“WITH GREAT POWER COMES GREAT RESPONSIBILITY” - Indulgence of Indian Trade Marks Registry for leading evidence in opposition proceedings

The current Trade Marks Act of 1999 came into force on September 15, 2003. Amongst the several changes that this Act brought about, one of the prominent features addressed was the necessity to cut down the length of opposition and rectification proceedings, at least to the extent of finishing the pleadings within a stipulated time frame.

The old Act like the new Act prescribed statutory time limits to file the notice of opposition (with 4 months) and counter statement (within 2 months). The old Act, however, did not prescribe any time limit to lead evidence in support of opposition and counter statement. Non-prescription of time limit led to the malpractice where extensions for leading evidences ran into years! Since no justification was required for seeking extension as long the requisite form TM-56 was filed. The fee was nominal (Rs. 20/-) and therefore it was not a burden for either parties to keep seeking extensions and protract the matter for long period, perhaps indefinitely.

To curb this practice, the new Act prescribed fixed time limits to lead evidence i.e. maximum three months to lead evidence in support of opposition and counter statement each. This three month period includes one month of extension, which has to be sought before the expiry of two months along with a fee of Rs. 500/-.

This brought much needed relief to parties involved in trade mark tussle. This also brought about situation, where the Trade Marks Registry started construing this three months period very strictly and parties, who had filed evidence post three months, were being refused. The attorneys on the other side also started crying for blood if evidence was filed beyond the prescribed three months. Little did these attorneys realise that someday they would be in the same boat.

Suddenly, there was need to interpret the law. The question being –

“Is the prescribed period of three months non-extendible? Or in other words does the Registrar have the powers to extend time?”

The answers to these questions have now long been decided. Probably the first case where this question was decided under the new Act was Asian Paints v. RTM 2005 (30) PTC 444 (IPAB). IPAB relied upon the full bench judgement of Hastimal Jain v. RTM 2000(24) PTC Delhi (Full Bench) and held that provisions of subordinate legislation (Trade Marks Rues, 2002) have to be in conformity with provisions of principle legislation (Trade marks Act, 1999). It has now been decided that by passage of new Act does not mean that the spirit that was imbibed in the old Act has also died. It is also now settled law that it is within the Registrar’s discretionary powers to grant extension of time to lead evidence.

The latest in line of such discretion to be applied is the disposal of interlocutory petition in opposition No. CAL-224252 between Larson & Toubro Limited v. Linear Technology Corporation. The Registrar relied upon the Asian Paints and Hastimal Jain and observed that “procedural prescriptions are the hand maid, not mistress, a lubricant, not resistant n the administration of justice…”

Merely because extensions have been granted on a regular basis, does not mean that the allowance of extension to lead evidence is a matter of right of the opponent or the applicant. It is a matter of discretion of the Registrar based upon sound reasoning not arbitrary or whimsical.

The discretionary powers the Registrar is vested with under Section 131 of the Act are vast. However, this discretion requires to be based upon sound principles of justice, equity and good conscience or as Uncle Ben tells Peter Parker (Spiderman) - “With great power, comes great responsibility”. To wield this discretionary power in cases of allowing extension to file evidence, the Registrar should consider the following points:

(a) The genuine reason and intention for seeking extension by the opponent or applicant;

(b) The conduct of the parties which requires extension beyond statutory period i.e. is the party unnecessarily delaying the leading of evidence by resorting to frivolous excuses;

(c) If the party has periodically sought extension before the time period expired;

(d) The evidence that the party desires to bring on record. There are times, when parties have brought on record evidence which could not possibly have taken more then three months to compile;

(e) The home country of the party leading evidence. A company may be based abroad and have certain laws and customs which made it impossible for the party to compile the evidence and file it within prescribed period;

(f) If the party is an applicant or the opponent. Generally, the applicant has more at stake, having filed the application and therefore consideration may be given in this regard. However, this is not a set rule and decision to this extent has to be taken into account by considering all factors in totality.

(g) Any other factor that the Registrar may deem fit to allow the extension.

