Trademark Registration Process : Examination / Objection

The following are the different stages of Trademark Registration process in India.

1. Stage 1: Trademark Application Filing
2. Stage 2: Scrutiny of Application / Formality Check / Vienna Codification
3. Stage 3: Trademark Examination / Objection / Hearing
4. Stage 4: Publication in the Trademark Journal / Opposition / Hearing
5. Stage 5: Registration of Trademark.

Trademark Objection

Trademark Objection is the second stage of Trademark Registration Process. All the Trademark applications will be examined by the Registrar of Trademarks.

Trademark Examination Report

After examination of the application, the registry makes an examination report of application and will decide whether the application can be accepted or not. if accepted, the registry moved forward to advertise the trademark. In case if the examination report contains any observations, the same will be communicated to the applicant/trademark agent for submitting a reply to the examination report.

Trademark examination report shall contain the reason for objection. The applicant is required to file his reply in 30 days from the examination report. Generally, this examination report will be communicated to the trademark agent for action.

Thereafter, the applicant will be directed to file a reply to the objection within 30 days of the examination report. If the reply to the examination report found satisfactory, the Registrar shall proceed to accept the application and will advertise the same on Trademark Journal.

Reasons for Objections

The following are the major reasons marking the application as objected by the Registrar if Trademark:

1. # If the trademark does not have distinctive character or not capable of distinguishing the goods or services.
2. # If the trademark applied for registration is similar to the marks already registered/applied.

Reasons for Objections - Explained

The grounds of refusal of TM application can be divided into two parts:

A. Absolute grounds of refusal :

Section 9(1) to (3) of Trade Marks Act, 1999

Section 9(1) prohibits the registration of those trademarks:

• a. which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
• b. which consist exclusively of marks or indications which may serve in trade to designate 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; or
• c. which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practice of the trade.

Section 9(2) states that a mark shall not be registered as a trademark if —

• a. it is of such nature as to deceive the public or cause confusion;
• b. it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• c. it comprises or contains scandalous or obscene matter;
• c. its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Section 9(3) A mark shall not be registered as a trademark if it consists exclusively of—

• a. the shape of goods which results from the nature of the goods themselves; or
• b. the shape of goods which is necessary to obtain a technical result; or
• c. the shape which gives substantial value to the goods. Explanation.— For the purposes of this section, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.

B. Relative grounds of refusal :

Section 11 of Trade Marks Act, 1999 lists the relative grounds for refusal of registration.

• Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.

In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.

The term “earlier trade mark” means a registered trademark or an application which has a date of application earlier than the trademark in question.

Timelines for Filing Reply to Examination Report

The reply to Examination Report has to filed within 30 days of the examination report with supporting documents. Also, the reply to the trademark examination report should be drafted with legal expertise referring decided cases on similar matters and judgements by Tribunals / Courts / International references.

Extension of Time To File Objection Reply:

In case the reply is not filed within 30 days of the report, the application will be declared as abandoned. The applicant can request the registrar to extend the time limit of 30 days by applying TM-M electronically through the trademark agent with a valid reason for the delay in filing the reply.

If the reply to the examination report is to be filed through a different trademark agent, a fresh Power of Attorney is also required.. Once the filing is done then need to draft objection reply for the same.

Consequences of non-filing of Reply

Timely filing of reply to trademark objection is a crucial step of Trademark Registration Process. If the reply to examination report is not filed within 30 days of notice / or by the extended time, the Trademark application shall be marked as abandoned by the Trademark Registry.

In case the application has been marked as abandoned, the applicant has to file a fresh application for the Trademark.