Introduction
As per the Trademark Act, 1999, an applicant or trademark holder may request more time to complete specific procedural requirements during the trademark registration process by applying for an Extension of Time. The Trademark Act defines deadlines for different stages of the trademark registration, including submitting objections, replying to office actions, and finishing the registration process. However, there might be unforeseen circumstances such as unanticipated delays, personal or business issues, etc., that prevent the applicant from meeting these requirements on time.
To prevent abandoning their application or losing their trademark rights, the applicant in such circumstances may request a time extension from the Registrar of Trademarks. The provision provides that trademarks can be fully protected and that applicants are not unfairly disadvantaged by procedural delays. An extension request must be supported by a valid cause or grounds, and the registrar typically decides whether to grant it or not. Only those deadlines specified by law may be extended, and applicants must adhere to the procedure in order to preserve their application or rights without suffering unfavorable outcomes.
Section 131 of the Trademark Act, 1999
The registrar has the power to extend the time for doing any act on receiving the application for the same in the prescribed manner and fee. If the registrar is satisfied that there is sufficient cause for extending the time, whether the time has expired or not he may extend the time and inform the party about the same. The Registrar is not required to hear the parties before disposing of a trademark application for extension of time. Any party to the trademark application shall not appeal against any order of the Registrar under this section.
Extension of time at various stages of trademark process
Reply to Examination Report
In India, the response to an objection to a trademark is referred to as the reply to the trademark examination report. The application will be considered abandoned if the response is not submitted within 30 days of the examination report. By submitting TM-M form electronically along with the fees of Rs. 900 and providing a valid reason for the delay in reply filing, the applicant can ask the registrar to extend the 30-day period.
Adjournment of Hearing
It is important to attend the trademark hearing as soon as the date is notified by the Trademark Registry, as failure to do so could lead to the trademark application being rejected without taking into account its merits. It is always advised to file a TM-M at least two days prior to the hearing in order to request a postponement of the hearing if the applicant will be unable to attend. However, a form TM-M is submitted along with the fees of Rs. 900, if a trademark adjournment is requested.
Opposition Stage
During the opposition stage, the applicant has to file reply or counter statement to opposition notice within two months. If the applicant fails to file the counter statement within the prescribed time limit then there will be no extension of time to file the same and the trademark application shall be deemed as abandoned. The trademark registry has no power to extend the deadline for filing of evidences at any stage.
In case Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. [CA/COMM IPD- TM, 146/2022],wherein the Delhi High Court held that the time limits prescribed under the Trademarks Rules are mandatory in nature and the learned Registrar has no discretionary power to extend the time period of filing evidences at opposition stage.
Conclusion
In conclusion, the extension of time gives trademark owners or applicants more flexibility by giving them more time to complete necessary compliances. This provision makes it possible for applicants to properly respond to objections or delays in the process without endangering their rights. The Registrar, however, has the final say over whether to grant the extension and may take into account things like legitimate delays and any documents in support. Thus, the extension of time is the mechanism which helps in striking a balance between the efficient administration of trademark procedures and the requirement for procedural justice.
India: +91-1141 8355 50