Expedited Processing of an Application
Chapter Twenty-Nine
Syllabus topic 1.4, "Conditions and Procedure for Registration of Trademarks."
Pages 130 to 132 of 742
In one line
For a higher fee an applicant can have the whole of his application dealt with quickly, not merely examined quickly.
In the wording a student can write in an exam: rule 34 of the Trade Marks Rules, 2017 allows an applicant, after receipt of the official number of the application, to request expedited processing on Form TM-M on payment of the fee specified in the First Schedule; the application is then examined expeditiously and ordinarily within three months from the date of its submission, and every later step through to final disposal is dealt with expeditiously, subject to guidelines published by the Registrar in the Trade Marks Journal.
Why it exists
Because an ordinary application takes years and a product launch does not wait. A trader who is about to spend on packaging, advertising and distribution needs to know whether the mark will be his. He may launch anyway, relying on his common law rights, but he does so without the section 28 right and without the section 29 action.
And because delay favours the wrong party. A counterfeiter can begin the moment a product appears. A proprietor with a pending application must sue in passing off, where he has to prove goodwill, rather than in infringement, where the registration proves itself under section 31.
What rule 34 gives, and what it does not
It gives speed at every stage. Rule 34(1) is drafted to cover the examination, the consideration of the response to the examination report, the scheduling of a show cause hearing if required, the publication of the application, and the opposition if any, till final disposal.
That is the change from the earlier position, under which only examination could be expedited, so an applicant paid for a quick report and then joined the ordinary queue.
It does not give a better chance of success. The grounds are the same. An expedited application meets section 9 and section 11 exactly as any other does, and an opposition is decided on the same material.
It does not remove the opposition period. The four months under section 21(1) run as they always do, and chapter 390 works them. What is expedited is the handling of the opposition, not its existence.
And it is rationed. Rule 34(2) permits the Registrar to limit the number of applications for expedited processing by publishing the limit in the Journal, so the facility is not available without restriction.
How it is requested
After the official number is received. Rule 34(1) says "after the receipt of the official number of the application", so expedition is asked for once the application has been filed and numbered, not at the moment of filing.
Expedited Processing of an Application
On Form TM-M, with the fee in the First Schedule, which is substantially higher than the ordinary application fee and is the reason the facility is used selectively.
Worked example
Devansh Pharma plans to launch a new syrup under the mark KOFRELIEF in eight months.
The ordinary route. File, wait for examination, answer the report, wait for advertisement, wait out the opposition period. The registration is very unlikely to be in hand at launch.
The expedited route. File, obtain the official number, immediately file Form TM-M with the expedition fee. Examination ordinarily within three months. If the report is clear, or the objections are answered, advertisement follows quickly, and the four month opposition period begins. On a clear run the registration can be in hand at or near launch.
What Devansh gains. If a competitor copies the mark after launch, Devansh sues in infringement under section 29 with a registration behind him rather than in passing off, where he would have to prove goodwill built in a matter of weeks.
What he does not gain. If the Registrar cites an earlier mark under section 11, expedition brings the problem forward. That is an advantage, not a disadvantage: he learns in three months rather than three years that he must change the mark, and the money not yet spent on packaging is money saved.
Ordinary and expedited compared
| Ordinary | Expedited, rule 34 | |
|---|---|---|
| Request | None | Form TM-M after the official number, with the higher fee |
| Examination | In the ordinary course | Ordinarily within three months of submission |
| Later stages | Ordinary course | Expedited to final disposal |
| Grounds applied | ss.9, 11, 13, 14 | The same |
| Opposition period | Four months, s.21(1) | The same four months |
| Availability | Always | May be limited in number, r.34(2) |
What it does NOT mean
Expedited processing is not expedited registration. Section 23(1) requires the Registrar, once the application is accepted and either unopposed or decided in the applicant's favour, to register the mark within eighteen months of the filing of the application. That obligation exists whether or not expedition is asked for, and chapter 330 works it.
And it is not a substitute for the search. An applicant who expedites a mark he has not searched will simply be told quickly that it cannot be registered. Rule 21's preliminary advice under section 133 and rule 22's search certificate are the cheaper first steps.
Quick revision
r.34(1): expedited processing on request after receipt of the official number, on Form TM-M, with the First Schedule fee. Examination ordinarily within three months of the date of submission of the application, and every step thereafter, including the opposition, dealt with expeditiously till final disposal, subject to guidelines published in the Journal.
Expedited Processing of an Application
r.34(2): the Registrar may limit the number of expedited applications by publishing the limit in the Journal.
The 2017 change: the whole processing is expedited, not only examination.
s.23(1): registration within eighteen months of filing, expedited or not.
Test yourself
1. When may a request for expedited processing be made, and on what form? After the receipt of the official number of the application, on Form TM-M, on payment of the fee specified in the First Schedule.
2. Within what time is an expedited application examined? Expeditiously and ordinarily within three months from the date of submission of the application.
3. What did rule 34 change from the earlier position? It expedites the whole processing of the application, including the consideration of the response to the examination report, any show cause hearing, publication, opposition and final disposal, whereas previously only examination could be expedited.
4. Does expedition shorten the opposition period? No. The period for notice of opposition under section 21(1) is unchanged. What rule 34 expedites is the handling of the opposition once filed.
5. May the Registrar refuse expedition? He may limit the number of applications for expedited processing under rule 34(2) by publishing the limit in the Trade Marks Journal, so the facility is rationed rather than available on demand.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.