Lost in the maze of Trademark Procedures

By: Karimullah Adeni

How strong is our intellectual property order? Consider this. The law say a trademark is registered for a period of seven years. The practice is that it takes a minimum of five years to get on registered. The period usually left is only two years.

In many cases, it is even worse. You apply for a trademark registration, and at the expiry of seven years you are still waiting for the registration. 

Let us first look at the process of registration of the trademark of rice. Whenever a trademark registration is applied for, the Registry officials who are supposed to ensure that mark meets legal requirements first examine the mark then hearing is granted after the mark is published in the Trade Mark Journal. That is a statutory requirement. This is to see if the general public does not have any objection to the proposed mark. Two months are given for anybody to file an opposition once the mark is published in the journal and thereafter six months more extension can be taken. 

Once, all such oppositions are collected which takes at least 5-6 years to decide. Appeals may follow the decisions, but once the entire business is settled, then the Registry is supposed to issue the certificate of registration to the rightful claimant. 

That process, even on paper, looks lengthy. In practice, it takes much longer. The publication of the Trade Mark Journal is sinfully delayed. The latest Journal is that of April 1998. That too was not available before March this year. 

In neighboring India, where the law and the practice is very similar, at least on paper, the governments published monthly, and at times, even fortnightly journals to keep its trademark register updated. 

Our Trade Marks Registry was not always like this. Earlier, proper service rules were enforced in the Registry Office. There was far more professionalism. The rules of service said that the Registrar of the Trademarks should have worked as deputy registrar for at least five years.

Plus, he was supposed to have a degree in law and another post-graduate degree. The exceptions were far and few and even that needed a 10 year bar practice if the candidate was coming from outside the Registry.

All that changed when on the previous Registrars, decided to change the service rules. What prompted him to do that is still debated. But change he made which led to a situation that now, most of the people appointed do not know much about the business of trademark. They were bureaucrats who, at best, came from the commerce and trade group. 

The present Registrar is a fine example. He was appointed some three years ago. He made an attempt to bring about some change in the beginning but was not able to make a mark because of his limited exposure on the subject. Now when after serving for three years he has acquired some command on issues it is time for his next transfer. 

To work as a Registrar is a tricky job. Not only the Registrar heads the Registry but also the tribunal. 

The dual nature of his job as executive as well as judiciary demands a certain back-ground in legal practice. Since that practice is in a certain specialized field of law, the requirements become more technical.

Even the superior judiciary realizes the fact that a Registrar is a position of competency. On numerous occasions, various high courts and even the Supreme Court has remanded cases of the office of the Registrar for re-hearing, commenting that the Registrar was the competent authority for the purpose. 

Unfortunately, in our country, the system has yet to be evolved. The priority, however, should be to set the Registration system on track for an effective enforcement.