DPIIT Initiates Re-validation of Trademark Applications: Important Information for Trademark Holders

As per Notice dated August 13, 2024, the Department for Promotion of Industry and Internal Trade (DPIIT) has initiated a re-validation process for trademark (TM) applications that were previously processed by contractual staff hired through the Quality Council of India (QCI). This re-validation is being conducted to ensure that all applications have been handled in full compliance with the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. This directive follows a ruling by the Calcutta High Court, which questioned the authority of these officers to issue quasi-judicial orders. The re-validation process involves a two-tier review system to ensure all decisions comply with legal standards, covering applications from examination to post-registration stages.

Overview of the Re-validation Process:

The re-validation process will cover trademark applications at various stages of their lifecycle. Here’s a breakdown of what to expect:

1. Examination Stage:

   
   

   • Review: Applications reviewed initially to determine their compliance with legal requirements.

   • Action: If the Level-1 Officer (Examiner) finds that an application was processed correctly, they will validate it. If not, they will propose corrective actions or further review under Sections 19 or 57(4) of the Trade Marks Act, 1999 and send the application to Level-2 officers to initiate an appropriate process for the application. Subsequently, the head offices of the respective TMR branches may fix a hearing on priority basis.

     
     

2. Pending Application Record Management (PARM Stage):

   
   

   • Review: Applications that have passed initial acceptance but require further scrutiny.

   • Action: Similar to the Examination Stage, the Level-1 Officer will review and either validate or propose actions for correction including but not limited to re-examination of the application, which the Level-2 Officer will then act upon. Subsequently, the head offices of the respective TMR branches may fix a hearing on priority basis.

     
     

3. Show Cause Hearing Stage:

   
   

   • Review: Applications that required additional clarification or justification from the applicant.

   • Action: The Level-1 Officer will reassess these cases. If they find the application was handled properly, it will be validated. Otherwise, corrective measures including but not limited to amending the application, responding to objections etc. will be proposed for further action. Subsequently, the head offices of the respective TMR branches may fix a hearing on priority basis.

     
     

4. Opposition Stage:

   
   

   • Review: Applications that faced opposition from third parties.

   • Action: The re-validation process will ensure that all oppositions and decisions are handled according to the law. Otherwise, corrective measures will be proposed for further action. Subsequently, the head offices of the respective TMR branches may fix a hearing on priority basis.

     
     

5. Post Registration Stage:

   
   

   • Review: Applications that have been registered but may require re-assessment.

   • Action: The Level-1 Officer will review these cases to confirm compliance or recommend actions as necessary. Otherwise, corrective measures will be proposed for further action. Subsequently, the head offices of the respective TMR branches may fix a hearing on priority basis.

     
     

Roles and Responsibilities:

• Level-1 Officers: Initially review and validate or propose actions for cases. If they encounter discrepancies, they will escalate the issue to Level-2 Officers.

• Level-2 Officers: Review the proposals from Level-1 Officers and take final action. They may also validate the decisions if they disagree with the proposals, providing written reasons for their decisions.

  
  

IT and Monitoring:

• IT Division: The Trademark Registry’s IT Division will develop and implement necessary modules to support this process, including tracking and reporting of work output.

• System Administrator: Responsible for preparing weekly reports and ensuring accurate data entry and record-keeping.

  
  

Legal Case Handling:

For applications currently under appeal or pending before the courts, the relevant data will be updated accordingly. The cases will be managed in compliance with court orders, and any directions from the courts will be followed.

How This Affects You:

If your trademark application was handled by a QCI-hired officer, it might now be subject to a re-validation process mandated by the DPIIT. As a result, your application could undergo additional scrutiny, potentially leading to further hearings or other actions required to finalize the status of your trademark. This process is intended to ensure that all trademark decisions comply with legal standards, which may cause delays or necessitate further involvement from you.

Our team is closely monitoring the situation and will keep you informed of any developments that may impact your trademarks.

We recommend staying vigilant for any notices or communications from the Trademark Registry regarding your applications. Should you require any assistance or have concerns about how this process may affect your trademarks, please do not hesitate to reach out to us at sonal.madan@iprattorneys.com.