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Indian Trade Marks Office set to abandon more than 1,80,000 trade marks in the next 30 days.

The Indian Trade marks Office (TMO) has issued a public notice on 6th February with two lists of around 1,80,000 trademark applications which it will treat as ‘abandoned’.

The first list contains more than 98,000 marks, where the TMO claims that Applicants have failed to file a response to the office action (examination report) within the time limit. Consequently, the TMO intends to treat these as ‘abandoned’ u/s 132 of the Trade Marks Act, 1999 and u/r 33(4) of the Trade Marks Rules, 2017. The time limit to file a response to office action under the Act is one month from the service of examination report. The TMO has mentioned the issuance of the examination report against each of the application numbers in the list.

Second list contains more than 80,000 marks which are under opposition. TMO claims that the Applicant has failed to file its counter statement within the time limit (of two months). Consequently, these applications shall be ‘deemed to have abandoned’ as per the provision of Section 21(2) of the Act. The list mentions ‘CORRES_DT’ which I think the TMO wants us to assume it to be the date on which the notice of opposition was dispatched (served?) on the Applicant. Basically, its the date from which TMO is computing the two months deadline.

Some may recall that the TMO back in 2016, had abandoned more than 1,60,000 trademark applications on the ground of Applicant’s default to respond to examination report within time. This was without any opportunity or warning to the Applicants. Several applications were wrongfully abandoned. A writ petition was filed and the Delhi High Court dragged the TMO over hot coals.

This time however, the TMO has put the Applicants to notice and has published the applications numbers which it intends to pass abandonment orders. The applications will be abandoned unless an Applicant shows cause by providing the proof of timely filing of its counter-statement or response, as the case may be. The deadline to do so is 6th March 2023.

This is a welcome step and am excited that this will help TMO clear its pendency. But I was surprised, not in a good way, to see that the earliest application in this list is of the year 1991. Not just that, it even took 16 years for service of this opposition on the Applicant!

Easy way check if your matters are on the list.

I was frustrated to see that this huge list of more than 6000 pages is a PDF file which does not mention the trademark agent details or law firm name handling the applications. In fact, it is not a list at all. It’s a 6000 page extract of the Trade Marks Journal. Quite painful if you handle a large trademark portfolio to do Ctrl + F search for your marks in a 6000 page document. Best of luck ! But you can check whether or not your applications exist in the lists under 10 minutes with these two simple steps.

Step One

Covert the PDFs into Excel spreadsheets. You can use any of the free file convertor tools on the internet. But I saved you the trouble. You can download Excel spreadsheets of the TMO lists from these Google Drive links. List 1 weblink |List 2 weblink.

Step two

Open the Excel workbook. Paste your application numbers in a column (say column J ) and paste the below Excel formula in the next cell (say column K). Then copy the formula all the way down.

=IF(ISNA(VLOOKUP(J3,A:A,1,FALSE)),”No Match”,”Match”)

This formula will search for the value in J3 within the entire column A, and return “Match” if a match is found, or “No Match” if no match is found.Where:

• J3 is the cell you want to check in column J.
• A:A is the range of cells that make up column A.
• VLOOKUP returns a value from a table based on a specified value in the first column of the table.
• 1 is the column number that you want to return a value from. In this case, it's the first column (column A).
• FALSE indicates that an exact match is required.
• ISNA returns TRUE if the argument is the #N/A error value, and FALSE if the argument is any other value.
• IF function checks the result of ISNA and returns "Match" if the result is FALSE (indicating a match was found), and "No Match" if the result is TRUE (indicating no match was found).

If you aren't familiar with Vlookup, dont worry- the Excel lists I shared have the formulas in built. Just insert the your application numbers and GO!