International report - Directions on systematic issuance of certified copy of trademark records 06 Sep 17
LexOrbis - India
Under the technical definition established by trademark law, a ‘certified copy’ is any document which:
- has an entry in the register of trademarks;
- bears certification from the Trademark Registry; and
- has the value of admissible evidence in any court of law.
A certified copy can be obtained by any person by submitting an application to the Trademark Registry on payment of the prescribed fee.
Having put the above mechanism in place, the registrar cannot be compelled to produce any document under its care and custody except by court order in special circumstances, the certified copies of which can be obtained and placed on record, in legal proceedings to which it is not a party.
Although the procedures relating to certified copies are laid down by the Trademark Rules 2017, this was the first time that the practical problems and their consequences have been observed and examined by the high court. The court set out vital procedural refinements with respect to the issuance of certified copies by the registrar of trademarks in Registrar of trademarks v Kapoor saws manufacturing co (CRP 146/2015 and CM 21927/2015). The guidelines and directions issued thereunder serve the dual purpose of structuring the system by which certified copies of the registrar’s office’s records are issued and systematising its maintenance of files and records.
The civil revision petition disputing the proclamation issued by the additional district judge was instituted by the registrar of trademarks in Mumbai, following its failure to respond to the show cause notice issued earlier in lieu of the non-production of summoned records.
No request to obtain the certified copies of the petitioner’s record was made, but a summons was issued asking the petitioner to produce certain records.
The respondents contended that applications for certified copies made to the Trademark Registry remain pending for an indefinite period and hence the growing need to summon the record was taken into consideration by the high court.
The high court did not consider the civil revision petition to be maintainable against the order of the lower court and found it fit to issue directions of a general nature, in view of the preceding facts.
Analysis and effects of directions
The court directed that one nodal officer should be nominated for each of the branch offices of the Trademark Registry, solely for the purpose of receiving applications and issuing certified copies. The contact information of such officers will be available on the official website of the registrar of trademarks. It remains to be seen whether such nodal officers will be nominated from existing staff of the respective offices or whether new recruitments will be made solely for this role.
The order also mandates that the applicants should be able to track the status of their request for the certified copy, which means that applicants need not apprehensively wait for the certified copy to arrive. The order also provides that if any defects are made in the application when obtaining the certified copy, a statement of such defects should be reflected in the status and details of the application. This will save considerable time by replacing the system of having the registrar send an office action to correct such deficiencies.
Rule 122 of the Trademarks Rules sets out the provision relating to certified copy requests. An important position created by the directions regarding certified copies is that Rule 122, by itself, does not establish a timeframe within which the registrar must furnish the certified copy. Hence, the one-month timeframe as set by the high court can be appended to and read with the foremost part of this rule. Such requests can be made on Form TM-M with the approximate fee of $14 per request for online applications and $15.50 per request for paper filings.
However, the proviso clause of Rule 122 provides for furnishing of the expedited certified copies made on Form TM-M with the approximate fee of $70 for online applications and $78 for paper filings. Expedited copies must be made available within seven days.
In order to provide the applicant with certified copies within the one-month timeframe stipulated by the court, it is imperative that the records are kept complete, up to date and accurate. The importance of submitting the original documents is greater than ever. The organisation of soft and hard files will be mandatory. Trademark owners, registered users and agents should expect to receive registrar notices requesting documents pertaining to their respective matters.
The additional information which must be included in the certified copies identifies whether a copy, as certified and forwarded, is from the original document or a copy thereof. The guidelines indirectly require that the original documents must be kept and maintained. If the originals cannot be retained, verified copies with the endorsement ‘original seen and returned’ must be retained instead. The registry may insist on the submission of original documents, including assignment deeds, license deeds, powers of attorney and documentary evidence of use (eg, invoices).
The high court has given due importance to the fact that the certified copy as provided by the registrar’s office should be legible, and if the original includes any colours other than black and white, these colours should be reflected in the certified copy. It is particularly important for trademarks that proper representation of colours in the certified copy reflects those in the original documents.
When seeking a certified copy, if the original or a copy of the original is lost or misplaced, the registrar is at liberty to intimate the same to the applicant. This liberty should not act as an escape route from the strict responsibilities otherwise imposed by the court on the registrar’s office for robust record keeping.
The high court conclusively stated that once the directions and guidelines are in place, there will be no need to routinely issue summons to the registrar of trademarks as a witness, requiring it to produce records without recording the reasons for and purpose of issuing the summons.
Certified copies are particularly significant, as such documents are admissible as evidence in court. However, the proper use of this machinery cannot be performed by either party unless a robust system of proper record maintenance is in place.
These guidelines and directions seek to streamline the system and manner of issuing certified copies. This order will have a far-reaching positive role in systematising record keeping at the Trademark Registry. The long-overdue responsibilities of the registrar of trademarks have finally been realised by the high court.
From a legislative standpoint, no amendments to trademark law or the Trademark Rules are required to implement the directions of the high court. While the machinery is already in place, vigorous efforts on the part of the Trademark Registry are required to set the wheels in motion.
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