESSING OF TRADE MARK APPLICATIONS – A COMPARATIVE ANALYSIS
Balaji P L.L.M.,
Principal Associate, Surana & Surana International Attorneys
Introduction
The examination of trade mark application is the pivotal stage in the process of ascertaining registrability of the applied mark by the trade mark offices around the world, which starts with the issuance of an office action/examination report with the list of objections raised by the trade mark offices or a letter of acceptance of the trade mark. Subsequently, the application may go through re-examination, advertisement, oppositions, hearings, etc., before reaching the stage of registration. The time period taken by the trade mark offices, for completing the first examination of application and issuance of its report, may vary from jurisdiction to jurisdiction in view of the different examination procedures and grounds provided under their respective national legislations. Certain countries do not have their own substantive examination system and generally accept the marks for registration after formal examination or on the basis of foreign registrations and certain countries where the examination and subsequent processing of applications are systemized ensuring registration of the mark or disposal within a reasonable time period. However, in many countries the entire process of examination and registration, due to backlogs or requirements under the national legislations, generally run for 6 months to several years, during which the Applicant had to wait, despite whatever the urgency is for them to secure registration.
Examination timeline in India
In India, as per Section 23(3) of the Trade Marks Act, 1999 (hereinafter ‘the Act’), if registration is not completed within 12 months from the application filing date due to any default on the part of the Applicant, the Registrar may give notice and also treat application as abandoned. However, the Act nowhere suggests any timeline for the Registry to complete the examination, advertisement or hearing. In fact, the above referred provision, indirectly opened the room for the Registry to take its own time to complete the procedure and default on the part of the Registry shall not attract any obligation. When looking at the trends at the Registry, the time period taken by the Registry for issuance of its first examination report after implementation of the Act through the Trade Marks Rules, 2002 (hereinafter the ‘Old Rules’) was between 4 to 6 months from the application filing date during the first few years and the same went up to 20 months during the period between 2014 and 2017. Subsequently, with the introduction of the National IPR Policy, the Trade Marks Rules, 2017 (hereinafter the ‘New Rules’) and appointment of examiners on contract basis, the time period taken by the Registry for examination was drastically reduced between 2018 and 2021, during which time, the first examination reports were issued within a month’s time. Again from the second quarter of 2022, the practitioners started witnessing an increase in the time period taken by the Registry for examination, which now stands between 3 to 6 months from application filing.
Since examination and issuance of report only forms the first part of registration procedure, each of the subsequent steps, such as consideration of reply to examination report, appointment of show cause hearing, acceptance and advertisement in trade marks journal, opposition proceedings, if any, and issuance of certificate, will also take additional time, which may make the registration process lengthy. Current timeline of some major steps involved in the registration of trade marks in India are given as below;
- Filing to issuance of examination report : 3 to 6 months
- Consideration of reply to examination report : 2 to 4 months
- Appointment of show cause hearing : 10 to 14 months
- Advertisement after acceptance : 2 weeks
- Opposition proceedings (from filing to disposal ) : Approximately 10 years
Expedited Examination & Processing in India:
While the Act do not specifically provide for any fast track examination or registration procedure, the concept of ‘Expedited Examination’ of trade mark applications was introduced under Rule 38(1) to (3) of the Old Rules, which reads as below;
38. Expedited Examination, Objection to Acceptance, Hearing:
(1) After the receipt of the official number of an application under sub-rule (1) of rule 37 an applicant may request for expedited examination of an application for the registration of a trade mark in Form TM-63 together with a declaration stating the reason for the request, on payment of five times the application fee.
(2) If the Registrar is satisfied on the basis of declaration filed under sub-rule (1) that an expedited examination of the application is warranted, he shall cause the expedited examination of such application in the order in which the requests are filed and may ordinarily issue the examination report within three months of the date of such request.
(3) Where the Registrar declines the request under sub-rule (1), the applicant shall be entitled to have the fee refunded
Provided that before declining any such request, the Registrar shall provide the applicant an opportunity of being heard
With the introduction of New Rules in the year 2017, ‘Expedited Examination’ was replaced by a new procedure called ‘Expedited Processing of Application’ under Rule 34, which expanded the scope to provide expedited treatment for issuance of examination report and then, to all the subsequent steps involved in the process, including consideration of response to the examination report, appointment of show cause hearing, advertisement in the journal, opposition proceeding and issuance of registration certificate. New Rule 34 is reproduced as below;
34. Expedited Processing of Application:
(1) The applicant may, after the receipt of the official number of the application, request for expedited processing of application made for the registration of a trademark in Form TM-M on payment of fee as specified in First Schedule. Such an application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the following proceedings viz. the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously subject to such guidelines as may be published in this regard by the Registrar in the trademarks Journal.
(2) The Registrar may limit the number of applications for expedited processing of trademark applications by publishing the same in the trademarks Journal.
