Restoration Of Abandoned Trademark Applications Offers Relief

In the case of Intellectual Property Attorneys Association &Anr. vs. the Controller General of Patents, Designs, and Trademarks &Anr,[1] the Controller General of Patents, Designs, and Trademarks (“CGPDTM”) issued abandonment orders for over 1,60,000 trademark applications to reduce the backlog of pending applications.

Details

In response,the Intellectual Property Attorneys Association (“IPAA”) filed a writ petitionbeforethe Hon’ble Delhi High Court (“DHC”), claiming that the abandonment orders are arbitrary, contrary to the precedent set in 2016 and not issued in compliance with the Trade Marks Act. Pursuant to this, the Respondent undertook to withdraw the notices and reinstate the abandoned applications.Accordingly, on 13^th of April 2023, the petition was disposed of by the Courtbased on the said undertaking and the Respondent was given 10 days to comply with the order.

Conclusion

In compliance with the Court Order, the CGPDTM has issued the notice dated 21/04/2023 thereby reinstating the status of theseapplications.The decision by the CGPDTM to reinstate over 160,000 abandoned trademark applications within 10 days is a welcome relief for all IP practitioners and application holders. The abandonment drive due tothe non-submission of responses and non-filing of counter-statements in the oppositions,produced widespread confusion and concern among applicants. This action ensures that applicants’ efforts and money, invested in the process of registering their trademarks,are not squandered.They can now proceed with the process of acquiringtrademark registration without any hindrance.

Furthermore, it establishes a precedent for future abandonment campaigns and emphasizes the importance of adhering to the mandatesof the Trade Marks Act, 1999andproviding a fair and transparentapplication procedure.

[1] WP(C) – IPD 21/2023.