Received Objection from Trademark Registry! What is way out?

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The Trade Marks Act prescribes a procedure to be followed to receive the trademark registration certificate. Before issuance of trademark registration certificate, the application passes from various stages of examination. Here, we are discussing the Verification of Online Trademark Registration Application by the concerned Registry of Trademark.

What is the Process involved?

The application filed for company’s logo or brand name registration under Trademarks Act, will be passed to the appropriate officer of the Trademarks Registry selected to ensure that it is complete in all respects.

The application is reviewed by the competent authority being the Examiner keeping in mind the provisions prescribed under Trademarks Act, 1999 and Draft Trademark Manual issued by the Trademark Registry.

The trademark examiner on the review of the application issues the examination report with its positive or negative report. The examiner may pass the application for advertisement in the Trademark Journal by issuing a positive report. The status on the portal will be reflected as “Accepted & Advertised”. However, there are very minimal chances of acceptance of the application without objections or negative examination report by the Registry.

During the verification by Registry, Examiner looks into the comprehensive database of the Trademark Applications filed. If the Examiner observes any identical or similar Trademark already applied or registered, the same is communicated to Applicant through publishing Examination Report on the portal of the Registry.

Observations and findings of the examiner are recorded in the Report called theExamination Report, which is issued to the applicant seeking the clarification, explanations or grounds of the application by way of written submission or hearing.

Once the examination report will be issued by the Registry, an applicant can view and download the Report which should be replied at given time by the applicant himself or through his/her attorney.

How can I track Objection status?

The application can be tracked using the tracking facility on the portal with application number (http://ipindiaonline.gov.in/eregister/eregister.aspx). Where the issuance of the report used to consume more than 3 to 4 months for processing by the registry, the latest amendment has reduced the processing period up to 1 month from the filing the application. Hence, the applicant shall be utilizing the facility to file the reply at earliest. After issuance of the Report, the status of the application on the portal shows as Objected” showing alert as“Awaiting Reply to Examination Report.”

The reply to the examination report issued is to be made within 30 days of receipt of the Examination Report, failing to which Registry may abandon the application made i.e. the applicant has to give up the claim over the Trademark. Hence, the status of the Application shall be checked regularly in order to avoid any difficulty or hassle in claiming the rights over the Trademark.

Reasons and grounds of Examination Report:

The grounds of objection can mainly be classified in the following manner:

  • Absolute Grounds for Refusal (Section 9):

The trademark which consists any of the following characteristics is objected by the Trademark Registry in order to prevent the monopoly of the Owner:

  • Where the mark is not capable of distinguishing the goods or services of one person from those of another person;
  • Where the mark is indicating the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services(e.g. Delicious Snacks);
  • Where it consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade;
  • Where the mark is of such nature as to deceive the public or cause confusion;
  • Where it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
  • Where it comprises or contains scandalous or obscene matter;
  • Where its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
  • Relative Grounds of Refusal (Section 11):

This section restricts the registration of Trademark, where a possibility of confusion exists on the part of the public due to the identity of an earlier trade mark or similarity of goods or services.

The objection may come on the ground if the Trademark (Wordmark)is phonetically similar to the existing Trademark applied to the Registry.

There are few more grounds where Registry may consider issuing Examination report such as visual similarity in the design, pattern, fonts, and color combination in a logo as well as in Word mark applied for with the existing applications received by the Registry.

  • Other Common Grounds:
    • Use of incorrect form for filing Online Trademark Registration in India;
    • Vague specification of Goods and Services;
    • Specification not as per the Nice Class heading is given by the Registry;
    • Descriptive Nature of the trademark applied for;
    • Incorrect details entered in the Application;
    • Wrong classification of Trademark Class, etc.

Filing the Response with the registry:

The applicant of the trademark or the attorney has to file a response to the examination report as rejoinder to the objections raised through examination report within the time provided. The response should be filed after the comprehensive analysis of the grounds of objection raised by the Examiner to clear the clarifications and objections raised by the examiner.

The reply shall be drafted to construct supportive grounds and support the application with proper reasoning why the mark applied is unique in nature and does not fail to comply with the provisions of the said law.

Where there is no format prescribed in respect of the reply to examination report, being an applicant to the Registry one enjoys all the rights to deliver the clarification asked for with proper reasoning.

However, in addition to above, one shall not oversight certain factors which are generally accepted in the practice by the attorney or the practitioners.

It is highly recommended to consult professional for drafting and filing the Reply as they are experienced and updated with recent case laws and provisions of trademark law which are to be kept in mind for filing the reply to satisfy the queries raised by the Registry in the best professional manner.

Post Filing the Reply:

Once the Reply to Examination Report is filed on the portal, the status is turned to “Objected” replacing the alert of “Awaiting to Reply.”The steps now will be taken by the Registry with respect to replying filed.

The examiner proportionate to his degree of satisfaction can either settle for the response or schedule a hearing.

  • When the examiner does not find the grounds of reply filed or seek further clarification from the applicant, he can call the applicants for hearing where he/she can present submissions orally.
  • If the grounds in the response filed or the hearing are to the satisfaction of the examiner, the examiner will order to publish the Trademark Application in Trademark Journal.

Conclusion:
The applicants shall bear in mind that issuance of examination report is a part of the Trademark Registration process in India. Through the issuance of the examination report, the registry does not abandon the applicant of the Trademark to use the brand name or company logo or ™ sign beside the trademark applied.

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