In the dynamic world of brand protection, a single misstep in trademark prosecution can derail hard-earned rights. In India, where trademark applications often undergo intense scrutiny, the balance between efficiency and procedural fairness is critical. Recent matters have highlighted the increasing importance of invoking “exceptional circumstances” to avoid premature or flawed refusals.
As examiners strive to clear backlogs, trademark applications are increasingly at risk of being rejected without a fair chance to be heard. Fortunately, the Indian Trade Marks Registry retains discretionary power to reconsider such decisions where justified under the law.
The Legal Framework: Balancing Process and Discretion
The Trade Marks Act, 1999 and the Trade Marks Rules, 2017 govern the procedural steps following an objection or provisional refusal. As per Rule 38, applicants are entitled to respond to the examination report and request a hearing. Rule 33(4) empowers the Registrar to admit late evidence or submissions in “exceptional circumstances” to prevent procedural injustice.
While the Act does not define “exceptional circumstances,” Indian courts have stepped in to interpret the phrase liberally in cases where rigid adherence to procedure would result in substantive injustice.
Key Case Law:
• Sunrider Corporation v. Hindustan Lever Ltd. & Anr., [2007 (34) PTC 569 (IPAB)]
The Intellectual Property Appellate Board (IPAB) held that procedural lapses should not defeat substantive rights if the applicant demonstrates diligence and good faith. The Board allowed reconsideration after a missed deadline, acknowledging the applicant's proactive conduct.
• Wipro Limited v. Registrar of Trade Marks & Ors., [2015 (62) PTC 276 (Del)]
The Delhi High Court reiterated that the Registrar must act judiciously and cannot reject applications mechanically without affording the applicant a meaningful opportunity of hearing, especially when the refusal stems from administrative or clerical lapses.
• Kabushiki Kaisha Toshiba v. Toshiba Appliances Pvt. Ltd., [2005 (30) PTC 95 (IPAB)]
The IPAB emphasized that principles of natural justice override rigid timelines when a party is prejudiced due to procedural anomalies.
Premature Refusals: A Rising Concern
In recent years, stakeholders have encountered refusals arising from:
• Non-receipt of hearing notices due to technical glitches.
• Miscommunication regarding hearing scheduling.
• Inadvertent non-appearance despite timely response.
• Incomplete examination due to misclassification or incorrect citations.
These situations often culminate in a flat-out refusal without the applicant being given a reasonable chance to present arguments or evidence.
Case Insight: Opportunity Lost - Then Reclaimed
In one recent case before the Delhi Trade Marks Registry, an application was refused after the applicant failed to attend a scheduled hearing. It was later discovered that the hearing notice had not been uploaded to the official portal due to a technical fault. The applicant promptly filed a petition highlighting this exceptional circumstance, and the Registry reinstated the matter for hearing.
In another matter, a client received a refusal based on an erroneously cited prior mark. Although assignment documentation had been submitted to prove a relationship between the parties, the Registrar had overlooked it. Upon presenting the chain-of-title and filing a review petition under Rule 127, the matter was reopened.
What Qualifies as 'Exceptional'?
Examples of exceptional circumstances recognized in trademark proceedings include:
• Systemic or technical error (e.g., hearing notice not uploaded).
• Registry backlog or procedural delays.
• Force majeure situations (e.g., COVID-19).
• Clerical oversight or erroneous citations.
• Demonstrable good faith by the applicant, including timely compliance.
Best Practices for Trademark Applicants
To protect against premature refusals and ensure procedural fairness:
1. Respond promptly to all examination reports and maintain dated records of submission.
2. Monitor the TM Registry portal daily post-response for hearing updates.
3. Request reconsideration with evidence of procedural lapse if applicable.
4. File RTI applications where transparency is lacking.
5. Escalate via review petitions or writ remedies when justified.
Reforming the Process: The Way Forward
With India’s trademark filing volume surging, systematized reforms can ensure both efficiency and fairness:
• Automated, verified notifications for hearings and orders.
• Registry circulars clarifying parameters for invoking exceptional circumstances.
• SOPs for Registry officials on reconsideration or review petitions.
• Publication of refusal trends and clarification on re-filing policies.
Conclusion
Trademark prosecution in India demands more than legal compliance it requires vigilance and strategic process management. “Exceptional circumstances” is not a loophole; it is a safety valve for justice in a procedural system under strain.
Applicants and counsel must not hesitate to invoke this route where legitimate, while the Registry must uphold the principles of natural justice in its procedural decisions.
Because a trademark isn't just a mark it's a brand’s identity, and it deserves due process.
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Authors:
Mohit Porwal, Associate Partner