As per the Old Rules, the person requesting ‘Expedited Examination’ shall file a declaration stating the reason for its request along with additional fee. However, the New Rules has removed all such requirements and made ‘Expedited Processing’ available to an Applicant who is ready to pay an additional fee of INR 40,000 without any reason whatsoever, to the disadvantage of other filers. Further, it can be noticed that the Old Rule 38(2) vested discretion on the Registrar to deny the request for ‘Expedited Examination’ if he/she is not satisfied with the reason provided by the Applicant, thus making the special treatment only available for those who approach the Registry with a valid and satisfactory reason for expedited examination. Whereas, the New Rule 34 has also removed the Registrar’s said discretion, except the power to limit the number of applications to be taken for expedited processing. Thus, the Applicants now have the default right to get their applications processed expeditiously, from examination to final disposal, upon filing a request along with additional fee, which is merely four time the normal trade mark application fee. While this option under the New Rules will certainly help in increasing revenue for the Registry and its parent department, we shall be mindful of the fact that the primary statutory function of the Registry is to register trade marks applied for in the country, and not generation of revenue.
When to file a request for Expedited Processing?
The advantage under the old Rule 38 was limited to issuance of examination report and thus, the same impliedly restricted the time period for filing a request for ‘Expedited Examination’, to only before the issuance of the first examination report, whereas the new Rule 34 has no such restrictions in view of the expansion of the scope under ‘Expedite Processing’ to cover all stages of prosecution of an application before the Registry until its final disposal. A bare reading of the new Rule, in comparison with the old Rule, may suggest that a request for expedite processing can be filed by the Applicant anytime during the pendency of the application. But the new Rule 34 regarding the time period for requesting expedited processing is vague and ambiguous, leaving scope for interpretation.
While, the first part of the new Rule 34 (1) states that the Applicant may request for expedited processing starting from the receipt of filing number without providing any ending date, the second part of the new Rule states that, “such application shall be examined expeditiously and ordinarily within three months from the date of submission of the application”. It could be construed from this part that the first and foremost benefit provided under the new Rule is expeditious examination of application and thus, any such request for expedited processing can be filed only before issuance of the examination report. The same way of understanding the rule is also supported by the third part of the new Rule which states that, “Thereafter, the following proceedings …………… till final disposal of the application shall also be dealt with expeditiously”. This part of the new Rule can also be interpreted as only after filing of the request for expedited processing before examination of the application and upon issuance of an expedited examination report, subsequent proceedings such as considering reply to the examination report, hearing, advertisement and opposition related to the said application will be dealt expeditiously.
Further, the third part of the new Rule 34(1) also states that the guidelines with respect to expedited processing of post examination proceedings may be published by the Registrar, who may also limit the number of applications for expedited processing and notify the same under the new Rule 34(2). However, no such guidelines regarding expedited processing after issuance of examination report or number of such requests that may be entertained by the Registry have been published by the Registrar in the Trade Marks Journal even after five years of passage of the new Rules.
Expedited Processing request made after examination stage:
While the new Rule with respect to the time period for requesting expedited processing of application can be interpreted and understood in different manner, it was a general belief among the trade mark practitioners that the same can be filed only before the issuance of an examination report. However the same changed in April 2022 when the Registrar passed an order1 allowing a request for expedited processing made under the new Rule 34 during the pendency of an opposition proceeding, wherein the pleadings were complete and the matter was awaiting final hearing on merits. As can be noticed from the timeline mentioned hereinabove, the most tedious stage in the process of registration of a trade mark in India is opposition proceedings which generally runs for a decade. While, the Registry has recently appointed good number of Hearing Officers on contract basis which is producing good results in hearing long pending opposition proceedings, the Registry is yet to complete hearings and pass order in respect of opposition proceedings initiated before 2010. As the Registry’s practice is to schedule hearings as per the seniority of the opposition numbers and the date of completion of pleadings, it may at least take few years from now to clear the backlog opposition proceedings. While the situation being so, the Registrar’s allowance of request for expedited processing of application filed during pendency of an opposition left the doors open for the Applicant to seek expedited processing at any and every stage of prosecution of its trade mark applications.
Availability of such option to expedite processing at varied stages according to the Applicant’s whims may not be pragmatic and the same could lead to negative consequences. Particularly, in an opposition proceedings where there are two parties involved, providing the option to expedite the proceeding for one party (Applicant) and denying the same for the other party (Opponent) would suggest the high-handedness of one party over the other and also go against the principle of right to fair trial and equal access to the courts/tribunals established under the Constitution of India and major international conventions2. As the opposition proceedings before the Registrar are inter-partes matters handled by the tribunal section, which is a quasi-judicial body, the same ought to be treated separately and shall not be considered as similar to the other stages of prosecution.
Further, given the applicability of the new Rule 34 only from 6 March 2017 and pendency of thousands of opposition proceedings initiated prior to the said date, the availability of the expedited processing option for the Applicant who has filed the application prior to March 2017 which is still pending under opposition is also not very clear and no guidelines with respect to expedited processing has been published by the Registry yet. While the reasons given by the Registrar for allowing expedited processing during post examination stage, such as legislative intent, data regarding reduction in time period taken by the Registry for examination between 2015 and 2017, no adjudicatory power on the Registrar under the new Rule 34, justification for offering speedy trial for extra fee, etc., and the ambiguity of the new Rule needs to be analyzed and discussed separately and an appeal against the said order of the Registrar is pending before the Delhi High Court, in this article, we will restrict our discussion to the availability of similar expedited examination procedures in other countries and for other intellectual property types and comparison of the same with the new Rule.
