INDIA – A New Development at the Trade Marks Registry
On July 28, 2016 the Trade Marks Registry (“TMR”) has announced that it will no longer issue original Certificates of Registration for applications published on and after November 23, 2015. Rather the TMR will, starting August 1, 2016, issue Certificates of Registration for such applications via email. The notification states that the TMR will send certificates to email addresses on record at the TMR and also upload these certificates on its web site.
While this move will undoubtedly help in the recent backlog reduction drive undertaken by the TMR, the following points are noteworthy:
The TMR will only issue an e-copy of a Certificate of Registration if its electronic database contains the trade mark application in question. If you filed a hard copy application, then you should make sure that it is uploaded on the TMR’s database. If you filed electronically, check the database to make sure that the application has been uploaded;
The notification does not cover those applications for which requests for amendment has been filed. This means any requests for recording chain of title, address, etc. should ideally be filed after the Certificate of Registration has issued. If, on the other hand, you have pending requests, it is important to have these requests processed;
If there is any outstanding fee or other requirement regarding an application, then this notification does not apply. Accordingly, it is imperative to check your application(s) to make sure that this is not the case;
The notification does not apply in the event that registration of the mark has been prohibited by order of a Court, Intellectual Property Appellate Board or any competent authority
As per the notification, Certificates of Registration for excluded applications will be processed as per law by the Registration Section of the TMR. This means that the issuance of original Certificates of Registration will continue for some time. We expect that, ultimately, all Certificates of Registration will be digitized.
Clearly, the TMR is making strides in its backlog reduction drive. Quicker issuance of Certificates of Registration will, undoubtedly, help brand owners in their enforcement efforts. The TMR must be lauded for this important step towards achieving complete digitization.