INDIA: Update on the Trademark Revalidation Process

On August 13, the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) purportedly issued an internal Office Order, No. CGPDTM-16012/2/2024-CGOFFICE/78, concerning the revalidation of trademark applications where final decisions were made by contractual personnel. This Office Order was necessitated by the decision dated August 2, passed by the Hon’ble High Court at Calcutta in Visa International Ltd v. Visa International Service Association (IPDTMA Nos. 82 and 83 of 2023). The Hon’ble Court determined that contractual personnel, appointed by the India Intellectual Property Office (IP Office), were not empowered to pass quasi-judicial orders. Consequently, the orders passed by the contractual personnel in three specific oppositions which were challenged before the Hon’ble High Court at Calcutta were set aside. Given the remaining orders in both office actions and oppositions by the contractual officers were unsustainable, a decision was taken by the IP Office to adopt a procedure to revalidate them, which position was necessitated at the ministry level.

Author’s Note:
Since the internal office order passed by the CGPDTM has gone viral and stirred considerable concern among IP owners and stakeholders worldwide for want of clarity and timelines, INTA President Dana Northcott and INTA CEO Etienne Sanz de Acedo, together with members of the Association’s Trademark Office Practice Committee—India IP Office Subcommittee met with the CGPDTM, Dr. Unnat P. Pandit, and other senior officials including Heads of Office from various branches of the Trade Marks Registry across India last week. The INTA delegation was informed that the revalidation process is estimated to be complete in the next five to six weeks. The delegation requested that the CGPDTM issue a public notice providing details of the revalidation process that refers to the relevant statute, provides details of the applications/registrations that are affected, and outlines the consequences of noncompliance.  The dialogue between INTA and the India IP Office demonstrates a shared commitment to improving IP regulations and ensuring that all stakeholders are adequately informed and supported during the revalidation phase. As the situation evolves, continued communication and engagement will be essential in ensuring that brand owner interests are adequately factored into IP Office practices.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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