Expedited Examination of Patent Applications in India:
The Patents (Amendment) Rules, 2016 introduced Rule 26C to the Patent Rules, 2003 and allowed expedited examination of patent applications for startup entities and international applications with Indian patent office as the International Searching Authority or International Preliminary Examining Authority. Subsequent amendments to the said Rule have expanded the availability of expedited examination to few other categories of Applicants such as small entity, natural person, female applicant, Govt. department, company or institution and those eligible under patent prosecution highway arrangement with patent offices of other countries. The said Rule related to expedited examination of patent applications are purely limited to examination of applications and the same specifically excludes pre-grant oppositions3 from the scope of expedited examination. Further, the said Rule also states that a request for expedited examination shall be made within 48 months from the earliest of the priority date or application filing date.
Trade Mark Expedited Examination / Processing in other jurisdictions:
Numerous other trade mark offices around the world also offers expedited examination of trade mark application or expedited processing of trade mark oppositions, on satisfaction of certain grounds and requirements. An overview of expedited trade mark procedures of major jurisdictions are given as below;
It can be noticed from the above that expedited examination/processing in other jurisdictions are available only for the Applicants having valid reason or ground for special treatment and the concerned trade mark offices can also deny such requests if the requirements are not met. Further, expedited examination system in jurisdictions like Australia, Canada and EU are available at no additional cost for genuine Applicants who are in need of registration to take action for infringement or protect their mark.
Conclusion:
Expedited processing, particularly in opposition proceedings involving multiple parties, pleadings and evidences, shall be allowed only on the basis of a valid reason or justification and the speedy processing and such special treatment if permitted on the instance of the Applicant, shall also be made available to the Opponent. With respect to the equal access to justice and fair trial, the Honble Income Tax Appellate Tribunal, Madras9 had rightly observed that “It is one of the most time-honoured and cardinal rule of administration of justice that a party (adversary) should be heard by any Court or Tribunal in the manner he has approached the Court/Tribunal and that he should never be preferred or selected over other litigants/adversaries from the long pending queue unless and until, we repeat, unless and until there are strong compelling and justifiable reasons for bestowing a preferential treatment to a party for hearing him on priority and out of turn basis. Breach of this salutary principle will not only cause prejudice to other litigants who are waiting in the long queue but even cause injustice to them and the Court/Tribunal may be accused of arbitrariness for preferring one litigant over the others from the long queue of pending appeals/applications.”. Clearly, the special treatment on the payment of additional fee for jumping the queue is not the intention behind the introduction of the new Rule 34.
Further, the new Rule 34 do not provide any power with the Registrar to examine and deny a request for expedited processing. Limiting the Registrar’s discretion to examine the reasons for expedited processing before its allowance is contrary to the powers vested upon the Registrar under Section 127 of the Trade Marks Act, 1999. It is an established judicial principle that early/urgent hearings before the courts and tribunals are not a matter of right, but shall be examined by the concerned tribunals before allowance. This position was upheld by the Hon’ble Delhi High Court10 which expressed that “the tribunal’s observation in the impugned order made in the course of the rectification application i.e. that an order, allowing an application for early hearing, is merely administrative, is clearly incorrect”. If the provisions of the new Rule 34, which is ambiguous and liable to be struck down, is to be interpreted to mean that the Applicant can opt to expedite processing of every steps involved in the registration process merely on the payment of an additional fee without providing any compelling reason, then India is probably the only country that allows expedited processing of all stages of registration of trade marks starting from examination to registration/refusal for a meagre amount of INR 40,000 (INR 20,000 for individual, start-up or small entity applicants) with no other requirement.
_________
1. Order dated 28 April 2022 in Trade Mark Application No. 3544623
2. (a) Article 14 of the Constitution of India, (b) Article 7 and 10 of the Universal Declaration of Human Rights & (c) Article 14 of the International Covenant on Civil and Political Rights
3. Rule 24C(12) of the Patent Rules, 2003
4. Australian Trade Marks Regulations 1995 – Regulations 4.18 and 4.19, available at: https://manuals.ipaustralia.gov.au/trademark/1.-expedited-examination
5. Source: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04946.html
6. Source: https://euipo.europa.eu/ohimportal/en/fast-track-conditions
8. The UK Trade Marks Rules 1998 – Rule 17A & https://www.gov.uk/government/publications/trade-marks-fast-track/fast-track-opposition
9. Olympia Paper & Stationery Stores vs. Assistant Commissioner of Income Tax [1997 63 ITD 148 Mad]
10. Dr. Prannoy Roy vs. The Deputy Commissioner of Income-Tax & Ors. [Order dated 4 May 2018 in W.P.(C) 4742/2018 & CM APPL.18248-18249/2018]