These are just few points which the writer feels should be kept in mind by all the three parties-Registrar, opponent and applicant- before deciding if extension should be allowed.

New Member

Hi I am Rajesh and I specialise in patent laws. I woudl be contributing henceforth on this blog

A bit about Patent Searches

In case of patents, if the invention that is being searched has already been anticipated in the world, then potential patent for similar invention (unless of course one is able to prove novelty and non-obvious) is more or les compromised. Since the search requires taking into account searching all kinds of records around the world, the enormity of the task is hard to ignore.

Here again, it is practically impossible to inspect all records in every country around the whole for reasons such since the time that would be spent carrying out such an activity as well the costs that would be incurred would be enormous. Even if one were to carry out such an exercise, there is still no surety of the accuracy of the results. Therefore, patent searches are more or less an approximation with an effort to find patents that come closest to the invention for which search has been conducted.

With the above in the background and near impossibility of having all the records of world in hand yet, patent searches require to be conducted through the next best source. In today’s world, the online databases of the patent offices have been interlinked and there are private companies which have after painstaking efforts compiled nearly all the patents documents together on online databases. While these databases of patent offices and private search companies still cannot be said to be complete, but are considered as good sources as at least more or less complete in terms of the patents that have been filed. One portion of information which has been compiled and centralised forms the source for conducting patent searches.

To give an example of the enormity of the project, in USA itself there are over 5 million U.S. patents, consisting of 100-200 gigabytes of text. There are also more than 40 million pages of bitmap images, making up 4-5 terabytes of data. Patents range in size from a few kilobytes to 1.5 megabytes. [Source: A Patent Search and Classification System by Leah S. Larkey]

The patent searches are conducted in online paid and free patent databases. The patent search does not account for applications that have not yet been disclosed by the patent offices by reasons of secrecy directions or non-publication of the patent specifications or some other reason. The patent search also does not account for any invention, technology, prior art that is already in existence which has not been documented or patent application has not been filed. Further the patent search does not include prior art that may have bee used in the market since these are not documented facts. In case more information is required about certain technology or patent or scenario then market survey and investigations can be conducted.

As can be observed patent searches are not foolproof. Rather, patent search is an inexact science depending on numerous factors and circumstances. However, patent searches provide a reasonably good source of information of “what not to do” and developing a patent strategy. Therefore, everything said and done, patent search are always recommended. It is better that you are forewarned about prior rights then being sued for large sums of money by prior patent holder.

The costs of patent searches may vary from as low as US$ 200 to as high as US$ 3000 depending upon the several factors such as interalia kind of search, the opinion required, urgency, the field being searched, number of similar patents that are revealed upon conducting the search, patent offices where the search are being conducted or translations that may be required. Usually law firms charge for searches on an hourly basis since it is not possible to pin the time that would be spent on a particular search.

Another point which requires to be factored into a search cost is that of paid database. These databases usually have either a monthly charges or charge based upon each session. Further, if a search reveals conflicting art, then those documents have to be ordered. Here again it depend upon from where the documents are being ordered from and if these documents require to be translated. For instance the documents from Japan and China invariably require to be translated and the costs for translations are usually quite high since the documents are technical and precise translation is required.

The first search results usually reveal numerous patent documents. Therefore, the searcher requires sieving through these documents and refining the search result to pull out the relevant patent document that may be of relevance. To do this not only does it time but also experience of the searcher.

Further, while conducting patent searches the searcher also tries to obtain information and documents from other sources apart from databases of Patent Offices such as scientific journals, professional journals and other such literature. Here again, the literature may or may not be easily available and the discovering of such literature depends largely of the proficiency of the searcher and a bit of good luck cannot be ignored.

Thus, to put a figure on how much a search would cost is not easy. It has often happened that the cost of searches been more then writing patent claims. It is doubtful that anyone with surety be in apposition to compare the difference of costs between two searches. As said above, a search can be completed with few hundred dollars or may take thousands also.

These are the thoughts which have been going through my head and i Have finally put them down!