Challenges in Trademark Prosecution

Trademark Prosecution is a sequence of exchanges performed by a trademark lawyer with the administrators of a trademark's office to get the specified job done. This prosecution is made before or after registering a trademark mark at the indigenous or international level. Hence, this is an unavoidable procedure involved with trademarks. Therefore, getting one's trademark registered is invariably advisable to evade any prospective disputes so that one's brand reputation does not get stolen by anyone else.

Almost all documents at the Trademark Office are now digitised, although a few documents created before 2003 may have some missing elements.

Applications can get filled online, and documents are revamped instantly for these. A large ratio of applications in India is still filed physically, which can end up in a time consumption of between one and two months for such applications to get revamped.

Challenges in Trademark Prosecution in India

Stakeholders' anticipations

The working of the Trademark Office has become more evident due to digitisation. Its different components now need to take their service to the next tier by developing internal timeframes for the following tasks and conveying these to stakeholders:

• the time within which an application must be reviewed;
• a deadline for monitoring replies to the examination report and setting a hearing if needed;
• a deadline for giving registration certifications.

Each unit should contemplate appointing a PR officer to address any grievances of rights holders or practitioners. In accumulation, each should set out a strategy to correct mistakes due to inaccurate data entry.

Enhancing reviews

In a proposal to review applications within 12 to 15 months and handling in the sense of the Madrid Protocol provision that all reviews take place within 18 months, surveys say that a high percentage of applications for trademark registration in Mumbai encounter an initial rejection.

Different reviewers use additional investigation measures or strings to cite contradicting trademarks. Some believe only the first three letters of a trademark, whereas others explore only the trademark.

Some also state that trademarks are phonetically identical to the questioned trademark. It is necessary that the right approaches and training get executed to help promise consistency in reviews. In addition, search reports attached to the investigation report often cite a preliminary application or registration by the same applicant.

Further, non-subsisting trademarks are often quoted in the search report, directing to a hypothesis that the examined trademark cannot move on to the publication or advertising setting. In many circumstances, this is because the trademark's status has not been revamped on the Trademarks Registry website. A decree has been passed that the trademark should get treated as refused, abandoned, removed or not renewed.

Is Madrid protocol functioning?

Several multinational applicants have opted for this route since India signed up for the Madrid Protocol. In 2013 India was selected in 1,889 applications; in 2014, this number rose to 7,860. The approach is gaining traction, despite its drawbacks in central incursion (within the first five years of primary registration).

However, several such applications have also faced rejection or disapproval from the registrar, which must then get contrasted through regional representation. Thus, stakeholders must select a local agent so complaints can be dealt with promptly.

Provided the World Intellectual Property Organisation gives applicants only one month in which to react to such notifications. Evaluating the high percentage of rejections, it also makes logic to check the registrability or availability of a prospective Trademark before applying or symbolising India.

Suggestions for brand owners

Indian trademark law permits trademarks to be filed, registered, and established for use. Thus, a brand owner need not ascertain the actual use of the trademark before registering it, given that utility can get verified within six months of trademark registration in Mumbai.

Regarding the update, it is not essential to deliver an affidavit with proof of using the trademark in India. Thus, a trademark can get renewed based on an appeal for renewal accompanied by authorised costs.

The Trademark Office database is publicly available online; stakeholders can review a mark's availability and evaluate the risk of using and registering it.

The online sale of goods is acceptable to assert the use of the trademark in India, even if the online shop is outside India, given that the goods in question are obtainable for sale to customers in India.

Conclusion

The significance of trademarks for businesses and customers can never be highlighted enough. These trademarks help the businesses gain the distinction of their brands, to show their products and services as unique to their opponents; in addition, it stops competitors from copying or robbing their brand name. When it comes to customers, it helps the customers recognise the brand effortlessly and differentiate it from similar products available in the market.

Trademark law in India has experienced substantial transformations (both substantively and procedurally) over the last ten years. At the same time, there has been a constant rise in the number of applications filed. Unfortunately, this has concentrated attention on the lags that applicants persist in facing. Hopefully, the Trademark Office will keep its efforts to decrease the average application review period, equipping rights holders and practitioners with a more optimistic trademark prosecution setting.